H-D Michigan, Inc v Victor Charles Vogt

[1999] ATMO 125

TRADE MARKS ACT 1995

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

Re:Opposition by H-D Michigan, Inc. to the registration of trade mark application number 676450 in the name of Victor Charles Vogt for the mark HOG DOGS and device

Background
Victor Charles Vogt (the applicant) filed trade mark application number 676450 on 30 October 1995 to register the trade mark:

 

After examination of the mark, it was accepted in class 42, in respect of "retail catering services of hot dogs".  The acceptance of the mark was advertised in the Australian Official Journal of Trade Marks of 28 November 1996.  On 26 March 1997, H-D Michigan, Inc. (the opponent) filed a notice of opposition to registration of the applicant's mark.  The opposition is based on various grounds.  At the hearing, however, the opponent focussed its submissions on the grounds concerning sections 44 and 60. 

The opponent had earlier requested a hearing on the opposition, which was held in Melbourne.  At the hearing, Mr John Hawker of Callinan Lawrie appeared on behalf of the opponent.  Mr Vincent Vogt, the applicant, represented himself.

The evidence
The evidence in support of the opposition comprises three statutory declarations.  The first of these is an affidavit, with annexures, by John R. Troll, vice president and trademark counsel of the opponent company.  The declarant refers to an annexed list of a large number of trade mark applications and registrations for various marks in Australia.  He also attests that the opponent's subsidiary and licensee, Harley-Davidson Motor Company, manufactures and distributes for sale motorcycles, their parts and accessories, as well as other related goods, most of which bear one or more of those marks.  A separate annexure lists goods and/or services covered by one or more of the marks.  Mr Troll says that, since at least 1936, the mark HOG has been identified in the United States of America and throughout the world with motorcycles manufactured and distributed by the Harley-Davidson organization.  In 1983, the word had been adopted to serve as an acronym for Harley Owners' Group and, in the same year, to facilitate the motorcycling activities of its customers, Harley-Davidson organized chapters under that name, which, by 1997, had extended to many countries, attracting 7,587 members in Australia.  Moreover, the opponent has registrations and applications for marks containing or comprising the word HOG, in a number of classes, throughout the word, including Australia.  Mr Troll says that use of the marks for motorcycles and related products has received broad recognition in a monthly newsletter mailed to members of the organisation.  In addition, each year Harley-Davidson publishes a product catalogue, which is circulated in Australia, showing the marks in use.  Mr Troll provides some copies of excerpts from this catalogue as exhibits to his affidavit.  He also claims that further recognition is spread through internationally distributed newspapers and magazines.  Mr Troll expresses the view that the opponent claims valuable reputation in its marks, which specifically include those consisting of or containing the word HOG and the words HARLEY OWNERS' GROUP, because those marks are used in connection with the sale of motorcycles, their parts and accessories, motorcycle repair services and related goods, such as clothing, memorabilia and collectibles.  

A further statutory declaration, with exhibits, in the evidence in support is made by Robert Charles Kelson, a principal of the firm of attorneys acting for the opponent.  Mr Kelson has annexed to his declaration various exhibits showing use of the word HOG and its relationship with Harley-Davidson motorcycles.  There is also exhibited correspondence from the applicant, which is purported to show that the applicant is aware of this connection. 

The last declaration made by Mark Roberts is in the form of a questionnaire.  Mr Roberts, with sixteen years experience in the motorcycle trade, says he is familiar with the acronym HOG and would associate the applicant's mark, if used in relation to hot dogs, with the Harley Owners' Group. 

In the evidence in answer, the applicant has included three statutory declarations concerning the applicant's mark.  The applicant exhibits photographs of his motorcycle and of his catering services at various events.  

Submissions
Mr Hawker said that, in these proceedings, the opponent proposed to rely on two substantive grounds based on s. 57 (involving s.44) and s.60: that the applicant's trade mark was substantially identical or deceptively similar to a number of opponent's prior registrations, and that the reputation of those opponent's trade marks was likely to cause deception or confusion with the applicant's mark.  

