Hunter Property Holdings Pty Ltd v Knott Investments Pty Ltd
[2015] ATMO 20
•23 February 2015
TRADE MARKS ACT 1995
DECISION OF A DELEGATE OF THE REGISTRAR OF TRADE MARKS WITH REASONS
Re:Oppositions by Hunter Property Holdings (Aust) Pty Ltd to registration of trade mark applications 1536536 AVIDA (& DEVICE) (12; 37) and 1536541 AVIDA (12; 37) - filed in the name of Knott Investments Pty Ltd.
| Delegate: | Heath Wilson |
| Representation: | Opponent: Mr Ed Heerey of Counsel instructed by Kahns Lawyers. Applicant: Mr David Stack of Counsel instructed by HWL Ebsworth Lawyers. |
| Decision: | 2015 ATMO 20 Opposition under section 52 of the Trade Marks Act 1995 –section 60 pressed – whether reputation sufficient for deception or confusion to occur – Opposition not established. |
Background
Knott Investments Pty Ltd (‘the Applicant’ in this matter) filed two trade mark applications on 25 January 2013. Those trade marks were examined under section 31 of the Trade Marks Act 1995 (‘the Act’) and advertised as accepted for possible registration in the Australian Official Journal of Trade Marks on 16 May 2013. The current details of the Applicant’s trade marks (‘the Trade Marks’) are as follows:
| TM No. | Trade Mark | Class / Specification of Goods and Services |
| 1536536 | Class 12: Automotive vehicles; Body parts for vehicles; Bodywork parts for vehicles; Camping vehicles; Chassis parts for road vehicles; Motor vehicles; Passenger motor vehicles; Vehicles adapted for agricultural use; Vehicles fitted with living accommodation; Vehicles in the nature of caravans; Vehicles Class 37: Advisory services relating to the repair of motor vehicles; Installation of parts for vehicles; Maintenance and repair of motor vehicles; Servicing of vehicles; Repair of motor vehicles | |
| 1536541 | AVIDA | Class 12: Automotive vehicles; Body parts for vehicles; Bodywork parts for vehicles; Camping vehicles; Chassis parts for road vehicles; Passenger carrying vehicles; Passenger motor vehicles; Vehicles; Vehicles fitted with living accommodation; Vehicles in the nature of caravans; Motor vehicles Class 37: Maintenance and repair of motor vehicles; Repair of motor vehicles; Advisory services relating to the repair of motor vehicles; Installation of parts for vehicles; Servicing of vehicles |
A notice of intention to oppose both trade mark applications was filed on 14 June 2013 by Hunter Property Holdings (Aust) Pty Ltd (‘the Opponent’). The statement of grounds and particulars subsequent filed by the Opponent nominates grounds of opposition under sections 58 and 60 of the Act.
A notice of intention to defend the opposition was filed by the Applicant. The parties then filed the following evidence:
Evidence
Evidence in Support
Declaration of Ward Greenway (Principal Dealer of Melbourne RV Centre) dated 12 December 2013 with exhibits A to B.
Declaration of Melissa Hunter (Director of the Opponent) dated 13 December 2013 with exhibits A to G.
Evidence in Answer
Declaration of Ben Binns (Director and CEO of the Applicant) dated 17 March 2014 with exhibits BB1 to BB 36 (including confidential exhibits A, B, BB3 to BB5, BB11, BB22 & BB26)
Declaration of Ron Warden (Director of Australian Motor Homes Pty Ltd) dated 18 March 2014.
Evidence in Reply
Declaration of Melissa Hunter dated 16 May 2014 with exhibits A-J (including confidential exhibits A, B, G and J).
Declaration of Nicholas Hunter (Director of the Opponent) dated 16 May 2014 with exhibits NH-1 to NH-5 (including confidential exhibits NH-3 to 5).
Declaration of Sean McEvoy (Motor Dealer of Sunshine State RV) dated 15 May 2014.
Declaration of Jordan Ward Smith (Solicitor for Opponent) dated 19 August 2014 with exhibit JS-01.
Both parties ultimately requested to be heard and provided written submissions. The the Opponent indicated a reliance on the ground of opposition under section 60 only.
As a delegate of the Registrar of Trade Marks, I heard the oppositions in Canberra on 24 November 2014. Mr Ed Heerey of Counsel appeared via video conference on behalf of the Opponent and Mr David Stack of Counsel appeared in person on the Applicant’s behalf.
