Infocus Corporation v in Focus DVD Pty Limited

[2007] ATMO 76

TRADE MARKS ACT 1995

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

Re:Opposition by INFOCUS CORPORATION to registration of trade mark application 1038529(35) - INFOCUS DVD.COM.AU AND DEVICE - filed in the name of IN FOCUS DVD PTY LIMITED.

Delegate:

Don Nancarrow

Representation:

Opponent: Richard Smoorenburg of Smoorenburg Patent & Trade Mark Attorneys, Melbourne.

Applicant: Not represented

Decision:

2007 ATMO 76

s. 52 opposition – s. 44 opponent’s goods and applicant’s services not closely related; s. 60 insufficient evidence of reputation in Australia demonstrated; s. 41 opposition not made out. Overall opposition not established. Application may proceed to registration.

Background

1. In Focus DVD Pty Limited (‘the applicant’) filed application number 1038529 on 21 January 2005. Other details of the application are as follows:

Trade mark:                     

Services and class:  Reseller of DVD movies, electronic games, CD music, DVD music (Class 35).

Acceptance advertised:               19 May 2005

1. On 11 August 2005, InFocus Corporation, (‘the opponent’) filed a Notice of Opposition to registration of the application listing almost all sections available for such a proceeding under the Trade Marks Act 1995 (‘the Act’).

2. Thereafter, evidence was filed by both parties (see table below), in accordance with the provisions of Regulation 5 of the Trade Marks Regulations 1995 (‘the Regulations’) and the matter was set down to be heard in Melbourne on 20 September 2007. At the hearing Richard Smoorenburg of Smoorenburg Patent & Trade Mark Attorneys represented the opponent whilst the applicant was neither represented nor chose to make written submissions in the matter.

The Evidence

1. The evidence, as filed and served, is documented below. 

Declarant	Status	Date, Known as	Exhibits
Evidence in Support
Ana Paula Dutra Nicacio	Worldwide Legal Affairs Attorney for opponent	1 August 2006, Nicacio	‘APDN-A’ to ‘APDN-F’ inclusive
Evidence in Answer
Dimitrios Pyrgiotis	Director of applicant	31 October 2006, Pyrgiotis	‘DPA-A’ to ‘DPA-C’ inclusive
Evidence in Reply
Cheryl Rath	Senior Director of Worldwide Legal Affairs for opponent	5 April 2007, Rath	‘APDN-A-M-A’ to ‘APDN-A-M-N’ inclusive

1. The opponent’s evidence in support draws attention to five trade marks in the name of the opponent all containing (or consisting of) the word/s INFOCUS or IN FOCUS. At the time of the Nicacio declaration two of these trade marks were registered and three were pending registration. I note that three are now registered, one is still pending and one has lapsed. These five trade marks are listed below.

Number	Trade Mark	Registr. Status	Priority Date
564969	IN FOCUS	Registered	9 October 1991
1027785	INFOCUS ENGINE	Registered	1 March 2004
1065472	INFOCUS LP	Lapsed	21 April 2004
1071505	Registered	21 April 2004
1112920	INFOCUS	Pending	18 February 2005

1. The evidence also goes to show that the opponent is a wholesaler of a range of audio visual equipment.

2. The opponent claims that first use of the INFOCUS trade mark in Australia had occurred by the time of registration of its first Australian application – that is, by 9 October 1991, and that use from that time has been continuous. The evidence filed supports the opponent’s claim to use prior to the present date of application as follows (all instances in the Nicacio declaration):

Date of use shown	Item	In Evidence at Exhibit
Winter 2003	InFocus Screenplay 110 projector	‘APDN-A’
15 December 2004	InFocus LP920 projector	‘APDN-C’
Sometime in 2002	InFocus LP920 projector	‘APDN-C’
15 November 2004	InFocus LP600 projector	‘APDN-C’
16 December 2001	InFocus audio visual	‘APDN-D’
15 December 2004	InFocus audio visual	‘APDN-D’
Copyright 2004 (D. Hawthorne)	InFocus projectors (8 models)	‘APDN-F’ – products index

1. The evidence of specific instances of use prior to 21 January 2005 is not strong. I will comment in greater detail on the sales figures from 1999 provided in Nicacio (at ¶6) when considering the opponent’s reputation under section 60. I also note that the copyright notices on most of the pages in exhibits to the Nicacio declaration are ‘1999-2006’. The problem with such copyright claims, however, is that there is no guarantee that all of the opponent’s goods shown on these pages were available in Australia from 1999. This is especially so given that some prices are listed in pounds sterling and it appears that many of the web pages have been hosted in the United States of America.