Mr Hawker pointed to a number of opponent's marks which comprise or incorporate the word HOG, the acronym for Harley Owners' Group which, as shown in the evidence, was also a nickname for Harley-Davidson motorcycles.  Referring to the list of marks registered in Australia, annexed to Mr Troll's affidavit, Mr Hawker selected the statement of services of registration number 577004, in class 42, in particular, asserting that the description "other services in this class relating to motorcycle clubs" was a broad statement, which would cover, for example, organizing exhibitions, shows and meetings for motorcycle enthusiasts.  These, he said, could include motorcyclist gatherings or events at which arrangements might be made for refreshments and catering.  Given that the opponent would organize or sponsor such events and the possibility of the applicant's services under its mark operating there, then the opponent's and the applicant's services would be similar and, consequently, a strong likelihood existed of deception or confusion between the respective marks, Mr Hawker submitted. 

Moving on to the s.60 ground, Mr Hawker said that confusion between the marks could occur through use of the applicant's mark, having regard to the world-wide reputation of the opponent's marks not only in relation to motorcyles, but also other goods related to the image of Harley-Davidson.  He said that Mr Troll had affixed to his affidavit a comprehensive list of all the other products in relation to and associated with Harley-Davidson that the opponent was selling.  Mr Troll's affidavit also contained the evidence of reputation of Harley-Davidson and the HOG trade marks.  However, in relation to that evidence, he wished to make three points: the Harley Owners' Group, or HOG, had a membership of over 290,000 people world-wide, which was a significant number; the word HOG in association with Harley-Davidson was extremely well-known from magazines, published by the opponent, as supported by the exhibits in the evidence; and the applicant himself had conceded that Harley-Davidson motorcycles were generally known as "Hogs".  It was the opponent's submission that, in view of this association, use of the words HOG DOGS with the motorcycle device, would be likely to cause deception or confusion.  Mr Hawker stressed that there would be a high level of knowledge of motorcycles at the events where the applicant was likely to sell his hot dogs.  The people at these events, he said, would know that a "Hog" was a Harley-Davidson motorcycle and they would be caused to wonder as to whether there was a connection between manufacturers of a Harley-Davidson motorcycle and the applicant.  For evidence as to the likelihood of confusion of the marks, Mr Hawker referred to the statutory declaration of Mr Roberts. 

Turning to the applicant's evidence, Mr Hawker commented that, in the three main declarations, a number of the questions did not seem to be a part of what was sworn to by the declarants, and therefore should not be admitted as evidence.  Furthermore, he added, the declarants themselves did not seem to be qualified in the relevant area to make the statements.  In conclusion, Mr Hawker requested that costs be awarded to the opponent.

Replying to the opponent's submissions, Mr Vogt said that the persons who answered the questions in the applicant's declarations were entitled to say what they thought of his business if it was alleged that he was trying to trade on somebody else's name, or to misrepresent anyone.  He said his business was selling of hot dogs.  He also sold chilli chutneys, the reference to these products being incorporated in his mark as "the original chilli dog".  In the near future, he intended to introduce on the market a chilli sauce.  Mr Vogt said that he attended all the motorcycle shows where, besides the "hog dogs" - a nickname for a hot dog with the lot - he also traded other merchandise.  Clearly, his business involving food was different from the opponent's business and had nothing to do with a Harley-Davidson motorcycle.  He said he had never tried to misrepresent or mislead anyone by attempting to infer that his trade mark had a connection with the opponent.  In his opinion, HOG was a nickname, and a "Harley-Davidson" enjoyed a good reputation in the motor cycle field, whereas his operations were confined to the catering service. 

After the hearing, Mr Hawker advised me that negotiations, commenced between the applicant and the opponent some time before the hearing, were to continue.  As there was a real possibility of a settlement of the dispute between the parties, he requested time of two to three weeks to consult with the opponent before I was to issue my decision on the present opposition.  These settlement negotiations, however, extended over a very long period, resulting in a stalemate.  Consequently, my decision on the opposition follows.  

