Kingsley v Scott

[2011] ATMO 10

TRADE MARKS ACT 1995

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

Re:Opposition by NOKIA CORPORATION to registration of trade mark application 1226080 (9, 14, 35) - OXI - filed in the name of GAVIN HUTCHESON.

Delegate:	Bianca Irgang
Representation:	Opponent: Julian Cooke of counsel, instructed by Blake Dawson Applicant: Not present at the hearing
Decision:	2011 ATMO 10 Section 52 opposition: section 44 and 59 pressed – s 44 ground of opposition not established since trade marks are not substantially identical or deceptively similar – evidence insufficient to establish s 59 ground of opposition - Costs awarded against the opponent.

Background

1. Gavin Hutcheson (‘the applicant’), filed application number 1226080 on 25 February 2008 for goods and services in classes 9, 14 and 35 of the International Classification of Goods and Services. Current details of the application are set out below.

   Trade mark:  OXI

   Trade mark application:        1226080

   Filing Date:  25 February 2008

   Specification:  Class 9: Cellular phones; mobile phones

   
   Class 14: Jewellery; watches; bracelets; necklaces; rings; earrings; brooches; pendants; badges of precious metal; pins

   Class 35: Retail, wholesale and distribution of goods, wholesale and distribution services, import and export services, none of the foregoing being for clothing and footwear; advertising; marketing; customer support services; data processing; data base management; business management; business administration; office functions; providing information, including by electronic means and via a global computer network, about all of the aforesaid services

2. The application was accepted for possible registration and the official notice of acceptance was published in the Official Journal of Trade Marks on 26 June 2008. Subsequently Nokia Corporation (‘the opponent’) filed a Notice of Opposition (‘the Notice’) dated 25 September 2008 to registration of the application. 

3. I heard the matter in Sydney as a delegate of the Registrar of Trade Marks on 14 September 2010. The opponent was represented by Julian Cooke of counsel instructed by Blake Dawson. The applicant was not present at the hearing.

   Grounds of Opposition

4. The Notice nominated most of the grounds of opposition available under the Act.  The onus is upon the opponent to establish one or more of these grounds of opposition. Gyles J has referred to the standard of proof required in terms of a ‘balance of probabilities’.[1] His Honour’s findings upon that issue, arrived at after a consideration of the relevant authorities, have been discussed with approval by Sundberg J in Chocolaterie Guylian NV v Registrar of Trade Marks[2].

   [1] Pfizer Products Inc v Karam [2006] FCA 1663; (2006) 70 IPR 599; (2006) AIPC 92-146

   [2] [2009] FCA 891, (2009) AIPC 92-355; (2009) 82 IPR 13, para 22-27

5. At the hearing the opponent advised that it was not formally withdrawing any of the grounds of opposition listed in the Notice but that it would provide submissions only on sections 44 and 59 of the Act. However, the opponent has not provided any evidence specific to prosecuting the grounds which were not pursued at the hearing. Without more information than the opponent has provided in its evidence these grounds cannot be established. 

   Evidence

6. The evidence before me for consideration consists of the following declarations:

Declarant	Position	Date Made	Exhibits
Evidence in Support
Michael Jeffrey Smith	IPR Manager of trade marks for Nokia Inc.	2 December 2009	MS-1 and MS-2
Amy Denise Reynolds	Lawyer at Blake Dawson	22 December 2009	ADR-1
John McCredie	Head of Marketing Australia and New Zealand for Nokia Australia Pty Ltd	23 December 2009	JM-1 to JM-9
Further Evidence
Amy Denise Reynolds	Lawyer at Blake Dawson	8 September 2010	Annexure A
Amy Denise Reynolds	Lawyer at Blake Dawson	13 September 2010	Annexure A

Opponent’s Evidence

1. The statutory declaration of Mr Michael Jeffrey Smith (‘the Smith declaration’) outlines the opponent’s trade mark portfolio in relation to its trade mark OVI. The opponent has applied for and registered its OVI trade mark in a number of countries overseas. Exhibit MS-1 accompanying the Smith declaration is a status report for the opponent’s trade mark registrations and applications for OVI in numerous countries. Mr Smith also states that the opponent has opposed the applicant’s CTM[3] application no. 6695845 for the OXI trade mark. Exhibit MS-2 is a status report of the CTM application which supports Mr Smith’s statement.

   [3] Community Trade Mark

2. The first statutory declaration of Ms Amy Reynolds (‘the #1 Reynolds declaration’) outlines that the applicant has applied to register an unrelated trade mark which has also been opposed. While that trade mark and opposition are unrelated to the present proceedings, Ms Reynolds alludes to the applicant’s motivation in applying for trade marks that appear unrelated to each other with regards to goods and services and that result in opposition proceedings.  The second and third statutory declarations made by Ms Reynolds point out that the applicant has not participated in these opposition proceedings. Correspondence sent to the applicant’s address for service has been returned as undeliverable. Ms Reynolds’ evidence is consistent with the official file showing that this has been the case since the opposition commenced.