2. The Pyrgiotis declaration goes to show that the applicant is a reseller of DVDs, DVD music, CDs and games. Additionally, it markets a small range of gaming consoles (although these goods are not part of the present application and, therefore, not part of the present opposition). All of its products are sold via the Internet with a particular target market of 18 to 45 year old consumers. Some commentary in this declaration goes toward submissions rather than evidence and I will refer to such comments in the Discussion section of these reasons.

3. The opponent’s evidence in reply shows a selection of the opponent’s projectors and home theatre systems which operate by means of a DVD. It also highlights that a major retailer of audio visual equipment (JB Hi-Fi) offers a service that enables downloading of Internet material to CDs, DVDs and games. A separate exhibit (‘APDN-N’) documents use by a well-known provider of video and DVD hire services (Blockbuster Video) that not only rents out such goods but also conducts competitions with prizes of ‘Home Cinema Projectors’.

Discussion

1. It is for the opponent to establish at least one ground of opposition in order to succeed in its opposition to registration. At the hearing Mr. Smoorenburg stated that the opponent sought to rely on grounds under sections 41, 44 and 60 in relation to section 57 of the Act. For completeness I find the other grounds nominated in the Notice of Opposition have not been made out.

   (a) The Section 44 Ground

2. Relevant to this matter the legislation is expressed in paragraph 44(2)(a) as follows:

Identical etc. trade marks

44. (2) Subject to subsections (3) and (4), an application for the registration of a trade mark (applicant's trade mark) in respect of services (applicant's services) must be rejected if:

(a) it is substantially identical with, or deceptively similar to:

(i) a trade mark registered by another person in respect of similar services or closely related goods; or
(ii) a trade mark whose registration in respect of similar services or closely related goods 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 services is not earlier than the priority date for the registration of the other trade mark in respect of the similar services or closely related goods.

Note 1: For deceptively similar see section 10.

Note 2:  For similar services see subsection 14(2).
Note 3:  For priority date see section 12.

1. From this paragraph it is clear that to establish its opposition under section 44 the opponent must show all of the following:

   • a trade mark, either registered or pending registration, in the name of a person other than the applicant, and in relation to which the opposed trade mark is either substantially identical or deceptively similar;
   • the trade mark in the name of the other person must be in respect of similar services or closely related goods; and
   • the priority date of the trade mark of the other person is the earlier.

2. From the trade marks put before me by the opponent I note that the priority dates for three of the opponent’s IN FOCUS and INFOCUS trade marks 564969, 1027785 and 1071505 pre-date the present application.

3. The goods specified in these three registrations are shown in the table below:

Trade mark 564969 (IN FOCUS)

Electronic image display apparatus, parts and accessories therefor

Trade mark 1027785 (INFOCUS ENGINE)

Image display hardware, namely hardware and for use in display devices including televisions and home entertainment projectors and systems

Trade mark 1071505 (INFOCUS – stylised)

Apparatus and systems for transmitting, reproducing, projecting images and image data; projection devices; image display devices; audio and video projectors; accessories and components for use with audio video projectors and image display devices, namely screens, remote controls, lamps, networking devices

1. The concept of goods being ‘closely related’ to an applicant’s services follows from case law under previous legislation where the relevant test looked at ‘goods of the same description’.

