Finaxa Societe Anonyme v Anthony Arnedo

[2003] ATMO 39

TRADE MARKS ACT 1995

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

Re:Opposition by FINAXA SOCIETE ANONYME to registration of trade mark application 842808(9) - AXA DESIGN - filed in the name of ANTHONY ARNEDO.

Date of Decision:

24 June 2003

Delegate:

Claudia Murray

Representation:

Opponent

Ben Fitzpatrick of Counsel, instructed by Scott Widmer of Freehills, Patent and Trade Mark Attorneys

Applicant

Tom Robertson and Jaime Massang, of Pipers, Patent and Trade Mark Attorneys

Decision:

1. Section 52 Opposition: s 55(b) registration allowed.

2. Costs awarded against opponent.

Background

1. 
   Anthony Arnedo (the applicant) filed trade mark application no. 842808 on 17 July 2000. The subject of the application is the trade mark:

1. The application was filed in class 9 of the International (Nice) Classification of Goods and Services, for "Consumer electronic products for home automation". No grounds of rejection under the Trade Marks Act 1995 (the Act) were raised against the application during examination. Advertisement of its acceptance for registration was advertised in the Australian Official Journal of Trade Marks on 15 February 2001.

1. On 14 August 2001, after obtaining an extension of time to do so, Finaxa Societe Anonyme (the opponent) filed notice of opposition to registration of the trade mark. Ten grounds of opposition were listed in the notice.

1. The opponent's evidence in support, applicant's evidence in answer and opponent's evidence in reply was duly served and filed. At the end of the process, the matter came to a hearing before me, as a delegate of the Registrar, in Canberra, on 29 January 2003. Mr Tom Robertson, assisted by Mr Jaime Massang, both of Pipers Patent and Trade Mark Attorneys, Brisbane, represented the trade mark applicant by telephone. Mr Ben Fitzpatrick of Counsel, instructed by Mr Scott Widmer of Freehills, Patent and Trade Mark Attorneys, Melbourne, represented the opponent.

Evidence

Evidence in support

1. The opponent's evidence in support comprises three declarations, two of which are accompanied by an extensive collection of exhibits:

Date	Name	Description	Exhibits
3 April 2002	Bradley James Martin	Investigator, Nationwide Investigation Services Pty Ltd
15 May 2002	Pierre Yves Durand	Head of External Communication and Marketing, AXA Group	PYD-1 to PYD-15
6 June 2002	Michael John Rogers	Marketing Services Manager, AXA Australia Group	MJR-1 to MJR-25

1. Mr Martin is an investigator for a specialist investigation and research company based in Melbourne. His declaration details investigations undertaken by him into the applicant's use of his trade mark.

2. Mr Durand's declaration gives details of the international history and use of the opponent's AXA trade marks. He explains that the opponent is the parent company to various international companies that make up the AXA International Financial Protection Group (insurance and asset management services), referred to as the AXA Group. Mr Durand describes the services provided by the AXA Group as falling into four principal areas of services. These are:

• Life insurance

• Property and casualty insurance

• Reinsurance

• Financial services.

1. Mr Durand paints a compelling picture of a financial and insurance company which, since at least 1991, has had a formidable business presence throughout the world. He declares that "combined with its subsidiaries, AXA is one of the largest worldwide financial protection groups in the areas of insurance and asset management", and convincingly supports this claim with very substantial revenue and advertising figures. He also explains that, at the time of filing of the opposed application, the AXA Group provided services under the AXA trade marks in more than sixty countries, and had a workforce of nearly 140,000 employees and agents. Further, it operated three university campuses and a corporate philanthropy program under its trade marks.

1. Mr Rogers' declaration outlines the history and use of the opponent's AXA trade marks in Australia. He explains that the AXA Group purchased a controlling interest in the Australian company National Mutual Holdings Limited in 1995. Policy holders were advised early that year that the company's trading name would be changed from National Mutual to AXA. This conversion was finally completed on 2 August 1999, after a comprehensive advertising campaign in the Australian media.

1. At the filing date of the applicant's trade mark, Mr Rogers declares, the business of the AXA Australia Group was divided into four segments, superannuation, life and health insurance, investments and financial planning. He details the opponent's ownership of seven Australian trade mark registrations, with a priority date earlier than the applicant's, containing or comprising the word AXA. These registrations variously cover services in classes 35, 36, 37, 38, 39, 41 and 42. It also owned in Australia, at the relevant date, thirty-two registered business names, six company names and six domain names incorporating the word AXA.

