International Registration Designating Australia number 2077923 (International Registration number 1522069) (12) – e:HEV (Stylised) in the name of Honda Motor Co., Ltd

[2021] ATMO 103

TRADE MARKS ACT 1995

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

Re:International Registration Designating Australia number 2077923 (International Registration number 1522069) (12) – e:HEV (Stylised) in the name of Honda Motor Co., Ltd

Delegate:

Louise Tuohy

Representation:

Applicant: Anne Makrigiorgos of Griffith Hack

Decision:

2021 ATMO 103

Trade Marks Act 1995 (Cth) and Trade Marks Regulations1995 (Cth) – ex parte proceedings under reg 17A.24 – ground for rejection raised under section 44 – protection of the International Registration to be extended to Australia

Background

1. This matter is pursuant to reg 17A.24 of the Trade Marks Regulations 1995 (Cth) (‘Regulations’) which stipulates that the Registrar must, after examination of an International Registration Designating Australia (‘IRDA’), either accept the IRDA with or without conditions or limitation or reject it. Honda Motor Co., Ltd (‘Holder’) filed an IRDA seeking protection in Australia of the trade mark detailed below:

   Trade Mark:  (‘Trade Mark’)

   Application Number:  2077923

   International Registration:          1522069

   Filing Date:  23 January 2020

   Priority Date:  5 September 2019

   Specification:  Class 12: Hybrid electric automobiles (‘Goods’)

   Endorsements:  Silver: Device and Character “HEV”, Blue: Character “e”

1. The IRDA was examined as required under reg 17A.12 of the Regulations. On 31 July 2020 IP Australia issued a first adverse examination report which amounted to a Notification of Provisional Refusal of the IRDA, identifying a ground for rejection under s 44 of the Act. The report stated:

   Issues raised under Section 44 of the Trade Marks Act 1995.

   Cited Trade Mark Number(s): 1393415

   What are the issues with your trade mark?

   Trade Mark Number: 1393415 Your trade mark is substantially identical with, or deceptively similar to, the following trade mark(s), and is for similar or closely related goods and/or services

   The refusal applies to the following goods: All goods claimed in Class 12

2. The details of the cited trade mark are as follows:

Trade Mark:  (HEV) HARSH ENVIRONMENT VEHICLES (‘cited trade mark’)

Application Number:     1393415

Priority Date:  16 November 2010

Specification:  Class 6: Tool boxes of metal (empty); metal water tanks

Class 9: Receiving antennae for vehicle radios; vehicle radios; safety signals in the form of flashing beacons; strobe lights (warning beacons); klaxons (sirens)

Class 11: Safety lamps

Class 12: Bars and other protective fittings specially adapted for use with vehicles (roo bars, bull bars, roll bars, roll cages); springs for vehicle suspension systems; suspension systems for motor cars; suspension systems for vehicles; reversing alarm transmitters utilising ultrasonics for use on vehicles; reversing alarms for vehicles; roll bars for vehicles; roll cages for vehicles; safety signals (audible) for vehicles; tyres for motor vehicles

1. After four examination reports the examiner remained of the view that the s 44 of the Act was applicable. The Holder did not respond to the fourth examination report, instead it exercised its right to be heard.

2. I heard the matter by way of written submissions, as a delegate of the Register of Trade Marks in Canberra, on 1 September 2021. Anne Makrigiorgos of Griffith Hack made written submissions of behalf of the Holder.

Legislative Background and Reasoning

Section 44

1. Section 44(1) of the Act provides:

   44  Identical etc. trade marks

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

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

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

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

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

   […]

2. In order for s 44 of the Act to apply, the requirements of s 44(1) must be satisfied, that is, the trade mark cited by the examiner:

• is substantially identical with or deceptively similar to the Trade Mark;
• is in respect of similar goods or services which are closely related to the Holder’s goods; and
• is registered by another person and has a priority date which is earlier than that of the Trade Mark.

1. The cited trade mark is registered by another person and has a priority date of 16 November 2010 which is earlier than the priority date of the Trade Mark, being the 5 September 2019.

2. The second, third and fourth examiner reports do not contend the Trade Mark is substantially identical to the cited trade mark. However, I will briefly note that the test for substantial identity requires that the trade marks are considered side by side while having regard to the essential features of the trade marks.[1] Where a total impression of resemblance emerges from the comparison, the trade marks will be considered substantially identical.

   [1] The Shell Company Australia Ltd v Esso Standard Oil (Australia) Limited (1963) 109 CLR 407, 414 (Kitto J)(‘Shell’).