2. Much case law exists for comparing goods with goods and indicates that the relevant tests to consider are the respective nature, including the origin and characteristics, the uses, including their purpose, and the trade channels through which the goods move to the point of sale (Jellineck’s Application (1946) 63 RPC 59, John Crowther & Sons(Milnsbridge) Limited’s Application (1948) 65 RPC 369, Reckitt & Colman(Australia) Limited v Boden (1945) 70 CLR 84 and Southern Cross Refrigerating Company v Toowoomba Foundry Pty Limited 1A IPR 465).

3. These tests have been imported into tests for comparison of services with services in MID Sydney Pty Limited v AustralianTourism Co Limited, (1998) 42 IPR 561, at 567-8. However, general tests for comparison of goods with services are not so readily available, apart from French J in Registrar of Trade Marksv Woolworths Limited, 45 IPR 411 where he commented at [37] :

   The term “closely related” recognises that goods and services are different things. … So there must be some other form of relationship between the services covered by one mark and the goods covered by another to enable the goods or services in question to be described as “closely related”.

4. He then adds at [38]:

   The relationships may, and perhaps in most cases will, be defined by the function of the service with respect to the goods. Services which provide for the installation, operation, maintenance or repair of goods are likely to be treated as closely related to them. A trade mark used by a television repair service which resembles (to use the language of s 10) the trade mark used on a prominent brand of television sets could be deceptively similar for suggesting an association between the provider of the service and the manufacturer of the sets.

5. The opponent’s goods cover a broad range of items in Class 9 of the International (Nice) Classification of Goods and Services (set out in ¶15 above).

6. The applicant’s services here, being described as ‘Reseller of DVD movies, electronic games, CD music, DVD music’ are not services that operate the opponent’s goods as would be required by the above test proposed by Justice French. The goods obtained by consumers employing the applicant’s services may be used in conjunction with the opponent’s goods – but this is not the test.

7. The opponent also sought to highlight a link between the respective businesses by two means. These are, firstly, that some of the opponent’s projectors and home theatre systems could be operated by means of a DVD, and, secondly, that a major retailer of audio visual equipment now provides an Internet service whereby consumers may download their own CDs and DVDs in a similar manner to the applicant’s services.

8. The fact that one trader happens to retail goods that are the same as the opponent’s goods and now provides services very similar to the applicant’s services does not necessarily mean that there is a link between the opponent’s goods and the applicant’s services. Such a circumstance merely shows that the endpoints of the respective trade channels coincide. It says nothing of the other comparisons that applied to a test of goods versus goods – those for nature, origin, characteristics, uses or purpose. However, some other criteria may also be applied here for a comparison of goods versus services (see tests from the Aussat decision below).

9. The other factor submitted by the opponent (concerning the opponent’s projectors being operated by a DVD) only provides a very tenuous connection between the opponent’s goods and the applicant’s services. If the opponent’s projectors require a DVD that houses the operating system for actual functioning of the goods, the particular DVD would be part of the initial purchase made with the projector (and not available from the applicant). If, however, the opponent is claiming that the projector may play a DVD obtained by any means then it is unlikely that the purchasing public would view the applicant’s services (as a source of the DVD) as being linked to the opponent’s goods (which may be operated by a DVD) by a comparison of the nature, origin, characteristics, uses or purpose of the respective goods and services.

10. However, another decision providing some guidance for both of the above issues is Re: Aussat Pty Limited, 27 IPR 309, at 311-2 where Hearing Officer Thompson tackles the question of how to determine if some form of relationship exists between the respective goods and services and how this might be appraised. He raises eleven questions that address the question and makes the comment that: ‘This list of criteria is not exhaustive, neither, I think, is it necessary that all considerations be satisfied, nor do I think that any single criterion is of necessity conclusive although it may be’.

