Bose Corporation v Target Australia Pty Ltd

[2008] ATMO 54

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 application No. 1064189 (Class 9) – BASE (word mark) - filed in the name of TARGET AUSTRALIA PTY LTD

Delegate:	Claudia Murray
Representation:	Opponent: Mr. Ron Webb, S.C. of Counsel, instructed by Jonathan Flintoft, Solicitor, of Baker & McKenzie, Lawyers Applicant: Mr Tim Golder assisted by Peter Ryan of Allens Arthur Robinson, Patent and Trade Mark Attorneys
Decision:	2008 ATMO 54 1. Section 52 Opposition – section 60 ground established. Registration refused – Section 55(a) 2. Costs awarded against the applicant

Background

1.Target Australia Pty Ltd (“the applicant”) filed trade mark application No. 1064189 on 11 July, 2005. The subject of the application is the trade mark “BASE” as a word mark and rendered in ordinary lettering of uniform size.

2.The application was filed in Class 9 of the International (Nice) Classification of Goods and Services in respect of  the following:

Televisions; digital versatile disc players and recorders; video cassette players and recorders; home theatre systems; radios including clock radios; compact disc players and recorders; MP3 players and recorders; portable media players; home office equipment in this class including keyboards and computer mice.

No grounds for rejection pursuant to the provisions of the Trade Marks Act 1995 (“the Act”) were raised against the application during examination. Advertisement of the acceptance for registration of this application occurred in the Australian Official Journal of Trade Marks on 10 November 2005.

3.Following acceptance for registration, the company Bose Corporation (“the opponent”), through its legal representatives Baker & McKenzie, filed notice of opposition by covering letter dated 10 February 2006. However, the notice of opposition was not received until 13 February 2006, which meant it was filed out of time. This discrepancy was overcome by the opponent’s request for an extension of time, and that request was duly granted.

4.The opponent is recorded as being the owner in Australia of the following prior trade mark registrations, all in Class 9:

·     No. 287239 “BOSE” (word mark) priority date 14 May 1975, for “Loudspeaker systems and amplifiers”.

·     No. 681413  priority date 20 December 1995, for “Acoustical transducer systems for reproducing sound; loudspeaker systems; electric power processors - namely power amplifiers, inverters, and battery chargers”.

·     No. 727428 “BOSE” (word mark) priority date 7 February 1997 for “Music systems; acoustical transducer systems for reproducing sound including headsets; loudspeaker systems; electric power processors - namely power amplifiers, inverters and battery chargers”.

·     No.727431 dated 7 February 1997, for “Music systems; acoustical transducer systems for reproducing sound including headsets; loudspeaker systems; electric power processors - namely power amplifiers, inverters and battery chargers”.

5.The opponent duly filed and served its evidence in support on 14 August 2006. After some delay, the applicant’s evidence in answer was served and filed on 21 December 2007. The opponent elected not to submit evidence in reply, and the matter came to a hearing before me, as a delegate of the Registrar of Trade Marks, in Canberra on 29 January 2008. Mr. Ron Webb, S.C. of Counsel instructed by Mr. Jonathan Flintoft, Solicitor, of Baker & McKenzie represented the opponent via video link. The applicant was represented via video link by Mr. Tim Golder (assisted by Mr. Peter Ryan) of Allens Arthur Robinson, Patent and Trade Mark Attorneys, Melbourne.

Grounds of Opposition

6.The notice of opposition nominated ten sections of the Act, namely sections 39, 41(2), 42(b), 43, 44, 58, 59, 60, 61 and 62(a) and (b). However, at the hearing Mr. Webb stated that the opponent would only be relying on the grounds of opposition under Sections 44 and 60. The remaining grounds as set out in the notice of opposition were not pressed or pursued. For completeness, I find that none of these other grounds has been successful.

The Evidence

Evidence in Support

7.The opponent’s evidence in support comprises the Statutory Declaration of Neville Ross Hart made on 8 August 2006, together with the Annexures NH-1 to NH-33 inclusive. Mr. Hart is stated to be the Company Secretary of Bose Pty Ltd, the wholly-owned Australian subsidiary of the opponent.

