Mercedes-Benz Group AG v Vivo Mobile Communication Co., Ltd

[2023] ATMO 167

TRADE MARKS ACT 1995

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

Re:Opposition by Mercedes-Benz Group AG to registration of trade mark application number 1881943 - VIVO - in the name of Vivo Mobile Communication Co., Ltd.

Delegate:

Debrett Lyons

Representation:

Opponent: Spruson & Ferguson

Applicant: Madderns Pty Ltd

Decision:

2023 ATMO 167

Trade Marks Act 1995 (Cth) – opposition under section 52 – ss 44, 58A and 60 considered – none established – trade mark accepted

Background

1. This decision is in respect of an opposition by Mercedes-Benz Group AG (formerly, Daimler AG[1]) (‘Opponent’) under s 52 of the Trade Marks Act 1995 (Cth)[2] to registration of the trade mark detailed below in the name of Vivo Mobile Communication Co., Ltd. (‘Applicant’):

   [1] On 17 August 2023 the then opponent, Daimler AG, requested an amendment to the opponent name pursuant to section 53 of the Trade Marks Act 1995 (Cth) from Daimler AG to Mercedes-Benz Group AG.

   [2] Any references to sections or regulations in this decision are references to sections or regulations of the Trade Marks Act 1995 (Cth) (‘Act’) or the Trade Marks Regulations 1995 (Cth) (‘Regulations’), respectively.

Number	Filing Date	Trade Mark	Relevant Goods[3]
1881943 (‘Application’)	23 October 2017	VIVO	Class 12: Electric vehicles; Cars; Motorcycles; Driverless cars (autonomous cars); Bicycles; Mopeds; Trolleys; Tires for vehicle wheels; Remote control vehicles (other than toys); Water vehicles; Air vehicles; Upholstery for vehicles; Vehicles (‘Applicant’s Goods’)

[3] The Application claims goods and services in classes 7, 11, 12, 14, 28, 37 and 41 as shown in full in the Appendix to this decision.

1. Following the advertisement of acceptance of the Application for possible registration on 19 April 2021, the Opponent filed a Notice of Intention to Oppose on 17 June 2021, followed by a Statement of Grounds and Particulars (‘SGP’) on 14 July 2021.  The Applicant filed a Notice of Intention to Defend on 11 October 2021.

2. In accordance with the Regulations the parties then proceeded to file their evidence, comprising:

   ·A declaration of Maria Hoymann, a trademark professional employed by the Opponent, made 11 January 2022 (‘Hoymann Declaration’) as Evidence in Support;

   ·A declaration of Weihua Lian, the IP Manager of the Applicant, made 14 April 2022 (‘Lian Declaration’) as Evidence in Answer; and

   ·A further declaration of Maria Hoymann made 23 May 2022 by the Opponent as Evidence in Reply.

3. Following the conclusion of the evidence stage, the parties were given the opportunity to request a hearing.  The parties requested a decision without a hearing.  Both provided written submissions.  My decision, acting as a delegate of the Registrar of Trade Marks, is based on the aforementioned material.

   Grounds, Onus and Relevant Date

4. In the SGP, the Opponent particularised its grounds of opposition as follows:

   ·     Section 44:  the Opponent relies on registered Trade Mark No. 681640 for VITO in class 12.

   ·     Section 58A: to the extent that the Applicant may rely on prior use to establish s44(4), the Opponent relies on prior use of the trade mark VITO in relation to vehicles, since at least 1998.

   ·     Section 60: the Opponent sells vehicles under the VITO mark in nearly every country in the world, including Australia. The Opponent has used the VITO in Australia in relation to vehicles, since at least 1998 and has developed a significant reputation in the Australian market. Due to the reputation of the Opponent in the VITO trade mark in Australia, use of the Opposed Mark in Australia by the Applicant is likely to deceive or cause confusion.

5. The Opponent bears the onus of establishing at least one of those grounds of opposition.[4]  The standard of proof is the ordinary civil standard of the balance of probabilities.[5]  The date at which the rights of the parties are to be determined is 23 October 2017 being the filing date and, for the purposes of ss 44 and 60, the priority date of the Trade Mark (‘Relevant Date’).

   [4] Food Channel Network Pty Ltd v Television Food Network GP [2010] FCAFC 58, [32] (Keane CJ, Stone and Jagot JJ).

   [5] Telstra Corporation Ltd v Phone Directories Co Pty Ltd [2015] FCAFC 156, [133] (Besanko, Jagot and Edelman JJ).

