General Motors Corporation v Anthony Nicholls

[2003] ATMO 59

TRADE MARKS ACT 1995

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

Re:Opposition by General Motors Corporation to registration of trade mark application 902269 (32) - HSV ENERGY DRINK - HARD SERIOUS VITAMINS - filed in the name of Anthony Nicholls.

Date of Decision:	16 October 2003
Delegate:	Mary Skivington
Representation:	Opponent: Ken Hamilton of Phillips Ormonde Fitzpatrick, Trade Mark Attorneys. Applicant: Unrepresented and did not appear.
Decision:	Section 52 opposition - section 60 ground successful - registration refused.

Background

1. On 5 February 2002, ('the priority date'), Anthony Nicholls, ('the applicant'), filed trade mark application number 902269 to register the trade mark,

   HSV ENERGY DRINK, (HARD SERIOUS VITAMINS).

2. The goods, which fall in class 32, are described as a cola flavoured energy drink. Acceptance of the application was advertised in the Australian Official Journal of Trade Marks on 6 June 2002.

3. General Motors Corporation, ('the opponent'), filed notice of opposition on 4 September 2002.  Fourteen grounds of opposition were listed in the notice. On 11 March 2003, as provided for in the Trade Marks Act 1995, ('the Act'), and Trade Marks Regulations 1995, evidence in support of the opposition was filed and served.  The applicant did not serve or file evidence in answer and in fact has played no active role in these proceedings. On 8 August 2003 the opponent requested a hearing.  As a delegate of the Register of Trade Marks, I heard the matter on 9 September 2003.  Mr Ken Hamilton, of Phillips Ormonde Fitzpatrick, Patent and Trade Mark Attorneys, represented the opponent.

   The Evidence

4. The evidence in support comprises a statutory declaration with exhibits CP-1 to CP-11, made by Mr Chris Payne, on 5 March 2003.  Mr Payne is the General Manager of Premoso Pty Ltd, trading as Holden Special Vehicles (HSV), a company licensed by the opponent through its subsidiary Holden Ltd, to modify and sell vehicles manufactured by Holden Ltd, under the trade mark HSV. Mr Payne declares that vehicles sold under the HSV trade mark are high performance vehicles. Mr Payne attests that the HSV trade marks have been used continuously since 1988, primarily in respect of motor vehicles sold throughout the states and territories of Australia and New Zealand. He reports that there are fifty-nine authorised dealers in Australia. Mr Payne provides sales figures for motor vehicles for the five years, 1998 to 2002, which amount to many millions of dollars. He declares that the trade marks are also used in respect of a wide and increasing range of merchandise. In addition to the usual caps and T-shirts bearing the opponent's HSV trade marks, Mr Payne declares that the opponent also markets goods that include car coats, socks underwear, ties and sleepwear as well as clocks, watches, pocket knives, key rings, umbrellas, mobile phone covers, desk sets, and coffee mugs, coasters and drink holders. The sales figures provided for the years 1998 to 2002 show that for each of these years the figures for apparel and other merchandise are very substantial. The opponent has also produced an HSV mountain bike, (CP-7), although the evidence does not indicate when this item became available and how many have been sold. Mr Payne provides the advertising figures for the years 1996 to 2002 and these indicate that substantial sums of money are expended annually on advertising.  He declares that the HSV trade mark is advertised and promoted by way of the television and print media, direct mail outs, exhibitions, dealer launches, point of sale materials, online media, trade shows and through sponsorship of the Holden Racing Team and materials displayed at race meetings.  Exhibit CP-11 is a photocopy of a magazine called Excelerate which is described as 'The Official HSV Magazine'.  Its focus appears to be the ordinary family owners of HSV motor cars and not racing professionals.  This magazine includes the contact details for all the HSV Owners Clubs, for the mainland states of Australia and for New Zealand.

5. I have disregarded the sales and advertising figures for 2002 which post date the priority date of the subject application but the figures for the remaining years are impressive.