8.The evidence in support shows that the opponent was founded in the United States of America in 1964 by Dr. Amar G. Bose, then Professor of Electrical Engineering at the Massachusetts Institute of Technology. Dr. Bose, disappointed that loudspeakers on the market failed to reproduce the realism of a live performance, embarked on extensive research in the fields of speaker design and psychoacoustics (the human perception of sound). Initially, the opponent established its reputation by introducing the 901 Direct/Reflecting speaker system in 1968, and it quickly achieved international acclaim by setting a new standard for lifelike sound reproduction. Subsequently, the opponent has introduced a number of technological innovations and new products, all of which are sold under or in association with the “BOSE” trade mark.

9.The opponent now has operations throughout the world including the U.S.A., Canada, South America, Australia, Asia, Europe and the Middle East. Worldwide sales figures for all products bearing the “BOSE” trade mark are of an extremely substantial order. In Australia, sales of products bearing the “BOSE” trade mark have taken place since 1979, via eight dedicated “BOSE” stores and a network of over 100 dealers. The opponent carries out promotional activities by means of limited direct advertising with dealers, by sponsorship of events and awards (including the annual Quicksilver Surf Event, the National Retail Association Fashion Awards, and the Queensland Reds Super 11 Rugby team), and through the distribution of merchandising materials featuring the “BOSE” trade mark. Details of advertising expenditure figures in Australia for the financial years 1995 to 2006 are shown in the Confidential Annexure NH-16, and those figures are also of a substantial order. The opponent additionally trades from two websites at the Internet addresses and

Evidence in Answer

10.The applicant’s evidence in answer comprises the Statutory Declaration of Carol Margaret Harrison made on 21 December 2007, together with the exhibits “CMH-1” to “CMH-3”. Ms. Harrison is the company solicitor of the Applicant. Essentially, this evidence addresses three distinct issues:

·     Consideration of the phonetic and aural use of the “BOSE” trade mark by reference to a copy of a television advertisement and in particular the sound track to same.

·     Consideration of the dictionary meanings and pronunciations of the word “base” by reference to The Macquarie Dictionary, (2^nd edition, Sydney, 1991) and including page xxv of that work headed “International Phonetic Alphabet Symbols for use in Australian English”.

·     Sales figures for products bearing the “BASE” trade mark in relation to “audio and visual and accessories”, showing both unit numbers and dollar figures, for the period September 2004 to August 2007.

Discussion

Section 44

11.The grounds of opposition maintained by the opponent are under sections 44 and 60 of the Act. The relevant parts of Section 44 provide:

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.

The expression “deceptively similar” appearing in each of sections 44 and 60 is defined in Section 10 of the Act as follows:

For the purposes of this Act, a trade mark is taken to be deceptively similar to another trade mark if it so nearly resembles that other trade mark that it is likely to deceive or cause confusion.

Similar Goods

12.For the purposes of this decision, the parties did not substantially dispute that the goods in question were similar, although the applicant did reserve its position in respect of some of the relevant goods indicating that it may contest those items on appeal should it become necessary to do so.

Substantial Identity

13.Further, Mr. Webb indicated that for the purposes of both sections 44 and 60, the opponent did not intend to argue that the respective “BOSE” and “BASE” trade marks were substantially identical.

Deceptive Similarity

14.There remains to be considered whether the trade marks in question are “deceptively similar” to each other, as required by section 44 (and section 60). This expression has been the subject of considerable judicial deliberation. The relevant principles, (which were duly identified and referred to by the respective legal representatives in the course of the hearing), are often quoted, familiar and well-established, and it is neither necessary nor appropriate to restate them all here.[1] Of course, when considering those authorities, allowance must be made for the qualification that in cases decided prior to 1996 (that is, under the provisions of the former Trade Marks Act 1955 or predecessor Acts), the onus was on the applicant to establish its entitlement to registration. The converse position now applies, with a presumption of registrability in favour of the applicant. Otherwise, the law in relation to the meaning and interpretation of the expression “deceptively similar to” is established and well-settled.