3. For the purposes of comparison, I have reproduced the trade marks side by side:

Trade Mark	cited trade mark
(HEV) HARSH ENVIRONMENT VEHICLES

1. In this case both trade marks contain the three-letter acronym HEV, however, the Trade Mark contains the letter E followed by a colon within a rectangle device, then the three letter acronym HEV. The cited trade mark contains the three-letter acronym HEV enclosed by round brackets and followed by the words HARSH ENVIRONMENT VEHICLES. Accordingly, on a side by side comparison the trade marks do not have a total overall impression of resemblance.

2. Section 10 of the Act defines a ‘deceptively similar’ trade mark as:

   10  Definition of deceptively similar

   For the purposes of this Act, a trade mark is taken to be deceptively similar to another trade mark if it so nearly resembles that other trade mark that it is likely to deceive or cause confusion.

3. The principal authority for guidance in determining whether trade marks are deceptively similar comes from the judgement of Windeyer J in Shell:

   On the question of deceptive similarity, a different comparison must be made from that which is necessary when substantial identity is in question. The marks are not now to be looked at side by side. The issue is not abstract similarity, but deceptive similarity.

   Therefore the comparison is the familiar one of trade mark law. It is between, on the one hand, the impression based on recollection of the plaintiff’s mark that persons of ordinary intelligence and memory would have; and, on the other hand, the impressions that such persons would get from the defendant’s [trade mark].[2]

   [2] Ibid 416.

4. The Holder submitted that further guidance is to be found in the principles of deceptively similarity detailed by Jacobson J in Millennium & Copthorne International Limited v Kingsgate Hotel Group Pty Ltd:

   First, the judgment of likelihood of deception is a practical one. It requires an assessment of the effect of the challenged mark on the minds of potential customers: Woolworths at [49]; Australian Woollen Mills at 658.

   Second, the question of deceptive similarity is not to be decided by a side-by-side comparison. It is to be determined by a comparison of the impression based on recollection of the opponent’s mark that persons of ordinary intelligence and memory would have, and the impression that those persons would get from the opposed trade mark: Crazy Ron’s at [73]; Shell Company of Australia Ltd v Esso Standard Oil (Australia) Ltd [1963] HCA 66; (1963) 109 CLR 407 at 415 per Windeyer J.

   Third, allowance must be made for imperfect recollection: Crazy Ron’s at [74].

   Fourth, the effect of the spoken description must be considered: Woolworths at [49]; Crazy Ron’s at [75]; Australian Woollen Mills at 658.

   Fifth, it is necessary to show a real tangible danger of deception or confusion: Woolworths at [43] and [50]; Crazy Ron’s at [76]; Southern Cross Refrigerating at 594 – 595.

   Sixth, a trade mark is likely to “cause confusion” if the result of its use will be that a number of persons are “caused to wonder” whether the two products come from the same source: Woolworths at [50]; Southern Cross Refrigerating Co at 595. This test sets a lower threshold than that which is required to establish that conduct is likely to mislead or deceive under s 18 of Schedule 2 of the Competition and Consumer Act 2010 (Cth): see McWilliam's Wines Pty Ltd v McDonald's System of Australia Pty Ltd [1980] FCA 159; (1980) 33 ALR 394 at 398 per Smithers J.

   Seventh, all surrounding circumstances must be taken into consideration. The circumstances include those in which the marks will be used, and in which the goods or services will be bought and sold, as well as the character of the probable acquirers of the goods and services: Woolworths at [50]; Crazy Ron’s at [86] – [89]; Southern Cross Refrigerating at 595.

   Eighth, the question of whether there is a likelihood of confusion is not to be answered by reference to the manner in which a party has used the mark, but by reference to what an applicant can do. That is to say, the use to which it can properly put the mark if registration is obtained: Woolworths at [50]; Berlei Hestia Industries Ltd v The Bali Company Inc [1973] HCA 43; (1973) 129 CLR 353 at 362 per Mason J.

   Ninth, if a registered trade mark includes words which can be regarded as an “essential feature” of the mark, another mark that incorporates those words may cause a tangible danger of deception or confusion by reason of consumers retaining an imperfect recollection of those words: Crazy Ron’s at [79]. However, care must be taken to not too readily characterise words in a composite trade mark as an “essential feature” because to do so may effectively convert a composite mark into something different: Crazy Ron’s at [100]. [3]

   [3] [2012] FCA 1022, [38] to [46].