   The Opponent

6. According to the Hoymann Declaration, the Opponent is a multinational automotive corporation formed in 1926.  It is the thirteenth-largest car manufacturer and one of the biggest makers of premium cars.  At the date of the Hoymann Declaration, before the assignment and what is referred to as the “split-up”, Daimler AG was the world's biggest manufacturer of commercial vehicles.

7. The Opponent has used VITO in Australia since 1998.  It is applied to commercial vehicles sold under the Mercedes-Benz name. More than 20,000 vehicles to which the VITO name has been applied have been sold in Australia since 2004.  In 2011, the VITO vehicle was awarded 'Best Van of the Year' by Delivery magazine. 

8. The Opponent is the owner of the following Australian trade mark registration:

Number	Priority Date	Trade Mark	Goods
681640 (‘Registration’)	27 June 1995	VITO	Class 12: Motor vehicles and their parts (‘Registered Goods’)

The Applicant

1. According to the Lian Declaration, the Applicant is a high-tech company headquartered in Dongguan, China, founded in 2018.  The company is said to have “smart terminals and smart services at its core”.  It has research and development facilities in Shenzhen, Dongguan, Nanjing, Beijing, Hangzhou, Shanghai, Taipei, Tokyo and San Diego.  Its main product to date appears to be mobile phones which it sells under the VIVO name, which has been registered internationally. 

   Discussion

2. The opposition has only been brought against the Applicant’s Goods (class 12).  There is no objection to the class 37 services, being “motor vehicle maintenance and repair”.  I note here evidence of the Applicant’s registrations for the Trade Mark in class 12 in Macao, Taiwan, Thailand, Myanmar, Sri Lanka, India, Japan, Korea, Russia, and the OAPI[6].  Although there is no evidence of use of the Trade Mark on class 12 goods, the tenor of the Opponent’s submissions is an apprehension that it may come to be used on electric vehicles.

   [6] Organisation Africaine de la Propriété Intellectuelle

3. For the purposes of what follows the Applicant concedes that the Opponent and its MERCEDES-BENZ trade mark are well-known.  Nor does it contest that the Applicant’s Goods are not similar goods to the Registered Goods.  The important argument is whether the registration or use of VIVO is likely to deceive or cause confusion in respect of overlapping class 12 goods.

   Section 44

4. Section 44 relevantly provides:

   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 services.

   Note 1:       For deceptively similar see section 10.

   Note 2:       For similar goods see subsection 14(1).

   Note 3:       For priority date see section 12.

5. To successfully oppose the Application under s 44, the Opponent must establish that the Registration has a priority date earlier than that of the Relevant Date (which it does); that the Applicant’s Goods and the Registered Goods are similar; and that VIVO is substantially identical with or deceptively similar to VITO.

6. It is logical to examine the similarity of the respective goods first and in this regard the Opponent’s detailed submissions show some anxiety that the Registrar might not find all of the Applicant’s Goods similar to “motor vehicles and their parts”.  There may have been cause in another case to consider those submissions more closely, but for what follows I have assumed that the goods are similar within the meaning of s 14.

7. The Opponent submits that the marks are substantially identical, but does not argue that position with real zest, stating simply:

   Both marks are four letters. There is a single point of difference between the marks, namely, the differentiating letters, T and V, which are not very distinguishable from each other.

8. In Shell Co (Aust) Ltd v Esso Standard Oil (Aust) Ltd Windeyer J said:

   In considering whether marks are substantially identical they should, I think, be compared side by side, their similarities and differences noted and the importance of these assessed having regard to the essential features of the registered mark and the total impression of resemblance or dissimilarity that emerges from the comparison.[7]

   [7] [1963] HCA 66, [12].

9. The marks consist of four letters and differ by only one letter.  They both comprise of two syllables, sharing a common first syllable.  Although these are significant similarities, there the resemblance ends.  VIVO is a reduplicative word with a repeated consonant at the beginning of each syllable.  It has even stress when spoken, not the case with VITO which carries a hard second syllable.  VIVO has no meaning in English, whilst VITO is a known male forename.  To the extent that VIVO has a Latin root which might be understood, that only creates further distinction.

10. On a side-by-side comparison I find that the Trade Mark is not substantially identical to the registered mark.  The observed differences influence my decision in regard to deceptively similarity,[8] defined in s 10:

    [8] Ibid [13]: “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].”

    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.

11. I must now concentrate, not on a side-by-side comparison, but instead upon the general impression or recollection of the marks by the public.[9]   The High Court has stated that “[i]t is important to consider what has been described as the ‘idea of the mark’, that is, the idea which the mark will naturally suggest to the mind of one who sees it”.[10]   In performing that task, I must consider the notional use of the Trade Mark, bounded by the Applicant’s Goods.[11]  

    [9] Jafferjee v Scarlett (1937) 57 CLR 115, 121-22 (Latham CJ).