It was accepted by the parties that the Opponent bears the onus of proof in these matters and that it must establish a ground of opposition on the standard of the balance of probabilities.[1] The only ground of opposition pursued was section 60 and for completeness, I treat the remaining ground in the statement of grounds and particulars as having been abandoned.
[1] See Pfizer Products Inc v Karam [2006] FCA 1663; 237 ALR 787; (2006) 70 IPR 599; [2006] AIPC 92-146 at [6] to [26]; Chocolaterie Guylian N.V. v Registrar of Trade Marks [2009] FCA 891; (2009) 180 FCR 60; (2009) 258 ALR 545; (2009) 82 IPR 13; [2009] AIPC 92-355 at [22] to [26] and NV Sumatra Tobacco Trading Company v British American Tobacco Services Limited [2011] FCA 1051 at [16] to [36].
Section 60
Section 60 of the Act provides:
60Trade 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)another trade mark had, before the priority date for the registration of the first‑mentioned trade mark in respect of those goods or services, 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:For priority date see section 12.
There were a number of issues of trade mark law raised by counsel at the hearing. They revolved around how the provisions of section 60 apply to the evidence supplied in this opposition. I will therefore set out the general principles guiding the application of section 60 with the goal of ensuring clarity from the outset.
Section 60 has two major elements which must both be satisfied for a successful opposition. With reference to the specific facts of the current opposition, the Opponent must firstly demonstrate the existence of a reputation in Australia of another trade mark before 25 January 2013. Australian legal precedent points to a requirement that ‘significant’ or ‘substantial’[2] number of consumers within the relevant trade/market (rather than Australian consumers as a whole) must be likely to be deceived or confused. The assessment of what is ‘significant or substantial’ must be properly and sensibly applied[3] and may depend on the specialised nature of the relevant market.[4]
[2] See Renaud Cointreau & Cie v Cordon Bleu International Ltee (2001) 52 IPR 382; [2001] FCA 1170 and ConAgra Inc v McCain Foods (Aust) Pty Ltd[1992] FCA 159; (1992) 23 IPR 193.
[3]“Bali” Trade Mark [1969] RPC 472 per Lord Upjohn at 496.
[4] Le Cordon Bleu BV v Cordon Bleu International Ltee (2001) 50 IPR 1; [2000] FCA 1587 at 20
For the second limb of the test, the nature and extent of the abovementioned reputation must be such that the use of the Trade Marks would be likely to deceive or cause confusion in the marketplace. This element does not require actual instances of deception or confusion (as a result of the established reputation in the trade mark) to be demonstrated, but where such instances have been provided, they will be given great weight.[5]
[5] See Australian Woollen Mills Ltd v F. S. Walton and Company Ltd (1937) 58 CLR 641 Dixon and McTiernan JJ
The decision in ConAgra Inc v McCain Foods (Aust) Pty Ltd[6] indicates that reputation may be proven by a variety of means. In McCormick & Co Inc v McCormick[7], Kenny J set out some of the ways in which to assess reputation:
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.
[6] ConAgra Inc v McCain Foods (Aust) Pty Ltd (1992) 33 FCR 302 at 343; 23 IPR 193 at 234.
[7] McCormick & Co Inc v McCormick (2000) 51 IPR 102, 127.
Submissions
The Opponent is relying on the reputation of its VIDA trade mark in Australia, which is the name of a model of motorized recreational vehicle under the Opponent’s SUNLINER range. Mr Heerey focused on the similarity of the Trade Marks to the Opponent’s (i.e. ‘AVIDA’ to ‘VIDA’), and also on the similar services to which the trade marks are applied in conjunction with the reputation demonstrated by the Opponent’s evidence.
Mr Stack was critical of the Opponent’s evidence arguing that it does not establish a sufficient reputation because there is simply not sufficient evidence of sales, advertising, or use of the Opponent’s trade mark by itself (i.e. without the accompanying ‘SUNLINER’ brand). All of these factors, he argued, weighed against a finding that the Opponent has established the requisite reputation under section 60.
In the first instance, there is no doubt in my mind that the Opponent’s trade mark ‘VIDA’ and the Trade Marks are deceptively similar taking into account the well-established legal principles on that question. However, while it is relevant, a finding of deceptive similarity is not determinative of the ground of opposition under section 60. I am to consider the deception or confusion that is likely to arise from a notional use of the Trade Marks on all the claimed goods and services in light of the reputation in another trade mark.
In the current opposition, I am satisfied that the trade marks are similar, that they are used in the same markets and the products themselves are fairly specialised and of relatively high expense. That is the context within which I will assess the Opponent’s reputation in its ‘VIDA’ trade marks.