3. The opponent has used it OVI trade mark extensively in Australia and overseas. The evidence accompanying the statutory declaration of Mr John McCredie demonstrates the opponent has been using its OVI trade mark on a wide range of applications and services for mobile phones. These applications and services include the online OVI Store which offers for sale over 20,000 applications, games and content that can be purchased to augment the functions of mobile phones and extend their capabilities.

4. The opponent has launched a number of different goods and services branded with its OVI trade mark. Mr McCredie states that such goods and services were launched in Australia from as early as February 2008. Since that time the opponent has spent a moderate amount on advertising its OVI goods and services within Australia; this spending has increased over the years 2008 and 2009. While most of the opponent’s evidence is dated after the priority date of the opposed trade mark, it is clear that the opponent’s goods and services bearing its OVI trade mark are establishing a strong market presence in Australia.

   Discussion

5. Section 59 provides:

   Applicant not intending to use trade mark

   59. The registration of a trade mark may be opposed on the ground that the applicant does not intend:

   (a) to use, or authorise the use of, the trade mark in Australia; or
   (b) to assign the trade mark to a body corporate for use by the body corporate in Australia;

   in relation to the goods and/or services specified in the application.

   Note:  For applicant see section 6.

6. In Americana International Limited v Suyen Corporation[4] the Registrar's delegate summarised a number of principles from case law under section 59. Those that are relevant to the circumstances of this case are:

   ·The act of filing of a trade mark application is prima facie evidence of intent to use the mark.[5]

   ·The onus is on the opponent to establish a prima facie case of lack of intention to use.  If such a case is established, the onus is then on the applicant to refute the opponent's claims.[6]

   ·An inference can be drawn to indicate a lack of intention to use.[7]

   [4] (2008) 75 IPR 596.

   [5] Aston v Harlee Manufacturing Co (1960) 103 CLR 391.

   [6]Sapient (2002) 55 IPR 68.

   [7]Ibid.

7. Delegates of the Registrar have found a lack of intention to use may be inferred from:

   ·   a history of failed attempts to communicate with the applicant;[8]

   ·   the applicant providing an incorrect or incomplete address on the application

   ·    or applicant moving from the address provided on the application and failing to inform the Registrar of its current address.[9]

   [8] Cadbury Limited v Cream & Dream s.r.o. [2008] ATMO 60

   [9] Apple Inc v Artistic Licence International [2009] ATMO 15 (‘Apple’).

8. The opponent submitted that, regardless of the applicant’s intention at the time of filing the application, the applicant no longer had an intention to use the trade mark in Australia in relation to the specified goods and, as per Hearing Officer Kirov’s decision in Apple, the provisions of section 59 should be deemed established. However, I am not persuaded by this argument in this instance.

9. Mr Cooke has argued there is sufficient evidence for an inference to be drawn that there was a lack of intention to use and to shift the burden of proof from the opponent to the applicant. That evidence is: 

   ·    the applicant’s failure to respond once the opposition was filed;

   ·    its failure to provide a correct address for service in Australia;

   ·    its continuing lack of action in relation to the opposition proceedings; and

   ·the history of the applicant’s other trade mark application filed with IP Australia.

10. The opponent’s evidence demonstrates that correspondence sent by the opponent to the applicant’s address for services has been returned as undeliverable. However, I note the applicant did not provide the present address for service on the official file.

11. Initially the applicant had the attorney firm IP Wealth acting on its behalf. However, in September 2009 this office was advised by IP Wealth that they no longer acted for the applicant and that all additional correspondence regarding the opposed trade mark should be directed to an alternative address. It is this alternative address provided by the applicant’s former attorneys to which all the opposition correspondence from the opponent and this office has been sent. I am satisfied that all correspondence sent to the current address for service on file has been returned to sender as being undeliverable.

12. The applicant’s failure to act in relation to its trade mark application does not speak for its intentions regarding its trade mark in Australia. In itself, this failure might be attributable to some innocent failure unrelated to a lack of intention to use. 

13. The opponent’s case, then, is limited to the applicant’s failure to participate in the opposition proceedings. I am not satisfied this is sufficient to shift the onus to the applicant. There may be many reasons why the applicant has not responded to the opposition.  As indicated by the Registrar’s delegate in Television Food Network GPv Food Channel Network Pty Ltd[10], the failure may point to a lack of intention to use the trade mark, but it could also point to misunderstandings or disorganization on the part of the applicant. The onus does not shift to the applicant merely because an opponent questions the applicant’s intention in its Notice of Opposition or submissions[11].

    [10] [2006] ATMO 88.

    [11] See for example Medley Distilling Company v Croakers Gully Australia (2000) 53 IPR 430; Wal-Mart Stores Inc v Ozark-London Ltd (2004) 62 IPR 165

14. Therefore, the opponent has not provided sufficient evidence to shift the onus from itself onto the applicant. The section 59 ground of opposition has not been made out.  