[1]Those principles are enunciated in the collective thoughts and pronouncements of the following authorities: In the matter of an Application by the Pianotist Company Limited for the Registration of a Trade Mark (1906) 23 RPC 774 at 777 (per Justice Parker); Australian Woollen Mills Limited v F.S. Walton & Co.Limited (1937) 58 CLR 641 at 658 (per Justices Dixon and McTiernan); Application by Smith Hayden & Co.Limited (1946) 63 RPC 97 at 101 (per Justice Evershed); Cooper Engineering Co. Pty. Limited v Sigmumd Pumps Limited (1952) 86 CLR 536 at 538; Southern Cross Refrigerating Co. v Toowoomba Foundry Pty. Limited (1954) 91 CLR 592 at 594-5 and 607; Berlei Hestia Industries Limited v The Bali Company Inc. (1973) 129 CLR 353; and Registrar of Trade Marks v Woolworths Limited (1999) AIPC 91-499 at 36, 697-8 (per Justice French) and 39, 703-4 (per Justice Branson).

15.One of the most frequently quoted judicial pronouncements on this subject is drawn from the words of Justices Dixon and McTiernan in Australian Woollen Mills Limited v F.S. Walton & Co. Limited (1937) 58 CLR 641 at 658:

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 in the minds 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, their similarities both of sound and meaning may play an important part.  The usual manner in which ordinary people behave must be the test of what confusion or deception may be expected.

16.It is common ground between the parties that in order to establish a ground of opposition under Section 44, the opponent must show that at the priority date of the application, 11 July 2005:

·     there was a deceptively similar trade mark application or registration; 

·     relevantly, in respect of similar goods; and

·     in the name of a person other than the applicant.

Having regard to the presumption of registrability, the relevant test can be expressed as follows:

Assuming use by the proprietor of the cited trade mark in a normal and fair manner for any of the goods or services covered by the registrations of trade marks, is the Court satisfied that there is a reasonable likelihood of deception or confusion among a substantial number of persons if the applicant for registration also uses its mark normally and fairly in respect of [goods and] services covered by the proposed registration (per Justice Branson in Woolworths (supra) at paragraph 88).

“Boss” Decision

17.The applicant’s submissions placed particular weight and reliance on the earlier decision of Hearing Officer Thompson in Bose Corporation v Westjade Pty. Limited (2002) 57 IPR 117. In that case, the respective trade marks at issue were “BOSE” and “BOSS”, and Mr. Thompson found that they were not deceptively similar. Having considered the Boss case and the submissions which were put to me in this regard, I take the view that that decision is of limited assistance, value or application in relation to the present matter and I do not propose to follow either its reasoning or the determination which it reached. In adopting this view, I have given due regard to the following factors, namely:

·     It has been long-established since the “WINDSOR” CASE (Lazarus Rosenfeld Pty. Limited’s Application (1941) 11 AOJP 1047) that the Registrar is not bound by his own decisions. Moreover, as Justice Wilcox observed in Ocean Spray Cranberries Inc. v Registrar of Trade Marks (2000) 47 IPR 579 at 590, paragraph 35, although consistency in public administration is desirable, a public officer is not justified in persisting with error.

·     It was submitted by Mr. Webb that the Boss case was decided in 2002, well before the decision in Pfizer Products Inc v Karam [2006] FCA 1663 (1 December 2006) (“the Pfizer case”), and the reasoning of Justice Gyles in that case was available. The line of thought advanced by Mr. Webb was that the reasoning of Hearing Officer Thompson, and indeed of the applicant, was infused with the assumption that the relevant standard of proof to be applied was high. Justice Gyles’ decision outlines the appropriate test to be met as the normal civil standard of “the balance of probabilities”, rather than the onus of proving that the mark “clearly should not be registered” as (according to Mr. Webb) was applied by Mr. Thompson.