Discussion and analysis 
Whether applicant's mark substantially identical or deceptively similar
Under s.57, registration of a mark may be opposed on any of the grounds on which an application for registration may be rejected, except that the trade mark cannot be represented graphically.  The grounds for rejection are set out under Division 2 of Part 4 in the Act.  From the language of the submissions in relation to s.57, Mr Hawker relied on subsections 44(1) and 44(2), which do not allow registration of a mark that is substantially identical with or deceptively similar to other persons' registered marks or marks pending registration for similar goods or closely related services, or similar services or closely related goods to the services, and those marks have a priority date.  Under s.10, a mark is deceptively similar to another mark if it so nearly resembles that other mark that it is likely to deceive or cause confusion. 

In a recent Federal Court decision Registrar of Trade Marks v Woolworths Ltd (1999) 45 IPR 411, with reference to Smith Hayden and Co's Appn (1946) 63 RPC 97 at 101.8, Justice French said, at 426, that

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.

The details of the listed opponent's earlier registered marks in Australia consisting of or incorporating the word HOG, annexed as an exhibit to Mr Troll's affidavit, are as follows:

Number     Filed     Trade Mark    Class              Goods or Services

1. 1.8.89    HOG  42       Motorcycle club services in this class,

   services relating to motorcycles and motorcycle clubs in this class including providing rewards for the return of stolen motor cycles

2. 23.4.92    HOG  16       Books, bumper stickers, removable

   tattoos, cheque book covers, playing cards, calendars, decals, photo albums, posters, magazines relating to motorcycling; pens, mechanical pencils, paper banners and road atlases, newsletters relating to motorcycling, parts and service manuals for motorcycles, parts catalogues for motorcycles, accessory catalogues and lists, instruction books and handbooks, greeting cards, banners relating to motorcycling, note paper, pens and pencils, paper table covers, paper napkins, puzzles in this class, children's books, and all other goods in this class

3. 24.4.92  16       Books, bumper stickers, cheque book

   covers, playing cards, calendars, decalcomanias, photo albums, posters, magazines relating to motorcycling, pens, mechanical pencils, paper banners and road atlases, newsletters relating to motorcycling, parts and service manuals for motorcycles, parts catalogues for motorcycles, accessory catalogues and lists, instruction books and handbooks, greeting cards, paper banners including those relating to motorcycles, note paper, pens and pencils, paper table covers, paper napkins, puzzles in this class, children's books, and all other goods in this class

4. 24.4.92  42       Organising clubs for motorcycle
   

     enthusiasts and sponsoring motorcycle       club activities, and other services in this 

   class relating go motorcycle clubs

5. 24.4.92  26       Belt buckles, embroidered patches, pins 
   

     in this class, badges in this class, and all

   other goods in this class

6. 24.4.92  25       Clothing, namely sweat pants, sweaters,

   suspenders, scarves, bandannas, jackets, vests, gloves, jeans, chaps, tops, boots, shorts, caps, belts, wristbands, coveralls, halter tops, hats, neckties, nightgowns, night shirts, pants, rain suits, shirts, socks, sweatshirts, tank tops, athletic shoes, shoes, T-shirts, underwear, motorcycle riding suits, head bands, ladies' underwear, knit hats, leg warmers, knit tops, headwear, aprons, mittens, lingerie, rain coats, rain hats, leather clothing, footwear, sportswear, skirts, nightwear, children's wear, coats; bibs not of paper; parts of footwear, namely boot tips, sole plates, heel shifter spurs, heel guards, decorative boot straps and heel spurs; and all other goods in this class

7. 13.2.90   25      Clothing and footwear, including boots,

    

   sweatshirts, jeans, hats, caps, scarves,
     motorcycle riding suits, neckties, shirts,

   T-shirts, headbands, jackets, vests, gloves, chaps, shorts, sweat pants, ladies' underwear and tops, bandannas, socks; and all other goods in this class.

All the above opponent's marks are registered and carry an earlier priority date than the present application.

The opponent made no submissions as to why it may consider its marks to be substantially identical with or deceptively similar to the mark the subject of this application.  Concerning the former, I believe that the opponent would not challenge my observation that the marks are not substantially identical.  In relation to a consideration of the latter, it will be appropriate to refer to the words of French J in Registrar v Woolworths, supra, at 427-428:

The judgment of the likelihood of deception or confusion is a very practical one and what has long been accepted as the proper approach to making that judgment was set out in Australian Woollen Mills Ltd [(1937) 58 CLR 641]. It requires assessment of the effect of the challenged mark upon the minds of potential customers. Impression or recollection taken away from the point at which the challenged mark is observed will be the basis of any belief about a connection between the new and the old marks. The effect of spoken description must be considered. What confusion or deception may be expected is to be based upon the behaviour of ordinary people. As potential buyers of goods they are not to be credited with high perception or habitual caution. Exceptional carelessness or stupidity may be disregarded.