Evidence in answer

1. The evidence in answer comprises a declaration by the applicant, Anthony Xavier Arnedo, dated 11 September 2002 and accompanied by exhibits AXA-1 to AXA-14.

1. Mr Arnedo's declaration details the history and use of his trade mark. He explains that his choice of AXA derives from the initial letters of the Anglicised version of his Spanish name. Named Anthony Javier Arnedo at birth, Mr Arnedo declares he has used Xavier, the English equivalent of Javier, for more than twelve years, or "most of [his] life in Australia". In March 1996, he graduated from Griffith University with a Bachelor degree in Microelectronic Engineering, under the name Anthony Xavier Arnedo.

1. To the best of his recollection, Mr Arnedo says, he first used the trade mark AXA DESIGN in January 1996, and has used it ever since on all electronic equipment he has designed and manufactured, registering it as a business name in July 1998. At this point, he says, he had never heard of the AXA Group. Mr Arnedo describes AXA DESIGN as having built a reputation in Australia that has led to it being well known amongst distributors and suppliers of audio and lighting control systems for commercial and residential use. He supports this claim with eight letters from distributors and business associates.

Evidence in reply

1. The evidence in reply comprises a declaration by Scott James Widmer, solicitor employed by the opponent's agent, Freehills, dated 9 December 2002.

Grounds of opposition

1. At the hearing, Mr Fitzpatrick informed me that, as he had already recently notified the applicant by facsimile, the opponent would only be pressing grounds of opposition under sections 44 and 60 of the Act. He formally withdrew the other grounds raised in the notice of opposition, while reserving the right to raise them again in the de novo circumstances of any future appeal, should this prove warranted.

Section 44 - substantially identical or deceptively similar trade marks

1. Subsection 44(1) provides:

   (1) Subject to subsections (3) and (4), an application for the registration of a trade mark (applicant’s trade mark) in respect of goods (applicant’s goods) must be rejected if:

   (a) the applicant’s trade mark is substantially identical with, or deceptively similar to:

   (i) a trade mark registered by another person in respect of similar goods or closely related services; or

   (ii) a trade mark whose registration in respect of similar goods or closely related services is being sought by another person; and

   (b) the priority date for the registration of the applicant’s trade mark in respect of the applicant’s goods is not earlier than the priority date for the registration of the other trade mark in respect of the similar goods or closely related services.

   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.

1. The definition of "deceptively similar" in section 10 is that "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".

Submissions

1. Mr Fitzpatrick chose to base the opponent's case in terms of section 44 on its trade mark registration number 798160. The relevant details of that registration are as follows:

TM No.	Priority Date	Classes	Statement of Services - Class 37
798160	29 March 1999	35, 36, 37, 38, 39, 41, 42	Services namely vehicle repairs, repairs to premises following claims and vehicles, buildings and premises maintenance services

1. The word and device trade mark subject of the registration is:

1. In common with the opponent's other prior registrations, the above trade mark covers many services in several classes, mainly (although not exclusively) of a business and financial nature. However, Mr Fitzpatrick focussed on that specific registration because it alone covered maintenance and repair services to premises, in class 37, which he argued were closely related to the applicant's consumer electronic products.

1. Mr Fitzpatrick submitted that, in accordance with the tests set out by Windeyer J in Shell Co. of Australia Ltd v Esso Standard Oil (Australia) Ltd (1961) 109 CLR 407 at 415, the applicant and the opponent's trade marks were deceptively similar. He argued that a significant number of people would likely be caused to wonder whether the goods and services of the respective parties had originated from the same trade source. (Southern Cross Refrigerating Co v Toowoomba Foundry Pty Limited (1954) 91 CLR 592, at 594-5.) In support of the opponent's position, Mr Fitzpatrick pointed out that AXA, being a "purely invented term with no descriptive quality" is the prominent feature of both trade marks. He said that the other matter in each mark was purely descriptive and insufficient to distinguish them from each other, and that the fact that the letters AXA appeared in "angular conjoined form" in both trade marks further increased the risk of deception or confusion. Finally, Mr Fitzpatrick pointed out that customers would refer to the word AXA in both cases to verbally identify the trade mark.

1. As far as the relevant goods and services were concerned, Mr Fitzpatrick cited the tests set out in Re AussatPty Ltd (1993) 27 IPR 309. He said:

   Consumer electronics products for home automation covers a broad range of goods including automated timers for heating and cooling in domestic homes; automated light switches for home security; security alarms and devices, including audiovisual security devices.