    [10] Jafferjee v Scarlett (n 8) at 121; see also Telstra Corporation Limited v Phone Directories Company Australia Pty Ltd [2015] FCAFC 156; (2015) 237 FCR 388, [209]-[219] (Besanko, Jagot and Edelman JJ); Polo/Laurent Company LP v Continental Shelf 128 Ltd (2019) 150 IPR 148 at [39]-[42] (Hearing Officer I. Thompson).

    [11] Crazy Ron’s Communications v Mobileworld Communications [2004] FCAFC 196; (2004) 209 ALR 1, [77] (Moore, Sackville and Emmett JJ).

12. The Full Federal Court has directed that I must “decide if there is a reasonable probability that the ordinary person to whom the marks are targeted, entertains a reasonable doubt as to the relationship between the marks”.[12]  In so doing, I must apply the standard of ordinary people who should not be credited with high perception or habitual caution.  Allowance should be made for imperfect recollection and the effect of careless pronunciation.

    [12] Australian Postal Corp v Digital Post Australia [2013] FCAFC 153; (2013) 308 ALR 1, [70] (North, Middleton and Barker JJ).

13. I might think that these considerations weigh in the Opponent’s favour until I remind myself of the context of the comparison and the way in which the particular class of goods are sold or traded.[13]  For all intents and purposes, the goods are motor vehicles.  The Trade Marks Manual of Practice and Procedure published by this Office states that:[14]

    The nature of the goods and the market through which they will be purchased will affect the care with which purchasers will view trade marks on goods which they select. Generally the more expensive the items being considered the less likely the purchaser is to be deceived or confused by similarities between the trade marks under which they are sold.

    [13] As advocated in Australian Woollen Mills v F S Walton and Co Ltd [1937] HCA 51 (Dixon and McTiernan JJ).

    [14] Part 26.6.10.

14. The Opponent rightly states that there will be some people to whom VIVO and VITO are meaningless.  This, I agree, increases the likelihood of confusion.  Likewise, there are members of the public with little awareness or interest in motor vehicles who may have, as the Opponent put it, “a somewhat blurry recollection of the mark VITO”.   But these people – whose observations are clouded by ignorance or indifference are not the relevant public, being persons interested in purchase and sensitive to recognise one trader from another, even in memory.  I am essentially in agreement with the Applicant’s submission that:

    … they are not goods purchased on impulse. Together with the sufficient distinctions between the Applicant’s Mark and the Opponent’s Mark, when considered as a whole in the context of the goods, even allowing for imperfect recollection, it is unlikely that the use of the Applicant’s Mark will deceive or cause confusion among a substantial number of persons because of any similarity it has to the Opponent’s Trade Marks [sic].

15. I am not distracted from that finding by the submissions of the parties regarding contests over the same trade marks in similar proceedings overseas, but I note that, statistically, it is the Applicant which has so far well prevailed.[15]

    [15] The Opponent has succeeded in Mexico and New Zealand.  In the EU, the Applicant withdrew its application.  The Applicant has succeeded in Singapore, Spain, France and Turkey.

16. The marks are not substantially identical, nor deceptively similar, and so the s 44 ground of opposition has not been established.

    Section 58A

17. Section 58A is no longer relevant as s 44(4) is not relevant.

    Section 60

18. Section 60 provides:

    Trade 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.

19. The Opponent must establish that VITO had a reputation in Australia on the Relevant Date and, because of that reputation, use of the Trade Mark would be likely to deceive or cause confusion.  In McCormick & Co Inc v McCormick, Kenny J held that a reputation meant “the recognition of the [trade mark] by the public generally”[16] and, aptly for present purposes, quoted with approval the Hugo Boss decision, where the Registrar’s delegate observed:

    [I]t is true that the assessment of the reputation of a trade mark goes far beyond mere examination of sales or turnover of goods sold under that trade mark and contemplation of the advertising and promotional figures.

    As regards a trade mark, its reputation derives both from the quantum of sales under that mark and also the esteem, or image, projected by that trade mark. The quantum of sales, advertising and promotion contributes to the ‘recognition’ component of the trade mark’s reputation. The credit, image and values projected by a trade mark attaches to the ‘esteem’ component of the reputation as do the public events and other trader’s marks with which [the] owner of the trade marks in question chooses to associate the trade marks via sponsorships, cross-promotions, ‘contra deals’ and so forth.[17]

    [16] [2000] FCA 1335, [81].