The only element shared by the above-identified opponent's marks and the one now sought to be registered is the word HOG.  In the present mark, this word is accompanied by the word DOGS, and the combination of these two words occurs twice in the mark.  Given the applicant's hot dog business, it seems to me that the choice of the words HOG DOGS could have been deliberate, suggesting a play on the words "hot dogs", which significance would not be lost on many of the applicant's potential customers.  To those persons familiar with the acronym HOG as referring to the Harley Owners' Group or a Harley Davidson motorcycle, the meaning of the word HOG expresses a special significance, but, despite this significance, there is sufficient conceptual and aural distinction between the words HOG and HOG DOGS, so as to minimise the risk or confusion on occasions when the marks are verbalized.  

The device elements appearing in five of the opponent's marks enhance further the distinguishing features from the visual point of view.  In the mark 528517, the letters H and G are superimposed on a spoked wheel device, which component could also be regarded as the word HOG with a stylized letter "O".  This particular version of HOG is incorporated in the marks 577003, 577004, 577005 and 577006, where it occupies the central portion, being surrounded by an eagle with outstretched wings and a scroll device with the words HARLEY OWNERS' GROUP.  These devices have nothing in common with the opposed mark's pig or hog device sitting on a motorcycle eating what appears to be a hot dog.  Moreover, in these marks the dominant pictorial components themselves generate a readily distinguishable idea: on the one hand, an eagle, normally associated with strength and wisdom, holding a wheel, and a not very appealing cartoon character riding a motorcycle on the other hand.  To my mind, any impression formed by the applicant's mark would be individual to such an extent that it could not be mistaken for any of the opponent's sets of marks discussed above. 

The statement of services of the present application reads: "retail catering services of hot dogs".  Five of the above opponent's registrations in classes 16, 25 and 26 cover goods which are totally unrelated to the applicant's services, nor did the opponent present arguments to the contrary.  Registrations numbers 515980 and 577004 are in respect of services in class 42, embracing services that relate to motorcycles and motorcycle clubs.  It has been submitted by the opponent that the services of registration number 577004 are sufficiently wide so as to include the sponsoring or organizing of events and gatherings for motorcycle club members, such events frequently involving the catering of food and beverages.  While it is conceded that the type of services provided by the applicant and the opponent could be seen to have a nexus on occasions where they were carried out concurrently, relying on the relevant tests in determining whether services are similar, I consider the services in question not to be alike in nature, use or origin - see Jellinek's Appn (1946) 63 RPC 59. On the one hand, the services include the establishing of clubs and planning and sponsoring activities for a particular group of persons and, whatever services are intended to be encompassed in the description "other services" in registration 577004, those services concern a body of persons that itself, as far as I am aware, is not known for preparing and selling of food. There is no suggestion in the opponent's evidence to the effect that it involves itself in any services relating to food. Where catering services are required at a function or an event for motorcycle club members, I believe, persons would be engaged from the outside to arrange such services. On the other hand, the applicant's services relate only to the provision of a limited selection of casual food. Catering is a specialized service, as are the services concerning the affairs and interests of the motorcycle club members; each of these sets serves an individual function and is performed by different people, even though those services may operate at the same venue. As a result, I do not think it would be realistic to say that the applicant's services and the services covered by the "Hog" marks could be considered in any way similar within the meaning of s.44 of the Act.

In view of the foregoing, I am not convinced that the applicant's mark offends against the provisions of s.44.  For that reason, I dismiss the opposition based on that section. 

Use of the applicant's mark in view of the opponent's marks that have acquired a reputation - s.60

Section 60 provides that -

60.  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.

For the opponent to set in motion a proposition in terms of s.60, the opposed mark must be found to be substantially identical with or deceptively similar to the opponent's marks.  If that test is satisfied, then is assessed the accumulated reputation of the opponent's marks in Australia before the filing of the opposed trade mark, and consideration is given to what effect that reputation would have on a substantial number of the public concerned, given the presence of the applicant's mark in the market place. 