·     Decisions in trade mark matters necessarily involve subjective considerations and are affected by the individual perceptions and understanding of the hearing officer and by the particular facts and circumstances which are submitted in each instance. For example, in contrast to the Boss case heavily relied upon by the applicant, it should be noted that Deputy Registrar Hardie’s decision in Hugo Boss A.G. v World One Co. Limited [2000] ATMO 88, was that the trade mark “WOSS” was in fact deceptively similar to the existing registration “BOSS”.

Taking all of the above into consideration, I find that the Boss decision is able to be distinguished and that its application to the matter presently before me is at best limited.

Lack of Actual Deception

18.The applicant places considerable reliance on the fact that there are no actual instances of deception or confusion (see written submissions at pages 8-9 and 19). While conceding that this issue is not a “slam-dunk” in the sense that the absence of evidence of confusion or deception does not mean that one trade mark cannot be deceptively or confusingly similar to another mark, Mr. Golder maintained that it is a highly relevant factor which is of great weight (as noted in cases such as Australian Woollen Mills (supra) and Thorpedo[2]). This issue was addressed and responded to by Mr. Webb in the course of his oral submissions. Mr. Webb made the points that it is not a requirement for the opponent to prove actual deception. The matter has been stated to be a “jury question”. The hearing officer is required to put herself in the shoes of a member of the public purchasing the goods. He explained that the opponent had not tried to generate evidence of deception, but such evidence might well exist. On this occasion the applicant went into evidence late in the day. The opponent then had to make a decision between attempting to put on evidence late (thereby losing the hearing date) or keeping the hearing date in order to obtain an early resolution. Had a proper survey been mounted, it would have taken several months to do so. On this occasion the opponent decided not to take this course.

[2] Torpedoes Sportswear Pty Limited v Thorpedo Enterprises Pty Limited [2003] FCA 901; (2003) 59 IPR 318

19.Some assistance in determining the importance to be placed upon the lack of actual instances of deception or confusion can be derived from the decision of Berlei Hestia Industries Limited v The Bali Company Inc. (1973) 129 CLR 353, where Justice Mason said (at 363):

A factor to be taken into account is that no case of actual deception was established. Its significance is diminished by the circumstance that there has been a marked difference in the price and character of the goods manufactured by the parties. It was suggested also that the likelihood of deception would decrease as the respondent expanded its Australian business and as its mark became more widely known. However, even if the respondent’s mark becomes more widely known the opportunity for confusion will remain; there can be, as I see it, no assurance that the prospect of confusion will be eliminated.

In the present instance, I note the applicant’s point that there is no evidence of actual deception or confusion and I give that aspect due weight as part of the overall circumstances of this matter. However, I do not consider that the absence of such evidence serves to undermine the opponent’s case.

Ending of Trade Marks

20.The applicant placed reliance on the Tripcastroid decision[3] as illustrating the tendency of persons to slur the termination of words, thereby accentuating their beginning (see written submissions at paragraph 3.19). As Mr. Webb rightly pointed out, this approach is not one of universal application and there are examples (such as the Pfizer case) where the emphasis falls the other way. In any event, it seems to me apparent that Tripcastroid is of little assistance in the present instance simply because the respective trade marks are short and there is limited room for the approach taken in that case to apply. It is indeed hard to say other than that in this instance the termination is slurred since that characteristic is an inherent feature of the final letters. As Mr. Webb indicated, in relation to the present trade marks the slurring at the end is one of the factors that works to engender the likelihood of deception.

[3] London Lubricants (1920) Ltd's Application, (1925) 42 RPC 264 (CASTROL/TRIPCASTROID)

Common Meaning

21.The applicant argued that it is relevant that the “BASE” trade mark has a meaning or a series of meanings. This fact suggests that it will not be confused with something else and indicates that it is not likely to be mistakenly recalled. It submitted that the same circumstances effectively apply in the present instance as were relevant in the Boss decision, in the course of which the following view was expressed:

The trade marks Bose and Boss Audio, when compared side by side, are quite different. The word AUDIO can, of course, be largely disregarded in the comparison; however, the words BOSS and BOSE are non-identical. The word BOSS has several very well known meanings, the word BOSE has no meaning, but is an unusual surname; the words are pronounced quite differently; they are also different visually. The trade marks are not, therefore, substantially identical.