    [17] Hugo Boss AG v Jackson International Trading Co Kurt D Bruhl Gesellschaft MbH & Co KG (1999) 47 IPR 423, 436 (Hearing Officer I. Thompson).

20. The Opponent’s submissions essentially repeat the ground as it was particularised in the SGP.  As mentioned, the original opponent was Daimler AG.  The Hoymann Declaration refers to “the split-up into Mercedes-Benz Group (cars/vans) and Daimler Trucks (trucks/buses) in 2022” and I assume that this is the backdrop to the change of opponent (and to the assignment of the Trade Mark) from Daimler AG to Mercedes-Benz Group AG.  How, and if, this impacts on some of the statements in the Hoymann Declaration made 11 January 2022 is not clear to me.  In any event, the Applicant acknowledges the prominence of the MERCEDES-BENZ marque in Australia.

21. The Opponent states that “[i]t is not necessary to show actual confusion under s 60, but rather a likelihood of confusion. Moreover, the relevant test for determining the likelihood of deception or confusion between the marks involves a notional use of the Applicant’s mark in a normal and fair manner on any goods and services covered by the Application”.  I accept those submissions but add that, unlike s 44, confusion must arise from the manner in which the Opponent has used its trade mark. 

22. The MERCEDES-BENZ trade mark has a reputation in Australia, but it is another question whether VITO also has a reputation as a trade mark.  Twenty thousand MERCEDES-BENZ “VITO” vans have been sold here since 2004.  A large, but not overwhelming number.  The sales values are confidential.  Whilst impressive, they indirectly reflect the unit price of the vans and underscore my earlier comments about the care consumers exercise with high priced goods. 

23. Undoubtedly, the MERCEDES-BENZ brand tows the VITO name along with it.  Indeed, the Hoymann Declaration states that “[i]t can be seen [from the evidence] that “VITO” is almost always used in proximity to the Mercedes-Benz mark … or the famous Mercedes-Benz logo”. I find that the VITO name is known, however there is considerable doubt in my mind as to whether the public exposed to it would think of it as a marque, rather than what it is - a van model. 

24. The notional use to which the Trade Mark might be put which would presently cause the Opponent most consternation would be the sale of VIVO motorised vans, electric or otherwise.  I do not consider that the relevant public would be so insensitive that there existed a real and tangible danger that such goods would be confused with goods put on the market by the Opponent which bear the VITO name.  In my assessment the Opponent has not established s 60(b) and so the ground fails, as does the opposition.

    Decision

25. The Opponent has not established any ground of opposition.  Therefore, under s 55, I direct that trade mark application 1881943 proceeds to registration 30 days after the date of this decision.  If the Registrar is served with a notice of appeal, I direct that registration shall not occur until the appeal is withdrawn or discontinued.  Otherwise the disposition of the Application should be in accordance with the Court’s order or direction.

26. It is usual for costs to follow the event and I see no reason to depart from that principle. I award costs against the Opponent under s 221 in line with Schedule 8 of the Regulations.

    Debrett Lyons

    Hearing Officer

    Delegate of the Registrar of Trade Marks

    30 October 2023

    APPENDIX

    Class 7:

    Mixing machines being household/kitchen applicances; Dishwashers; Coffee grinders, other than hand-operated; Blenders, electric, for household purposes; Whisks, electric, for household purposes; Fruit presses, electric, for household purposes; Washing machines (laundry); Dry cleaning (laundry) machines; Dust exhausting installations for cleaning purposes; Vacuum cleaners; Machines and apparatus for cleaning (electric)

    Class 11:

    Cooking apparatus and installations; Kettles, electric; Microwave ovens (cooking apparatus); Cooking utensils, electric; Bread baking machines; Refrigerators; Laundry dryers, electric; Hair dryers; Filters for drinking water; Water purifying apparatus and machines; Hot water bottles; Decontamination apparatus

    Class 12:

    Electric vehicles; Cars; Motorcycles; Driverless cars (autonomous cars); Bicycles; Mopeds; Trolleys; Tires for vehicle wheels; Remote control vehicles (other than toys); Water vehicles; Air vehicles; Upholstery for vehicles; Vehicles

    Class 14:

    Brooches (Jewelry); Key rings (split rings with trinket or decorative fob); Charms for key rings; Bracelets (Jewelry)

    Class 28:

    Dolls; Plush toys; Toy vehicles; Stuffed toys; Toy models; Toy figures; Toy robots; Board games

    Class 37:

    Motor vehicle maintenance and repair

    Class 41:

    Photography; Photographic reporting