The Opponent is part of a corporate group that has been trading under the business name ‘Sunliner Recreational Vehicles’ since 1974. The Opponent’s ‘Sunliner’ range of campervans includes the ‘VIDA’ model. A director of the Opponent, Melissa Hunter, indicates in her first declaration[8] that the name of the Opponent’s VIDA model was chosen in around March 2009. The first VIDA campervan was sold around August 2009 in Australia. Therefore, there has been over three years of use of the trade mark ‘VIDA’ in the Australian marketplace. According to the evidence, around 21 VIDA campervans were sold from 2009 until mid 2012. There is some evidence of growth in sales of the model.
[8] First declaration of Melissa Hunter, paragraph 4.
The Melbourne RV Centre is a dealer in the Opponent’s ‘Sunliner’ range of campervans.[9] The dealer promotes the VIDA model in Australia via public exhibitions, online presentations and advertisements on its website. Marketing has occurred in local and national publications. This marketing includes advertisements at the Victorian Caravan and Camping Show in 2012 and in the industry magazine ‘Caravan & Motorhome on Tour’ from 2012.
[9] Declaration of Ward Greenway at paragraph 3.
In March 2013 (after the priority dates of the opposed applications) the Victorian Caravan and Camping Show was held and both the Applicant and the Opponent’s dealer had exhibition stands in close proximity to each other. According to Mr Greenway[10], several customers asked him whether the’ VIDA’ and ‘AVIDA’ brands were related. Mr Greenway further attests to instances of confusion since that time from customer telephone queries regarding rebranding. He declares that his company sells about one VIDA model a month (although Mr Stack noted at the hearing that this figure does not accord with the previous evidence that 21 had been sold between 2009 and 2012).
[10] Principal dealer at the Melbourne RV Centre.
The context of the trade mark use and demonstrated reputation is crucial. The evidence of the Opponent indicates that the model name ‘VIDA’ was used in relation to the campervan subcategory, and it was not until late 2012 that the Opponent made the decision to expand the VIDA range into motorized recreational vehicles, specifically motorhomes.[11]
[11] McEvoy declaration at paragraph 8.
The cover of the Opponent’s 2011 and 2012 product brochure presents the Opponent’s trade mark in the following way:
It is evident from the above example that the Opponent has a product range under the SUNLINER brand and VIDA is one of those models. Listings for sale on third party websites include descriptions such as ‘Sunliner Motorhome – Vida 241’ and ‘2013 SUNLINER VIDA’. The Applicant’s motorhome also appears on the same third party website in the same listing being ‘Avida Motorhome – V6414 Escape’. I note here that the Applicant’s emphasis is on the ‘AVIDA’ brand and for the Opponent the ‘VIDA’ brand is invariably secondary to SUNLINER.
The evidence in reply contains further detail on use and reputation of the Opponent’s trade marks in Australia. The second declaration of Ms Hunter contains evidence of sales invoices, and indicates that the product brochures referred to above are distributed through the Opponent’s dealer network. Since 2009, around 12,000 brochures have been distributed, according to Ms Hunter. However, Ms Hunter makes it clear that:
It is not in line with Sunliner marketing guidelines to have advertising material such as brochures on display for anybody to pick up. Brochures and advertising material are handed to genuine customers on request or after discussions with salesman. (sic) Any brochure that was handed out would have contained reference to the Vida model in some manner of description. [12]
[12] Second declaration of Melissa Hunter, paragraph 20.
More importance was placed on the fact that the Opponent’s products have been on display in the dealer yards since 2009. This presumes that the product (and also the trade mark) is prominently displayed and customers entering the dealer’s yard are shown or exposed to the Opponent’s ‘SUNLINER’ range and the specific ‘VIDA’ model within that range. However, there is little indication of any particular visual emphasis on the word ‘VIDA’ on the campervan models that may have been on display for the consumer. The examples that have been provided show an emphasis on the ‘SUNLINER’ logo with the word ‘VIDA’ appearing on the side of the campervan in cursive script.
Mr Stack took a statistical approach to his criticism of the Opponent’s sales figures comparing them with sales figures of the broader industry. Such a comparison is not favourable to the Opponent. Mr Heerey understandably took issue with that approach arguing that it was the incorrect consideration for a ground of opposition under section 60 of the Act. In Tivo Inc v Vivo International Corporation Pty Ltd:[13]
If, for example, the mark’s reputation is confined to a narrow group of sophisticated users, as in Renaud Cointreau, but the class of consumers of the relevant goods is wide, it may be difficult to show a likelihood that the reputation is such that the use of the opposed mark will cause confusion, either because only a minimal number of persons might be confused, or because the character of the group is such that confusion is, in any event, unlikely. On the other hand, if the trade mark in question were used in relation to goods or services commonly consumed only by specialised groups, it would be inappropriate to require a reputation amongst a substantial number of members of the Australian public generally.