22.In response, Mr. Webb contended that this argument does not assist the applicant because the expression “BASE” does not have any particular significance in the context of the goods for which registration is sought. The element of meaning is a neutral factor in this context. Here, we are talking about something completely different, namely the retention of an impression of the spoken trade mark as it is carried within the memory of a member of the public who might later encounter the other, very similar, trade mark. Allied to that observation, the word “BOSE” is originally a surname but there is no evidence that anyone in the market-place understands the word in that sense or appreciates that because it is a surname it is pronounced in a certain way. Mr. Webb made the point that there should be no analogy to be drawn between the Boss case and the present matter, as the marks at issue in that case were significantly different from those dealt with here.

Comparison of the Trade Marks - Conclusion

23.It was common ground between the parties that the crucial issue for decision in this opposition was the question of whether the trade mark application “BASE” is deceptively similar to the existing “BOSE” registrations. The determination of this issue requires a comparison of the respective trade marks to be carried out. In so doing, there are established “tests” which apply. Unlike the test which applies in relation to determining substantial identity, the trade marks are not to be compared side by side. Rather, a judgment about deceptive similarity is generally a matter of first impression rather than meticulous comparison. Allowance must be made for imperfect recollection (see Aristoc v Rysta (1945) 62 RPC 65). This principle applies as much to a visual comparison as it does when the sounds of two words are being compared. While it is not necessary to prove actual deception, a mere possibility of confusion is not sufficient (see Southern Cross Refrigerating Company v Toowoomba Foundry Pty. Limited (1954) 91 CLR 592). There must be a real, tangible danger of confusion occurring (Registrar of Trade Marks v Woolworths Limited (1999) 45 IPR 411). It follows that, when comparing the trade marks for the purpose of considering whether they are deceptively similar, the relevant consideration is the likely effect or impression produced on and retained by customers and potential customers. Moreover, there is a need to consider two separate forms of use of the respective trade marks, namely the way in which they appear on actual goods and products and the way in which they are spoken.

24.Here, the respective trade marks are simple words. They each consist of one syllable comprising four letters only, with two vowels and two consonants. Both are arranged in the same order and the sequence of letters within each trade mark is precisely the same (consonant, vowel, consonant, vowel). Each word has the same weight and balance and the same general sense and emphasis. Both start with the letter “B”, both have the letter “S” in the same location within the trade mark, and both end with the letter “E” which is silent in each instance. The only and singular difference between the respective words resides in the fact that the one corresponding vowel (being the letter “A” in the applicant’s mark and the letter “O” in the opponent’s mark) is not the same. Otherwise the respective marks are identical, at least in their appearance. The situation is not like that which was before the Court in Coca-Cola Co. (Canada) Limited v Pepsi-Cola Co. (Canada) Limited (1942) 59 RPC 127. Here, there is no additional or qualifying element, no device mark, no added syllable, and no visual component. There are just the two bare words simpliciter. The four ordinary letters are all that is available. Indeed, of the five vowels which exist in the English language, it is arguably the two letters “A” and “O” which bear the closest resemblance and which are the most likely to be confused or mistaken.

25.There may be said to exist some slight degree of difference in the pronunciation of the respective trade marks. It was submitted on behalf of the applicant that those “in the know” would regard the expression “BOSE” as being pronounced in the same manner as the word “rose”. However, not all purchasers, and indeed not all shop assistants, would necessarily be imbued with that degree of knowledge. I believe there can be said to exist a reasonable number of persons who would, without appropriate awareness or instruction to the contrary, pronounce the word “BOSE” as in “verbose”, or “bellicose” and therefore in a manner resembling the pronunciation of the word “BASE”. At the very least, that latter form of pronunciation cannot be ruled out. Not all members of the public are sound equipment afficionados. The existence of a relevant segment of the public which, on seeing the trade mark “BOSE” and on accepting it at face value, would assume that it is pronounced in the same way as “verbose” et al cannot be disregarded or ignored. In this regard, I do not consider the sound track which is Exhibit “MH-1” to be conclusive. It strikes me that there is no such thing as uniformity or homogeneity of pronunciation in the present instance. The Australian community is multicultural and ethnically diverse. Persons of different cultural backgrounds would be expected to pronounce the word “BOSE” in a variety of different ways and with different emphases and accents. Realistically, there is every likelihood that  the words “BOSE” and “BASE” would be pronounced the same way by a significant proportion of the purchasing public, who would likely also perceive them to be visually indistinguishable.