5. In this case the Holder submits that in comparing the trade marks as wholes, the respective trade marks are not deceptively similar because of the visual and aural differences, combined with the substantially different ideas and concepts.

6. When considering the respective trade marks as a whole, it is apparent that the trade marks are visually different. While both trade marks share the acronym HEV, the Trade Mark features a device which looks like a stylised plug end for charging an electric or hybrid vehicle. In contrast the cited trade mark lacks a device element and contains the additional word phrase HARSH ENVIRONMENT VEHCILES.

7. Aurally, I consider the trade marks are pronounced quite differently. The Trade Mark would be pronounced ‘E’ followed by a pause and then either ‘H’ ‘E’ ‘V’ or ‘hev’. The cited trade mark would be pronounced by either leaving the three-letter acronym HEV out of the spoken text as it is enclosed with parenthesis, or by pronouncing it as either ‘H’ ‘E’ ‘V’ or ‘hev’, followed by expressing the full phrase HARSH ENVIRONMENT VEHCILES.

8. In considering the idea behind the trade marks I note that the Trade Mark’s Goods are Hybrid Electric Vehicles. The motor vehicle industry in Australia has adopted a suite of acronyms to describe the types of electric vehicles available. For example: HEV means Hybrid Electric Vehicle; PHEV means Plug-in Hybrid Electric Vehicle; BEV means Batter Electric Vehicle; EREV means Extended Range Electric Vehicle and FCEV means Fuel Cell Electric Vehicle. The purchase of an electric vehicle would be a buying decision that requires meaningful investigation and comparison prior to purchase and consumers looking to buy an electric or hybrid vehicle would be aware of the meaning of HEV. In comparison, the cited trade mark would be applied to goods as diverse as tool boxes, water tanks, receiving antennae for vehicle radios, radios, beacons, sirens, safety lamps, bars, suspensions systems, reversing alarms and tyres. While these goods are vehicle parts, accessories and add-ons, they are commonly sold separately aftermarket or by car repair stores, referencing Harsh Environment Vehicles, and are adopted for fitting to a large range of vehicles. A potential purchaser of the Goods referenced by the Trade Mark and goods referenced by the cited trade mark are unlikely to be confused into thinking that the goods were provided by one trade source.

9. Furthermore, the Full Court in Australian Meat Group Pty Ltd v JBS Australia Pty Ltd analysed the principles of deceptive similarity in respect of trade marks comprising acronyms, which is particularly important as automotive acronyms are used extensively in the market place, stating:

   In comparing these marks, it is important to bear in mind the scope of the monopoly afforded by registration of an acronym. The world of commerce is conditioned to the use of acronyms.[…]

   …the Australian public is quite used to acronyms in the market place and is used to relying on small differences to distinguish between them. For this reason, closer similarities than normal are expected and tolerated for acronyms, in the absence of demonstrated bad faith; ATP;Professional Golfers’ Association of Australia Ltd v Ladies Professional Golf Association (2004) 61 IPR 206 at [17]; CMA CGM v CMA Corporation Ltd [2011] ATMO 95; 95 IPR 593 at [25]–[30].[4]

   [4] [2018] FCAFC 207, [81] and [83] (Allsop CJ, Besanko and Yates JJ).

10. While the trade marks share the acronym HEV, the aural, visual and conceptual differences between the trade marks when considered as wholes, even allowing of imperfect recollection, are such that when considering the purchases of the respective goods, confusion between the trade marks does not rise above mere possibility.[5]   

    [5] Southern Cross Refrigerating Co v Toowoomba Foundry Pty Ltd (1954) 91 CLR 592, [594] to [595] (Kitto J).

11. I find that the Trade Mark is not deceptively similar to the cited trade mark.

Decision

1. Regulation 17A.24 of the Regulations provides:

   17A.24  Final decision on examination

   (1)  The Registrar must, after the examination, accept the IRDA unless he or she is satisfied that:

   (a)  it is not in accordance with this Division; or

   (b)  there are grounds for rejecting it.

   (2)  The Registrar may accept the IRDA subject to conditions or limitations.

   (3)  The Registrar must reject an IRDA, in whole or in part, if the Registrar is satisfied that:

   (a)  it is not in accordance with this Division; or

   (b)  there are grounds for rejecting it, in whole or in part.

2. For the reasons stated above, I am satisfied there are no grounds for rejecting the IRDA.  Extension of protection to Australia of IRDA number 2077923 should be granted.

Louise Tuohy

Hearing Officer

Delegate of the Registrar of Trade Marks

16 September 2021