[13] Tivo Inc v Vivo International Corporation Pty Ltd [2012] FCA 252 at [324].
While I am not satisfied that it is appropriate to compare sales in this fashion, it does provide some indication of whether a reputation exists amongst the requisite amount of consumers. For section 60, many decisions show that a reputation may be inferred from relatively high sales and advertising figures and, while such a reputation in VIDA cannot reasonably be inferred here, that is by no means the only way in which to demonstrate a sufficient reputation.
For the avoidance of doubt, I find that the fact that the SUNLINER brand invariably appears in combination with ‘VIDA’ does not mean that the use demonstrated is not trade mark use.[14] However, it may (and does, in my view) affect a finding of whether the trade mark has a sufficient reputation in the industry. I am satisfied that the way in which VIDA has been used by the Opponent is trade mark use. However, that finding is very different to finding that there is an established reputation sufficient for the use of the Trade Marks to be likely to deceive or cause confusion. For example, in Sara Lee Corporation v Bali Blue Pty Ltd[15]:
It is one thing to sell goods, it is quite another to show that they have amassed a reputation which is sufficient to lead consumers into deception or confusion and to satisfy the requirements of section 60.
[14] See Wellness Pty Ltd v Pro Bio Living Waters Pty Ltd and Ors (2004) 61 IPR 242 at 247 and Anheuser-Busch, Inc v Budejovick Budvar, Nrodn Podnik & Ors [2002] FCA 390.
[15] Sara Lee Corporation v Bali Blue Pty Ltd [2003] ATMO 81 at [25].
More specifically for the current opposition, it is one thing to demonstrate use of a trade mark but it is another thing to find that the use of the trade mark has been sufficient for the requirements of section 60 to be satisfied.
The Likelihood of Deception or Confusion
The difference between to ‘deceive’ and to ‘cause confusion’ was considered in Pioneer Hi-Bred Corn Co v Hy-Line Chicks Pty Ltd[16] where it was stated:
Deceived’ implies the creation of an incorrect belief or mental impression and ‘causing confusion’ may go no further than perplexing or mixing up the minds of the purchasing public.... Where the deception or confusion alleged is as to the source of the goods, deceived is equivalent to being misled into thinking that the goods bearing the applicant's mark come from some other source and confused to being caused to wonder whether that might not be the case.
[16] (1979) RPC 410 at 423
In the current matter Ms Hunter is concerned by the fact that the Opponent’s ‘VIDA’ motorhomes and caravans are currently sold in a particular dealership (Australian Motorhomes) along with the Applicant’s AVIDA motorhomes and caravans. In those circumstances confusion is likely. On this particular point, the majority of the High Court found in Sym Choon & Co Ltd v Gordon Choon Nuts Ltd:[17]
The possibility of identity or similarity of names of owners of trade marks - and also of proximity of businesses - is present in every case. Confusion arising from such circumstances does not constitute deception arising from the use of a trade mark. The actuality of such identity of names and proximity of businesses does no more than demonstrate beyond question that such a possibility is real and not merely imaginary. Such circumstances as these, which are present in every case, cannot be evidence of the likelihood of deception...
[17] Sym Choon & Co Ltd v Gordon Choon Nuts Ltd [1949] HCA 54; (1949) 80 CLR 65 [at 72].
Apart from the confusion arising from the trade show, Ms Hunter also attests to confusion occurring at the yards of motorhome dealers:[18]
For example, one customer came in to see the Vida Esperance (an Avida model) and another one asked for the Avida campervan (but meaning a Vida campervan. When questioned in relation to this he said “you know the Sunliner one”).
[18] First declaration of Melissa Hunter, paragraph 15.
The customer in the latter scenario was not confused but the need for clarification from the dealer was due to the similarity between the names VIDA and AVIDA rather than the reputation in VIDA. Mr McEvoy is the principal dealer of Sunshine State RV and has been stocking the Opponent’s VIDA model since June 2011. He attests to the following conversation with Nicholas Hunter of the Opponent:
I first became aware of the new name of the Winnebago product ‘AVIDA’ in late January 2013 through an industry associate. My initial response was of shock thinking that Sunliner had sold the Vida name. I immediately rang Nick Hunter with words of (sic) to the effect of:
Me: Hey have you heard the new Winnebago name – Avida?