   Consumer electronics products for home automation are goods closely related to the services of repair to premises following claims and buildings and premises maintenance services. Persons involved in the manufacture of electronic products for home automation would also be likely to provide repair and maintenance services for such goods and the technical training and knowledge involved would be equivalent.

1. Mr Fitzpatrick concluded his arguments by submitting that the applicant had not made a convincing case for acceptance under the honest concurrent use exception to subsection 44(1) that is provided under subsection 44(3).

1. Mr Robertson, for the applicant, responded that the applicant and opponent's trade marks were not deceptively similar, and their respective goods and services were widely different. He said that the applicant did not seek to make a case for honest concurrent use or prior use of his trade mark, and did not believe that this would be necessary to overcome the opposition. Mr Robertson cited the following decisions of delegates of the Registrar for my consideration: General Electric Company v Galvin Engineering Pty Ltd [2000] ATMO 129 (5 December 2000) (the GE case), and Magnatex International Pty Ltd v Intel Corporation 41 IPR 406 (the Pentium case). He said he believed the Pentium case, in particular, was "on all fours" with the circumstances of the present opposition.

Discussion

1. In considering the opposing arguments of the parties, I note that the opponent has relied principally on cases decided under the previous legislation, the Trade Marks Act 1955. The onus has shifted under the new Act. (See Registrar of Trade marks v Woolworths Limited 45 IPR 411 at 428, and Lahore, Patents, Trade Marks and Related Rights (2001), paragraph 66,320.) The Full Federal Court, in Sports Cafe Ltd v Registrar of Trade Marks [1998] 1614 FCA (18 December 1998), (the Sports Cafe case) applied the new onus in deciding the following word and device trade marks

   
   were not deceptively similar:

1. The court stated, at page 5:

   The fact that two marks convey a common idea becomes relevant only if the marks themselves look and sound alike. Commonality of idea might then tip the balance in favour of a finding that the likeness is deceptive.

1. 
   Equally mindful of the new onus, Hearing Officer Williams found, in the GE case, supra, the device trade marks reproduced below not to be deceptively similar:

1. A side-by-side comparison of trade marks is not, of course, required for consideration of an argument of deceptive similarity between trade marks. It is part of the test applied for substantial identity between trade marks, which has not been argued here. (The Shell Co. of Australia Ltd. v. Esso Standard Oil (Australia) Ltd, supra, at 415.)

1. Dixon and McTiernan JJ in Australian Woollen Mills Ltd v F.S.Walton & Co Ltd, supra, at 658 say of deceptive similarity:

   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.

1. 
   Returning to the trade marks at issue in the present opposition,

each of these trade marks has a very strong visual component, which cannot help but impact upon any potential customer. It is certainly true, as Mr Fitzpatrick argued, that I must take into account the effects of "similarities of sound and meaning" also described by Dixon and McTiernan JJ, supra, that are important in a customer's verbal description of a trade mark. However, even here, while the word AXA is common to both trade marks, each contains a second word - "assistance" and "design", respectively - which alters the sound of each mark.

1. Finally, again in the words of Dixon and McTiernan JJ:

   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.

1. The "setting" here is the provision of repair and maintenance services in the context of the satisfaction of insurance claims, versus highly specialised electronic goods. Despite the arguments it has made regarding the notionally close relationship between those services and goods, the opponent has been unable to provide evidence of actual cases of public deception or confusion that have occurred as a result of the use of the trade marks. The applicant has argued strongly against the existence of any such relationship between his goods and the applicant's services.

1. The determination of a close relationship between goods and services is, without doubt, less straightforward than deciding a question of similar goods or similar services. The Sports Cafe and GE cases discussed above were decided in the contexts of similar services and similar goods, respectively. I remain essentially of an open mind as to whether the applicant's goods and the opponent's services are in fact closely related. French J, in Registrar of Trade Marks v Woolworths Limited, supra, at paragraph 40, said:

   In the end there is one practical judgment to be made. Whether any resemblance between different trade marks for goods and services renders them deceptively similar will depend upon the nature and degree of that resemblance and the closeness of the relationship between the services and the goods in question. It will not always be necessary to dissect that judgment into discrete and independent conclusions about the resemblance of marks and the relationship of goods and services. Consistently with that proposition, the Registrar or a judge on appeal from the Registrar could determine in a particular case that, given the limited degree of resemblance between the relevant marks he or she could not be satisfied, no matter how closely related the goods and services concerned, that the use of the applicant's marks would be likely to deceive or to cause confusion.