6. Mr Payne reports that the opponent is the owner of the following registered trade marks:

Number	Trade Mark	Classes	Priority Date
532240	12	6 April 1990
532241	37	6 April 1990
831207	HSV	6,9,12,14, 16, 18, 20, 21, 24, 25, 28, 35, 36,37,39	10 April 2000
901484	HSV	11	25 January 2002
904023	HSV	29, 30	20 February 2002
917127	HSV	6, 20	20 June 2002

1. Exhibits CP-2, CP-5 to CP-8 and CP-11 show that the plain three letter trade mark, HSV, is used in association with the device trade mark in advertising materials and this effectively ensures that the device trade mark is also read as HSV and not HOSV, as could be the case, if the device were to be seen as the letter 'O'.  Exhibit CP-10 includes photocopies of two labels for use on food products, but there is no evidence that the goods are as yet available for purchase, so that the most that can be said of them is that they are an indication of the opponent's intention to further extend its trade into food products. Trade marks 904023 and 917127 have later priority dates than that of the subject application.

   Grounds Of Opposition

2. At the hearing Mr Hamilton said that the opponent relied only on section 60 of the Act to establish its opposition.  For the sake of completeness, I now find that the remaining grounds, listed in the notice of opposition, have not been established.

   Submissions And The Law

3. For the purposes of section 60, the opponent has the burden of establishing that:

   ·     the applicant's trade mark is substantially identical with, or deceptively similar to a trade mark cited by the opponent;

   ·     the cited trade mark enjoyed a reputation in Australia as at the priority date of the subject application; and

   ·     as a result of the reputation of the cited trade mark, use of the applicant's trade mark would be likely to cause deception or confusion.

4. Section 60 does not include a requirement that a trade mark relied on by the opponent must be registered. A common law trade mark used by the opponent may have acquired the requisite reputation. There is also no requirement under section 60, as there is under section 44, that the use of the trade mark should be in relation to similar goods.

   Substantial Identity

5. Mr Hamilton cited the tests for determining substantially identical trade marks, defined by Windeyer J, in Shell Co of Australia Ltd v Esso Standard Oil (Australia) Ltd, (1963) 109 CLR 407 at pages 414–15,

   In considering whether marks are substantially identical they should, I think, be compared side by side, their similarities and differences noted and the importance of these assessed having regard to the essential features of the registered mark and the total impression of resemblance or dissimilarity that emerges from the comparison. "The identification of an essential feature depends", it has been said, "partly on the Court's own judgment and partly on the burden of the evidence that is placed before it": de Cordova v. Vick Chemical Co. (1951) 68 RPC 103, at p 106.

6. He submitted that if the essential feature of each of the opponent's earlier trade marks were taken into account, this could only lead to a conclusion that the applicant's trade mark is substantially identical with the opponent's trade marks.  He said that the essential feature of the opponent's trade marks and the applicant's trade mark is the letters HSV which serve to denote the origin of the goods.

7. I agree with Mr Hamilton that HSV is the essential feature of the trade marks, however, in a side by side comparison the differences in the marks could not be more clear.  It is apparent that the trade marks share only a single feature in common. Gummow J in Carnival Cruise Lines Inc.  v Sitmar Cruises Limited (1994) AIPC 91-049, observed that in respect of substantially identical trade marks, 'It requires a total impression of similarity to emerge from a comparison between the two marks'. Such is not the case here, as a side by side comparison reveals that despite the shared feature, HSV, there is not a 'total impression of similarity'. The additional words in the applicant's trade mark, ENERGY DRINK, (HARD SERIOUS VITAMINS) create obvious and significant differences.

8. Mr Hamilton  further argued that on the basis of the principles established in PB Foods Ltd v Malanda Dairy Foods Ltd, (1999) AIPC 91-531, the CHOC CHILL case, the marks are substantially identical because the words ENERGY DRINK (HARD SERIOUS VITAMINS) are 'descriptive and add nothing to the trade mark'.

9. I do not consider that the CHOC CHILL case lends support to Mr Hamilton's claim that the trade marks under consideration are substantially identical.  In that case CHILL and CHOC CHILL were considered to be substantially identical in respect of dairy foods. The court found that CHOC is devoid of any inherent adaptation to distinguish because it is an accepted abbreviation for chocolate, a reference to the flavouring, so that in a comparison of the trade marks, CHOC could be discounted. In this case the expression, ENERGY DRINK, (HARD SERIOUS VITAMINS), although somewhat descriptive, is not purely descriptive, as is the word CHOC in CHOC CHILL. I find that the trade marks are not substantially identical.