Nick: Yeah I heard. It’s very similar to Vida.
Me: So you guys haven’t sold them the Vida name or anything.
Nick: No I only just found out myself.
Conversely, Ben Binns (CEO of the Applicant) attests to the following conversation with Mr Ron Warden on 31 January 2013:[19]
Me: “Ron, did you send me something in the mail regarding a Sunliner Vida model?”
Mr Warden: “Yes, Nick Hunter from Sunliner called me and sent me something so I sent it to you.”
Me: “I have never heard of Vida before?”
Mr Warden: “I hadn’t either, and neither had Bert. You better call Nick Hunter before it escalates.”
[19] Declaration of Ben Binns at paragraph 106.
The physical proximity of goods displaying the Opponent’s trade mark VIDA and the Applicant’s trade marks (in a Queensland Trade Show and the fact that both models are being sold through a particular dealer in Australia) brings the possibility of confusion into focus. However, the intent of section 60 is not to address instances of confusion amongst a select few traders but whether a significant or substantial number of consumers in the relevant marketplace are likely to be confused. The intent is effectively summarised below[20]:
The intention of section 60 of the Act is to implement Australia’s obligations to protect well-known marks under the Paris Convention for the Protection of Intellectual Property and the 1994 World Trade Organisation Agreement on Trade-Related Aspects of Intellectual Property Rights (TRIPS). The provisions have not been written so as to establish a new class of trade marks (“well-known” marks) or to prescribe a particular threshold of how well-known a mark must be. Rather, the test has been written so that it can be applied to all marks. The test depends on the extent of the reputation in Australia that has been acquired by a sign. In light of that reputation, the question to be asked is whether the use of a subsequent trade mark would be likely to result in deception or confusion. [Emphasis added]
[20] Explanatory Memorandum to the Trade Marks Amendment Bill 2006, paragraph 4.10.
At the risk of repetition, instances of deception or confusion if forthcoming will be accorded great weight. However, section 60 also makes it abundantly clear that the (likelihood of) deception or confusion must arise due to the reputation in the Opponent’s trade mark(s). That does not appear to have been the case in the instances referred to in the evidence.
If the parties’ products had not been sold in close proximity in a particular dealer’s yard, or exhibited close to each other at a particular trade show, I am not satisfied that confusion would have occurred. The reason it did occur was a combination of the similarity of the trade marks and the proximity of the products in specific circumstances. Deception or confusion may occur due to other factors in the marketplace but that is not the province of section 60.
Ultimately, there is little evidence of customer appreciation of the Opponent’s brand ‘VIDA’ as opposed to the products themselves and there are insufficient sales and advertising from which a reputation may be inferred. I am not satisfied that the Opponent has demonstrated in its ‘VIDA’ trade mark a sufficient reputation “as a matter of fact.”[21] Consequently, the elements of section 60 have not been made out and this ground of opposition is not established.
[21] McCormick & Co Inc v McCormick (2000) 51 IPR 102 at 127.
Decision
Section 55 of the Act relevantly provides:
55Decision
(1)Unless subsection (3) applies to the proceedings, the Registrar must, at the end, decide:
(a)to refuse to register the trade mark; or
(b)to register the trade mark (with or without conditions or limitations) in respect of the goods and/or services then specified in the application;
having regard to the extent (if any) to which any ground on which the application was opposed has been established.
Note:For limitations see section 6.
The Opponent has not established a ground of opposition under the Act. As a result, the Opponent is unsuccessful and the oppositions fail. I direct that trade mark applications 1536536 and 1536541 may proceed to registration after one month from the date of this decision.
If the Registrar is served with a notice of appeal on or before that time, I direct that the registrations shall not occur until the appeal has been discontinued, or in the event of a decision from the court, that the applications be subject to that order.
Costs
As the Applicant has been successful in this matter, it is entitled to costs, which I award against the Opponent as per the Official Scale contained in Schedule 8 of the Trade Marks Regulations 1995. Costs for the second opposition will be assessed as set out in the table attached to the Hearing Officer’s decision in James Hardie & Co Pty Ltd v Hume Industries (Malaysia) Berhad.[22]
[22] James Hardie & Co Pty Ltd v Hume Industries (Malaysia) Berhad [2001] ATMO 78; (2001) 53 IPR 591 – summarised at Part 55.4.2 of the Trade Marks Office Manual of Practice & Procedure.
Heath Wilson
Hearing Officer
Trade Marks Hearings & Oppositions
23 February 2015
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