11. These eleven questions with some clarifying material omitted (and with answers for the particular circumstances in the present matter in brackets following the question) are:

    (1) are the services performed directly upon or by means of the goods? [NO]

    (2) are the goods and services generally regarded by the ordinary consumer as originating in, or being part of, the one industry or trade, or, a closely related trade or industry? [generally NO]

    (3) are the goods and services of matching technical complexity? [generally YES]

    (4) is the technical training of the people who make the goods or provide the services the same? [NO]

    (5) do the people who make the goods or provide the services belong to the same unions or associations? [NO]

    (6) are there personnel who are implicit in the provision of the service, or a necessary ancillary to the provision of it, who are viewed by the ordinary person as  having the essential expertise in common to the provision of either the goods or services? [not clear in this case, and arguably not applicable]

    (7) do the goods usually have this service as a related service agreement or package? [NO]

    (8) is the nature of the goods or the service such that they would cease to exist without each other, thus creating an expectation of a common source? [NO]

    (9) does the service consist of altering, matching and/or installing the goods to a customer's or client's requirements? [NO]

    (10) are the goods and services commonly offered by the one company or organisation? [generally NO]

    (11) are the goods a necessary adjunct to a particular service or the only tangible result of it? [NO]

12. Given the general trend in the above eleven answers (though some may have a greater application than others), my earlier comments on specific submissions made by the opponent (in ¶22-24 above) and my assessment of the test provided by Justice French (in ¶21 above) I find that the respective goods and services in this matter are not closely related.

13. It is also noteworthy that in a previous matter concerning the general difficulty of comparing goods with services, and requiring a decision under section 44, Hearing Officer Williams commented (Kellogg Company v Exxon Corporation, 53 IPR 177 at 187):

    The fact that there is so much disparity between one retailer and another suggests strongly to me that the question of goods versus the retailing of goods should not generally be settled under the terms of s 44. Subject to the facts that are generally applicable to the particular trade, it should usually be left to s 60 as part of the opposition process.

14. The nexus between goods and the service of retailing of goods in Kellogg v Exxon, supra, as discussed above, is arguably closer than between the opponent’s goods and the present applicant’s services.

15. I note also the comments of Hearing Officer Williams in that same decision at 183:

    In doing so, I believe that I should not, in terms of s 55, deny registration unless a ground of opposition is established. Therefore, I should proceed on the assumption that the goods and services are not closely related unless the contrary is established to the necessary degree.

16. From the foregoing I find that this ground of opposition is not established.

    (b) The Section 60 Ground

17. Section 60 states:

Trade mark similar to trade mark that has acquired a reputation in Australia

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.

Note 1:  For deceptively similar see section 10.

Note 2:  For priority date see section 12.

1. In terms of this ground of opposition it is for the opponent to point to a trade mark, whether registered or in common law use, for which the opposed trade mark is:

   • either substantially identical or deceptively similar and

• which, before the priority date, had acquired a reputation in Australia such that

• use of the opposed trade mark would be likely to lead to deception or confusion.

1. An important aspect of this ground is that there is no requirement for the respective goods or services of the parties to be related. The likelihood of deception or confusion is evaluated by a consideration of all of the factors relevant to a particular case – the degree of similarity of the respective trade marks and the magnitude of the opponent’s reputation in its trade mark at the date of application being necessary considerations – but any other factors, such as the degree of similarity of the respective goods or services, play a role only insofar as they affect the overall evaluation.

Magnitude of the Opponent’s Reputation

1. The factors to be considered concerning reputation under section 60 are now well established law. In this regard Justice Kenny states in McCormick & Co Inc. v McCormick, 51 IPR 102, at 128:

   In ConAgra Inc v McCain Foods (Aust) Pty Ltd (1992) 33 FCR 302 at 343; 23 IPR 193 at 234, Lockhart J said:

   [R]eputation within the jurisdiction may be proved by a variety of means including advertisements on television or radio, or in magazines and newspapers within the forum.

2. Justice Kenny continues at 129 with the words:

   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: …

3. The opponent provided sales figures for the years 1999 to 2005 inclusive (Nicacio at ¶6) and further commented that any earlier figures could not readily be obtained. At first blush these figures appear to be impressive. However, a deeper analysis raises some questions. The sentence introducing these figures reads:

   6. (a)     The opponent has sold tens of thousands of units over the past the [sic] fifteen years it has been selling products in Australia.

4. The figures are then quoted in $US and a second table, with identical units sold, is quoted in $A at an exchange rate of close to one Australian dollar to 65 cents US.