    Section 44 - Identical etc. trade marks:

15. Section 44 of the Act relevantly provides:

    44Identical etc. trade marks

    (1)Subject to subsections (3) and (4), and 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)…; 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 services.

16. To establish its opposition in terms of section 44 of the Act the opponent must show all of the following:

    ·    There exists a trade mark (or trade marks), either registered or pending registration, in the name of a person other than the present applicant, and in relation to which the opposed trade mark is either substantially identical or deceptively similar;

    ·    the trade mark(s) in the name of the other person must be in respect of similar goods or closely related services; and

    ·    the priority date(s) of the other person’s trade mark(s) is (are) the earlier than thatr of the applicant’s trade mark.

17. The opponent is the owner of trade mark registration no. 1250763       OVI which has an earlier priority date than the applicant’s trade mark. The opponent’s trade mark registration also covers the same goods and services as the applicant’s claims in class 9 and 35. The key issue for me now to decide now is whether OXI is either substantially identical with or deceptively similar to the opponent’s OVI trade mark.

18. It is obvious that OXI is not substantially identical with the opponent’s trade mark according to the side-by side test set out by Windeyer J. in Shell Co. (Aust) Ltd v Esso Standard Oil (Aust) Ltd[12]. Both trade marks are words which have no direct meaning associated with the claimed goods and services. While the trade marks do have the letter ‘O’ as the first letter and the letter ‘I’ as the last letter, the spelling of each of the three letter words is different. There is a very distinct visual different between the middle letters ‘X’ and ‘V’. This difference in the spelling is significant since it considerably alters the appearance and sound of the respective trade marks. These differences are sufficient to distinguish the trade marks from each other on a side by side comparison.

    [12] (1963) 109 CLR 407 at 414

19. On the other hand, deceptive similarity is defined by section 10 of the Act. The determination of deceptive similarity requires a comparison of the impression which persons of ordinary intelligence and memory would have on/in recalling the opponent’s mark with the impression which they would get from the opposed trade mark.[13] The probability of deception must be finite and non-trivial.[14]

    [13] The Shell Company of Australia Ltd v Esso Standard Oil (Australia) Ltd (1961) 109 CLR 407, per Windeyer J at 415

    [14] Registrar of Trade Marks v Woolworths Limited (1999) 45 IPR 411, per French J at [43]

20. In comparing the respective trade marks it becomes apparent that the term OXI shares some visual similarities with the opponent’s trade mark OVI. As discussed above, visually both terms consist of three letters and begin with the same letter and end with the same letter. Both trade marks also consist of two syllables. Mr Cooke correctly stated that the sole difference between the trade marks is the respective letters ‘X’ and ‘V’ located in the middle of the marks. He submits that the letters ‘X’ and ‘V’ are more likely to be confused both visually and aurally compared with other letters.

21. However, I am not satisfied the opposed trade mark OXI is deceptively similar to the opponent’s trade mark OVI, particularly when the trade marks are considered, as they must be, as wholes. The single letter spelling difference between the two trade marks is significant and even though both marks may begin with a potentially similar sound and end with a phonetically equivalent ‘I’ or ‘EE’ sound, the marks are likely to be pronounced quite differently by the general monolingual Australian consumer. The emphasis on the syllables is likely to be quite different with OXI pronounced as “ox-ee” and OVI pronounced as “oh-vee”. There are significant visual and pronunciation differences between the letters X and V. 

22. Legal authorities demonstrate the need for caution with regard to the making of presumptions about the way in which an invented word is most likely to be pronounced[15] and that a comparison of such trade marks should take into account all reasonable pronunciations. However, I believe that it is very unlikely that the trade marks would be pronounced similarly or that a consumer would become confused between the two trade marks. The letters ‘X’ and ‘V’ are not phonetically close, nor are they similar visually. Taking all this together I am not satisfied that the trade marks are deceptively similar. 

    [15] Johnson & Johnson v Boehringer Ingelheim KG (1995) 30 IPR 563; Retec Ltd s Application (1988) 12 IPR 413; Wingate Marketing Pty Ltd v Levi Strauss & Co (1994) 28 IPR 193

23. In view of my finding that the opposed trade mark is not deceptively similar to the opponent’s OVI trade mark the opponent has not established its opposition ground based on section 44 of the Act.

    Decision

24. Section 55 of the Act provides:

    Decision
    Unless the proceedings are discontinued or dismissed, the Registrar must, at the end, decide:

    to refuse to register the trade mark; or

    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.

25. The opponent has not established any of its grounds of opposition.  The trade mark application may therefore 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 order. 

    Costs

26. As there is nothing before me suggesting that costs should not follow the general rule, I award costs against the opponent in accord with Schedule 8 of the Trade Mark Regulations 1995.

    Bianca Irgang
    Hearing Officer
    Trade Marks Hearings
    28 January 2011