26.To conclude, it cannot be said other than that the words “BOSE” and “BASE” bear a degree of similarity and resemblance, both visually and phonetically. I consider that in this instance the “BASE” trade mark application sufficiently resembles the prior existing “BOSE” registrations as to be deceptively similar to those trade marks within the meaning of the Act. In coming to this conclusion, I have regard to the findings of Justice Gummow in the Federal Court of Australia in Johnson and Johnsonv Kalnin (1993) 26 IPR 435. Justice Gummow found that the visually and phonetically similar expressions “BAND-AID” and “BAND>>IT” were deceptively similar. I have also considered several similar decisions by the Trade Marks Office[4].

[4]Interlego AG v Mego Corporation (1979) 49 AOJP 2829 in which an application for the trade mark “MEGO” was refused in the face of the conflicting “LEGO” registration; American Express Company v N.V. Amev (1985) AIPC 90-258 (“AMEX” and “AMEV”); Warner-Lambert Co. v Harel (1995) 32 IPR 189 (“DERMOFILM” and “DERMAFILM”); PGM Group Pty. Limited  v CI Kasei Co. Limited (2002) AIPC 91-833 (“HYDRA-TITE” and “HYDROTITE”); Sanofi-Synthelabo vLohmann Animal Health, GmbH & Co. KG (2004) AIPC 91-952 “AVIPRO” and “AVAPRO”.

27.Having found that the trade marks are deceptively similar, as required for the purposes of this decision under both sections 44 and 60, I will now proceed to consideration of that latter ground of opposition. The applicant and the opponent made submissions upon the question of whether or not, if I should find a case for refusal of the “BASE” trade mark existed under subsection 44(1), the exception provided under subsection 44(3) might appropriately be applied, and registration allowed on that basis.[5] As the success or otherwise of this proposition hinges upon the outcome of the opponent’s case under section 60, I will address that matter forthwith.

[5] The applicant cited Dick Smith Investments Pty. Limited v Ramsay (2006) 70 IPR 428 in support of its submissions.

Section 60

28.In relation to section 60, it is common ground between the parties that the form of wording applicable in this instance is that which existed as at the filing date of trade mark no. 1064189 (11 July 2005), prior to the amendments implemented by virtue of the Trade Marks Amendment Act 2006, which commenced on 23 October 2006. In this regard, reference is made to the decision of Hearing Officer Lyons in Apple Computer Inc. v Todaytech Group Pty Ltd, 2007 ATMO 40. The form of wording for section 60 which applies to this opposition therefore reads:

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: forpriority date  see section 12.

29.It is agreed between the parties that in order to make out a ground of opposition under Section 60 in the present instance the opponent must establish that:

·     the pending application “BASE” is deceptively similar to the existing “BOSE” trade marks;

·     the “BOSE” trade mark has acquired a reputation in Australia as at 11 July 2005; and

·     the said reputation is such that use of the “BASE” trade mark would be likely to deceive or cause confusion.

I have already determined above that the trade marks in question are deceptively similar. The next issue to be determined concerns the extent of the opponent’s reputation in its “BOSE” trade marks. The meaning and intention of the word “reputation” appearing in Section 60 is an important concern. This aspect has been the subject of attention by Justice Kenny in McCormick & Company Inc. v McCormick (2000) 51 IPR 102 at paragraphs 81-89. In considering what might be intended by the word “reputation” and having consulted the Macquarie Dictionary, Her Honour decided that in the context of section 60, the word is apt to refer to “the recognition of the [relevant mark] by the public generally”. After quoting the words of Justice Lockhart in ConAgra Inc. v McCain Foods (Aust.) Pty Limited (1992) 23 IPR 193 at 234 as follows:

[R]eputation within the jurisdiction may be proved by a variety of means including advertisements on television or radio, or in magazines and newspapers within the forum.  It may be established by showing constant travel of people between other countries and the forum, and that people within the forum (whether residents there or persons simply visiting there from other countries) are exposed to the goods of the overseas owner…,

Her Honour observed:

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…  This Court has followed this approach as well, acknowledging that public awareness of and regard for a mark tends to correlate with appreciation of the products with which the mark is associated, as evidenced by sales volume, amongst other things.