1. Such is the situation here. As I have discussed above, the trade marks in question have a limited degree of resemblance. And I have not been convinced of any "finite and non-trivial" probability of deception and confusion of ordinary people as a result of their use on the goods and services of interest, whether these are closely related, or not. (French, supra, paragraph 43.)

1. I find that the applicant and opponent's trade marks are not deceptively similar. Accordingly, the ground of opposition under section 44 has not succeeded.

Section 60 - trade mark with a reputation in Australia

1. Section 60 provides:

   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.

Submissions

1. In support of the opponent's case under section 60, Mr Fitzpatrick argued that the evidence clearly demonstrated the opponent had a "highly significant reputation" in the plain word AXA, as it was the central and dominant feature of all its family of trade marks. This reputation would clearly lead to consumers becoming deceived and confused by the applicant's use of his trade marks on the goods claimed in his application.

1. In response, Mr Robertson vehemently disputed the opponent's claim to having had such a reputation in the AXA trade mark in Australia at the time of filing of his client's application. Further, he did not accept that there was any actual or apparent nexus between the applicant's goods and the opponent's services, that could contribute to any deception and confusion of the public as to the respective origins of the trade marks.

Discussion

1. To satisfy section 60, an opponent must demonstrate that, at the time of filing of the opposed application, it had a reputation in a substantially identical or deceptively similar trade mark, such that use of the applicant's trade mark would likely cause the public to be deceived or confused. The opponent's trade mark need not be subject of an application or registration, in order to be able to be relied upon under this section.

1. Firstly, and again following the precedents set in the Sports Cafe and GE cases, supra, I accept the proposition that the plain word AXA is deceptively similar to the trade mark the applicant seeks to register. The question then is whether the opponent had such a reputation in Australia at the time the applicant filed his trade mark, that his use of that mark on his goods of interest would likely result in deception or confusion of the public.

1. The evidence clearly shows that opponent now has a very considerable worldwide reputation in the AXA trade mark in the field of financial and insurance services, and it is clear that its reputation there has the potential to spill over into related areas of activity over the passage of time. However, the important question, hotly debated during the hearing, is whether that reputation had sufficiently developed in Australia by July 2000 to spill over, not just into home repair and maintenance services related to the settlement of insurance claims, but further still, to specialised electronic goods.

1. I was not obliged to find definitively upon the question, asked in terms of section 44, of whether the applicant's goods were closely related to the opponent's services; the case there having fallen at an earlier hurdle. In terms of section 60, a rather different question arises. Despite a publicity launch deservedly described by Mr Fitzpatrick as, for this country, "unprecedented, or at least very rare in its extent of coverage", I remain unconvinced that the opponent has discharged its true burden here. It has not proved its reputation, at the relevant date, was sufficient to create in the public mind the critical leap of actual, as opposed to notional, association that would lead Mr Arnedo's customers to believe his electronic products originated from a company that provided financial and insurance services.

1. It is true that the word AXA is a memorable one, described by Mr Fitzpatrick earlier as a "purely invented term with no descriptive quality". The opponent did not explain, during the course of its opposition, the precise derivation of its trade mark. However, as Mr Arnedo's experience showed, and the opponent acknowledged, it has proved possible for more than one party to choose that word honestly as a desirable trade mark. Hearing Officer Homann, in the Pentium case, supra, observed at 410:

   The word "pentium" in itself, seems to be devoid of meaning except for the suggestion of "five", being the fifth in succession in a series of Intel's products. But that does not mean that other persons should be disbarred from using the word in quite dissimilar contexts.

1. I find the ground of opposition in terms of section 60 to be unsuccessful.

Decision

1. I find that the opponent has been unsuccessful under both the grounds of opposition pressed at the hearing. I therefore direct that (subject to payment of the registration fee) the trade mark application may proceed to registration one month from the date of this decision. If the Registrar has been served with a notice of appeal before that time, I direct that registration shall not occur until the appeal has been decided or discontinued.

Costs

1. Both parties have sought their costs in this matter. It is usual for costs to follow the event. Accordingly, I award costs, in terms of the official scale, against the unsuccessful opponent, Finaxa Societe Anonyme.

Claudia Murray

Hearing Officer

Trade Marks Hearings

24 June 2003