   Deceptive similarity

10. Mr Hamilton submitted that a different comparison is made when considering if trade marks are deceptively similar. He submitted that the trade marks must be considered in their entirety rather than comparing the differences between the trade marks.  He said that regard must be taken of the likelihood of imperfect recollection, noting that Lord Radcliffe said, in de Cordova v Vick Chemical Co, (1951) 68 RPC 103 at 106, 'that in most persons the eye is not an accurate recorder of visual detail and marks are remembered rather by general impression or by some significant detail than by any photographic recollection of the whole.' He submitted that the essential feature of the opponent's trade marks is the letters HSV and in the case of the opposed trade mark the general impression or significant detail by which it will be remembered by ordinary consumers, is HSV ENERGY DRINK, and thus the trade marks, in his opinion, are deceptively similar. Such a finding, he said, would be analogous with the findings in Virgin Enterprises Limited v Defiance Energy Pty Ltd [2003] ATMO 13 (26 February 2003), where Virgin Energy and Virgin were found to be deceptively similar, and Microcom Systems, Inc v Microcom Pty Ltd [1998] ATMO 2 (23 January 1998), where the words Networking Protocol were found to be 'utterly descriptive' and insufficient to differentiate Microcom from Microcom Networking Protocol. I note that in the latter case the trade marks were found to be substantially identical.

11. Mr Hamilton further submitted that consideration must be given to the likelihood of deception and confusion arising not because the trade marks are likely to be mistaken for one another, but because it might be though the trade marks indicated related products from the same source, per John Fitton & Co Ltd's Application, (1949) 66 RPC 110.

12. In accordance with Shell, supra, deceptive similarity is determined by a consideration of the impression based on recollection of the opponent's marks that persons of ordinary intelligence and memory would have and the impression that such persons would get from the applicant's mark, noting that Windeyer J added at page 416:

    [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.

13. And also on the matter of deceptive similarity, Dixon and McTiernan JJ, in   AustralianWoollen Mills  v F S Walton & Co, (1937) 58 CLR 641 at 658 said:

    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.

14. The purchase of soft drinks is not generally associated with particular caution or careful thought so that customers are likely to identify the brand of drink they want by an essential feature of the trade mark rather than by a careful and detailed examination of all of its features. The essential element of the applicant's trade mark is HSV and it is this element by which persons of ordinary intelligence and memory will recall the mark. It is also a common practice for the names of drinks to be abbreviated so that when they are purchased by oral request, it is more likely than not, that purchasers wanting to buy the applicant's cola flavoured drink would ask for an HSV, as opposed to other cola flavoured drinks such as a 'Coke' or a 'Pepsi'. The balance of the trade mark, ENERGY DRINK (HARD SERIOUS VITAMINS), not likely to be recalled by consumers because it would be taken to be descriptive of the goods. As Lord MacNaghten said, in Montgomery v Thompson, (1891) 8 RPC 361, 'Thirsty folk want beer, not explanations'.

15. For these reasons I find that the applicant's trade mark is deceptively similar to the opponent's trade marks.

    Reputation of the opponent's trade mark

16. On the matter of the reputation in Australia of the trade marks relied on by the opponent, Mr Hamilton submitted that the opponent has used its marks extensively, for over fifteen years, in respect of high performance motor vehicles and a broad range of merchandise, as well as in the promotion of sports events and club and other social events. Mr Hamilton submitted that the purchase of an HSV vehicle was a lifestyle choice made by those passionate about motor sports and the high prestige associated with these high performance vehicles.  He said that the reputation of the HSV trade marks has been greatly enhanced because of its association with the Holden Racing Team and the sport of motor racing. Mr Hamilton said that account should be taken of the comments of Hearing Officer Ian Thompson in Automobiles Peugeot v Viva Time Corp [2001] ATMO 52 (25 June 2001), where he said:

    Although this is not in evidence, I am aware that many people, and many automobile manufacturers, view the purchase of an automobile as a life style choice – this is particularly true at the ‘prestige’ end of the market.  Vehicle manufacturers market goods, some of them completely unconnected with vehicles, which are seen as embodying the image projected by the trade mark and reflecting the lifestyle image projected by the vehicles.