In considering the s.44 ground, I have come to the conclusion that the threshold test in relation to s.60 has not been met by the opponent, i.e. that the applicant's mark is neither substantially identical with, nor deceptively similar to. the opponent's marks featuring the word HOG.  In these circumstances, consideration of what standing the opponent's marks had achieved in Australia and its impact on the persons concerned would be unnecessary.  However, I will briefly comment on how I would have assessed the evidence in this regard, had I found the respective marks to be deceptively similar.  

Apart from the opponent's many registrations of its marks in different countries throughout the world, primarily, the opponent's evidence towards reputation in those marks relies on printed material.  Were the opponent to establish extensive circulation of the literature concerning the marks for a long period of time and before the applicant filed its application, some conclusions could be drawn from such evidence as to exposure of the marks to a certain proportion of the community, particularly the persons interested in the relevant products or services.  Most of the material in the opponent's evidence, however, post dates the subject application and does not provide information on either how it was distributed in Australia or what proportion of Australians would have had access to the material. 

According to Mr Troll, Hog Tales is a monthly newsletter sent to each member of the Harley Owners' Group organisation of 293,000 members, including those in Australia, but the declarant omits to indicate how long the newsletter has been circulated in Australia and the number of its recipients.  Mr Troll exhibits copies of excerpts from catalogues named Motorclothes of 1990, 1991, 1992, 1993 and 1995, which show the opponent's mark of registration number 577006, among others, in relation to various items of clothing, headgear and other goods.  Although these catalogues, originating in the United States of America, are said to be available from and distributed by every Harley-Davidson retailer, also from those in Australia, the evidence does not provide details as to at least an approximate number of the catalogues reaching the persons interested in the opponent's offered goods.  Similar observation can be made from the impressive list of the magazines which, Mr Troll says, prominently display the opponent's "Hog" marks.  These magazines may enjoy circulation internationally, but that factor alone does not permit me to reach any conclusions on the impression the opponent's marks might have left on the Australian public before the existence of the present application.  In sum then, while the opponent's marks under consideration are probably well-known throughout the world, Mr Troll's affidavit falls short of demonstrating that considerable reputation can be attributed to the marks in Australia in respect of the goods or services nominated in the registrations. 

The alleged recognition of the term HOG in Australia is highlighted in the statutory declaration by Mr Kelson, who exhibits copies of a magazine Heavy Duty and newspaper articles, which were published locally, and a print out of Internet Web Find.  This evidence supports the contention that the word HOG in Australia would be associated with the Harley-Davidson motorcyles, or with the organisation of Harley-Davidson motorcycle owners by at least those members of the community who are involved in motorcycling activities.  However, this evidence does not necessarily establish a doubt in the minds of the relevant persons as to a link, in the course of trade, between the opponent's products or services bearing a "Hog" trade mark and the catering services identified by the applicant's mark - see Southern Cross Refrigerating Co v Toowoomba Foundry Pty Ltd (1954) 91 CLR 592.

The statements in Mr Roberts' statutory declaration do suggest that the term HOG is identified with the Harley Owners' Group and that the applicant's mark may be associated with that group.  A sole declaration from a person involved in the motorcycle trade, however, is not sufficient to demonstrate that persons would be left wondering as to whether the applicant's services shared the same origin as the opponent's products or services.

Accordingly, the opponent's evidence would not have satisfied me of the reputation of the opponent's marks in Australia and the likelihood of deception or confusion between the marks, given that reputation, even if the marks in question were held to be deceptively similar. 

Having regard to the above comments, the ground of opposition based on s.60 fails. 

Conclusion
In view of the foregoing, I have found that none of the grounds of opposition argued at the hearing have been successful.  The opposition in total is therefore dismissed.  Subject to any appeal against my decision, I direct that the subject application may proceed to registration.

Costs
The opponent has sought costs in the proceedings.  However, the applicant being the successful party is entitled to costs, and I direct that such costs be paid to the applicant by the opponent. 

Vija Zars
Hearing Officer
10 December 1999