30.The applicant did not challenge the existence of an established reputation in respect of the “BOSE” trade mark on the part of the opponent. Indeed, to the contrary, the applicant argued that the expression “BOSE” is such a well-known mark that the factor of notoriety or fame (as in the Thorpedo and Woolworths decisions) has to be taken into account as being likely to mean that the risk of deception or confusion is avoided. In view of that reputation, it is argued on behalf of the applicant that customers have been educated as to how the “BOSE” trade mark is used, so that “there is no real tangible danger that a number of customers would be confused”. Further, because of that reputation, the relevance of applying the doctrine of imperfect recollection was less likely to arise.

31.In refuting that argument, the opponent submitted that the applicant had fallen into the error of proceeding on the basis that what is to be considered is the use of its trade mark in respect of the range of uses that it had presently made, whereas what should be considered is the use which the applicant might intend to make. The question was whether people, on seeing the “BASE” mark used on equivalent goods (that is, in the same market segment) would be likely to be deceived or confused. The further question was whether people, on seeing the “BASE” trade mark on goods in a different market segment would be caused to wonder. The opponent answers both questions in the affirmative, and it infers a situation where people, on seeing the applicant’s trade mark would be likely to wonder whether the relevant goods on which that trade mark was used were a new line of product or budget range released by the opponent. Those people do not learn with precision the nature of such use. They do not have to be immersed in a study of the audio market-place including in supermarkets and department stores. That sort of user must be factored in to the situation: disinteredness in the product must be considered when comparing the two marks.

32.Taking into account all of the above, I find that the opponent has a considerable Australian reputation in its “BOSE” trade marks, and that the extent of that reputation is such that the applicant’s use of its “BASE” trade mark on the goods specified in its application will likely cause the public to be deceived and confused. I find the opponent’s section 60 ground of opposition to be successful.

Decision

33.Section 55 of the Trade Marks Act provides:

Decision
Unless the proceedings are discontinued or dismissed, the Registrar must, at the end, decide:

to refuse to register the trade mark; or

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.

34.I have found that the opposition has succeeded under section 60. Regarding the subsection 44(3) issue touched upon above, it is now relevant to return to the McCormick case (supra), where Justice Kenny said (at paras 93 and 96) :

Section 60 is not expressed to be subject to s 44(3), any analogous limitation, or even the Act generally: contrast s 89(1). On its face, it is a stand-alone provision. Furthermore, s 60 is apparently intended to afford a ground of opposition that is additional to the grounds set out in Part 4. Section 57 expressly states that the grounds of opposition may be "any of the grounds on which an application for the registration of a trade mark may be rejected under Division 2 of Part 4" (which includes s 44). Sections 58 to 62 add further grounds for opposition. On its face, there is no honest concurrent user exception to s 60…

Whilst I accept, as counsel for Mary McCormick contends, that the doctrine of honest concurrent user is derived from the common law and pre-dates trade mark legislation, I am of the view that s 44(3) of the Act does not provide an exception to s 60.

35.Under the present circumstances, I see no option open to me other than to refuse to register the applicant’s trade mark. This I now do.

Costs

36.Mr. Webb sought costs in favour of his client, and I see no reason why in the circumstances costs should not follow the cause. I therefore order the applicant to pay the costs of the opponent in the amounts provided for in the regulations. On application, the amount of costs will be taxed, allowed and certified by a trade marks officer appointed by the Registrar for that purpose.

Claudia Murray

Hearing Officer

Trade Mark Hearings

30 June 2008