17. Although in the Peugeot case, the section 60 ground succeeded, that decision does not provide much assistance to the opponent because, Mr Thompson went on to find there was evidence that showed that automobile manufacturers are known to exploit the established reputation and prestige of their trade marks by making or licensing others to use their trade marks on such goods as watches, which were the goods of interest in that case. Because of Peugeot's reputation and the fact that the Peugeot was in fact using its trade mark on watches, there was a real likelihood of deception and confusion. So far as I am aware no automobile manufacturer has extended its range of merchandise to the soft drink industry and on the face of it, it seems an unlikely brand extension. However, I must balance this against the evidence of the broad range of goods already marketed by the opponent and consider whether the opponent's reputation is such that consumers are likely to be deceived or confused if the applicant uses his trade mark in respect of cola flavoured drinks, goods quite different from the usual range of merchandise used to promote motor vehicles.

18. The Holden motor car was the first locally manufactured car in Australia and it is generally regarded as a genuine Australian icon.  For more than fifty years many Australians have regarded a Holden as the obvious choice for the family car.  Such is its reputation, that although Holden is a relatively common surname, I believe the primary meaning now attached to the word, Holden, in Australia, is that it is the brand name of motor car. The HSV or Holden Special Vehicle is a relatively expensive motor car but not beyond the reach of many Australians who value the prestige attached to a specially modified Holden or who want to own a high performance vehicle, widely known to have achieved considerable success in motor racing. HSV trade marks had been in continuous use for fourteen years before the priority date of the subject application.

25.     Trade marks are frequently promoted as lifestyle choices and traders seek to protect and strengthen their trade marks by extending the brand, often through licensing programs, from a limited range to a diverse range of items to suit the image they wish to promote. Trade marks also command considerable customer loyalty so that traders see obvious commercial advantages in using their known trade marks on altogether new product categories.  A known brand brings with it recognition, confidence, and an expectation of a certain quality. It is a vehicle for creating an emotional bond with the consumer. There is also less risk and expense to the trader in attaching an existing brand name with an established reputation to a new product than there is to developing a new trade mark. Consumers will have a natural expectation of quality in a new product bearing a known trade mark.

26.     The HSV trade mark is used on a diverse range of goods. The extent and duration of exposure, the value of sales, and the nature and extent of advertising are impressive. The HSV website, according to Excelerate, (CP-11), regularly attracts almost 600,000 'hits' per week. Hitwise, an independent organisation providing 'real-time competitive intelligence services', ranked the HSV website the number one website, measured against other automotive industry sites, for the period January to March 2002, on the basis of the number of 'hits' received. The HSV reputation has been enhanced through motor racing which is regularly featured on television so that numerous Australians, most of whom will never own an HSV car cannot help but be aware of the trade mark. Altogether the opponent has provided convincing evidence of a significant reputation in Australia.

27.     The opponent's trade marks are promoted at exhibitions, trade shows and events such as motor racing meetings all attended by a broad cross section of the public. Soft drinks would be readily available at such events.  If the applicant's cola flavoured drinks were among those supplied it is inconceivable that customers would not wrongly assume that the opponent had extended its range of goods to include soft drinks, despite the fact makers of motor cars are not known, as yet, for involvement with this trade. Not only is HSV the essential feature of the applicant's trade mark, but three of the five remaining words in the trade mark are common to the language of vehicle performance and this increases the likelihood of customers assuming that there is a connection between the applicant's trade mark and the opponent's marks.  For example expressions such as 'fuel energy', 'brake hard', 'accelerate hard' and 'serious racing' are part of the every day language used in race commentaries and discussions about high performance vehicles. The applicant's trade mark conveys the message that it is a high performance drink but it seems to me that it is the established reputation of the opponent's HSV trade marks that provides the medium by which this message is communicated.  Indeed, public knowledge of the opponent's trade marks is so extensive that I consider it likely that wherever the applicant's goods are bought and sold a substantial number of customers will wrongly assume a connection with the opponent.

28.     The evidence before me demonstrates that the HSV trade marks have acquired a significant reputation among a substantial number of persons, possibly most adult Australians. I find that because of this reputation there is a real risk that use of the applicant's trade mark would result in deception and confusion.

1. This ground of opposition has been established.

   Decision

2. The opponent has established the ground of opposition on which it relied so that the opposition as a whole has been successful.  In accordance with the provisions of section 55 of the Act I refuse to register application number 902269.

   Costs

3. The opponent has sought its costs in this matter. As the opponent has been successful in its opposition, I award costs against the applicant and direct that the applicant pay the costs of the opponent in accordance with the official scale.

   Mary Skivington
   Hearing Officer
   Trade Marks Hearings
   09 October 2003