5. Even allowing for the extra ‘the’ in the sentence above, the information is ambiguous. It is not clear whether the ‘tens of thousands’ of units sold are world-wide figures for 1999 to 2005 during the time that the opponent has been selling its goods in Australia or whether the figures apply exclusively to Australia. Section 60 of the Act quite specifically states that the trade mark(s) put forward by the opponent must have ‘acquired a reputation in Australia’. The opponent has a world-wide business operation and claims a world-wide reputation. However, it is the Australian reputation that needs to be in evidence here and my reading of the evidence leaves that matter in serious doubt.

1. In addition, if the figures given for use from 1999 to 2005 do, in fact, apply solely to the Australian market then it would be expected that a great deal of evidence would be readily available to attest to those sales. Proof of any such sales (before the present filing date of 21 January 2005) in the opponent’s evidence is severely lacking.

2. None of the opponent’s exhibits showing its use of either IN FOCUS or INFOCUS are dated prior to 1999 (although there are seven instances of advertising between 16 December 2001 and 15 December 2004 which pre-date the present application exhibited in the Nicacio declaration – see the table at ¶7 above). This handful of instances of use in Australia before the priority date coupled with the ambiguously worded claim for substantial use from 1999 to 2005 form the major thrust of the opponent’s claim for reputation in its trade mark(s) in Australia. They are not enough to convince me that the opponent’s trade mark(s) has (or have) acquired a sufficient reputation to be successful under section 60.

3. From the foregoing I find that this ground of opposition is not established.

   (c) The Section 41 Ground

4. Although this ground of opposition was not abandoned as a ground, it was neither argued at the hearing nor directly supported in the evidence. Relevant to the ground, the legislation allows:

Trade mark not distinguishing applicant's goods or services

41.(1)   ….

(2) An application for the registration of a trade mark must be rejected if the trade mark is not capable of distinguishing the applicant's goods or services in respect of which the trade mark is sought to be registered (designated goods or services) from the goods or services of other persons.

Note:  For goods of a person and services of a person see section 6.

1. The test to be applied for the capability of a trade mark to distinguish the applicant’s goods (or services) is found in the words of Kitto J. in ClarkEquipment Co v Registrar of Trade Marks (1964) 111 CLR 511 at 514:

   …. whether a mark is adapted to distinguish be tested by reference to the likelihood that other persons, trading in goods of the relevant kind and being actuated only by proper motives – in the exercise, that is to say, of the common right of the public to make honest use of words forming part of the common heritage, for the sake of the signification which they ordinarily possess – will think of the word and want to use it in connexion with similar goods in any manner which would infringe a registered trade mark granted in respect of it.

2. The heart of the applicant’s trade mark is the conjoined words ‘InFocus’. The question posed from Clark Equipment in this case is “Will other traders offering services as a ‘Reseller of DVD movies, electronic games, CD music, DVD music’ require this word in connection with their services”?

3. I think not. The word ‘focus’ has a meaning that provides a link to the applicant’s services only insofar as a purchaser would require any image to be able to be clearly seen, that is, ‘in focus’. This, however, is a very frail link and one that I am not prepared to say would be required by other traders in similar services.

4. I note that the Oxford Online Reference Dictionary (Oxford University Press 2007) also provides a definition for ‘focus’ as ‘the centre of interest or activity’. Again, I do not accept that such a meaning would be required by other traders in similar services for the purposes of normal advertising or for description of their services.

5. I am in agreement with the initial examination for this application, that the trade mark is ‘capable of distinguishing’ the applicant’s services.

6. I find that this ground of opposition is not established.

Decision

1. From the foregoing, I have found that no ground of opposition has been established. My decision in terms of section 55 of the Act is that trade mark application number 1038529 for the composite trade mark ‘InFocusDVD.com.au’ and DVD device 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 discontinued, or in the event of a decision from the Court, that the application be subject to that direction or order.

Don Nancarrow

Hearing Officer

Trade Marks Hearings

19 December 2007