Monster Cable Products, Inc v Konami Corporation

TRADE MARKS ACT 1995

DECISION OF A DELEGATE OF THE REGISTRAR OF TRADE MARKS WITH REASONS
Re:Opposition by Monster Cable Products, Inc to registration of application 999612(9) CAPSULE MONSTER COLISEUM proceeding in the name of Konami Corporation.

Delegate:

Iain Thompson

Representation:

Opponent

Ben Fitzpatrick of Counsel instructed by Griffith Hack.

Applicant

David Franklin of FB Rice & Co.

Decision:

2007 ATMO 47

1. Section 52 opposition. Sections 44 and 60. Goods not of same description. Market places for goods appear to be distinct. Trade marks not deceptively similar. Opposition not established on evidence before hearing officer.

2 Costs ordered against opponent.

Background

In this matter, Konami Corporation (‘the applicant’) of Tokyo, Japan, has applied to register a trade mark, details of which appear below:
Appn No:  999612
Priority Date:  27 April 2004 (‘the relevant date’)
Goods/Services:              Class: 9 Electronic and video amusement apparatus adapted for use with television and video apparatus; electrical and electronic amusement apparatus; computers; computer game programs; tapes, discs, CD-ROM Digital Versatile Disc-ROM, Digital Versatile Disc-RAM, cards, wire and filaments, all being magnetic or encoded and for bearing recorded data; hardware and firmware memory devices and plug-in cartridges; video game software; video game programs; game discs and circuit boards containing game programs for use with hand-held game machines; program memory cartridges for electronic amusement apparatus adapted for use with liquid crystal displays; downloadable electronic game software, downloadable computer game software and downloadable video game software
Trade Mark:  CAPSULE MONSTER COLISEUM
The application was accepted for possible registration on 12 August 2004 and advertised as such in the Australian Official Journal of Trade Marks on 26 August 2004. On 24 November 2004, Monster Cable Products, Inc, (‘the Opponent’) of San Francisco, California, filed Notice of Opposition to the registration of the trade mark. The opponent’s evidence comprises the following declarations:
- Statutory Declaration of Anne Helen Makrigiorgos declared 25 May 2006; exhibiting declarations of:
- John Denlay declared 16 August 2005;
- David Tognotti declared 22 June 2005;
·Alex McInnes declared 24 July 2005.
The applicant has not served and filed evidence in answer.
The terms of the Notice of Opposition are broad and, at the hearing, the opponent relied on:
v section 44 — based on prior registrations 377356; 431809; 744964; 746037; 746040; 746371; 746373; 752273; 946024 and prior applications 951661 and 979193.
v Section 60 — the use of the opposed trade mark will be likely to deceive or cause confusion.
As a delegate of the Registrar of Trade Marks, I heard the submissions of the opponent, made by Ben Fitzpatrick of Counsel, instructed by Griffith Hack, in Melbourne on 5 June 2007. David Franklin of FB Rice & Co made submissions on behalf of the applicant.
Evidence
The Notice of Opposition, the submissions, and evidence, show that trade mark registrations on which the opponent relies in these proceedings in relation to the ground under section 44 are:
Reg No:               377356
Priority Date:  25 June 1982
Goods/Services:              Class: 9   Audio cables, wires and connectors
Trade Mark:
Reg No:               431809
Priority Date:  16 August 1985
Goods/Services:              Class: 9   Audio cables, wires and connectors
Trade Mark:  MONSTER CABLE
Reg No:               744964
Priority Date:  24 April 1997 (Convention)
Goods/Services:              Class: 9 Cables for electrical and electronic equipment; including cables for computers; and parts and fittings therefor
Trade Mark:  MONSTER COMPUTER
Reg No:               746037
Priority Date:  10 October 1997
Goods/Services:              Class: 9 Electrical signals distribution panels, boards, boxes, consoles and machines; and parts of and accessories for such goods
Trade Mark:  MONSTER CENTRAL
Reg No:               746040
Priority Date:  10 October 1997
Goods/Services:              Class: 9 Cables for electrical and electronic equipment; including cables for computers; and parts and fittings therefor
Trade Mark:  MONSTER INTERNET
Reg No:               746371
Priority Date:  15 October 1997
Goods/Services:              Class: 9 Electrical signal transmitting cables and connectors therefor; computer cables; telephone cables and wires; modems; and parts of and accessories for such goods
Trade Mark:  MONSTER WIRE AMERICA
Reg No:               746373
Priority Date:  15 October 1997
Goods/Services:              Class: 9 Batteries of all types as are included in this class; power strips and boards; power conditioners; extension cords; electrical signal transmitting cables and connectors therefor; parts of and accessories for such goods
Trade Mark:  MONSTER AMERICA
Reg No:               752273
Priority Date:  7 July 1997 (Convention Claim)
Goods/Services:              Class: 9 Electrical and musical signal transmitting cable and connectors
Trade Mark:  MONSTER
Reg No:               946024
Priority Date:  6 March 2003
Goods/Services:              Class: 9 Electrical and electromagnetic signal transmitting, amplifying, receiving and converting devices, including, cables, wires, connectors, and control devices for use with automotive and marine electrical, electronic and computer devices, loudspeakers, stereo amplifiers, automotive and marine electrical power control components and accessories; automotive and marine mobile phone equipment and accessories
Trade Mark:  MONSTER CABLE
Reg No:               951661
Priority Date:  23 April 2003
Goods/Services:              Class: 9 Communication apparatus and equipment excluding communication antennae; mobile phone apparatus and equipment; electrical and electromagnetic signal transmitting, amplifying, receiving and converting devices, including, cables, wires, connectors, and control devices for use with automotive and marine electrical, electronic and computer devices, loudspeakers, stereo amplifiers, automotive and marine electrical power control components and accessories; automotive and marine mobile phone equipment and accessories
Trade Mark:  MONSTER
Appn No:  979193
Priority Date:  20 November 2003
Goods/Services:              Class: 9 Electrical and electromagnetic signal transmitting amplifying, receiving and converting devices, namely, cables, wires, connectors, and control devices for use with electrical, electronic and computer devices; loudspeakers; stereo amplifiers; recording media, namely, compact discs having prerecorded music; telephone accessories; mobile phone equipment and accessories; audio equipment and accessories; video equipment and accessories; electrical power control components and accessories; energy conditioning devices; rechargeable and non-rechargeable power cells, and power cell re-chargers; none of the foregoing containing games or for gaming machines
Trade Mark:  MONSTER
The evidence of the opponent shows that it uses its MONSTER CABLE trade mark in Australia predominantly in relation to specialist cabling for hi-fi audio equipment for loud speakers, etc. Mr Tognotti in his declaration states that the first worldwide use of the MONSTER CABLE trade mark in relation to cables was in 1978. In Australia, the trade mark was first used on cables in March 1981. Concerning the goods, Mr Tognotti says:
Noel Lee, [the founder of the opponent] was then a laser-fusion design engineer at Lawrence-Livermore Laboratory, as well as an audiophile and professional drummer. Lee discovered that wires of different constructions produced varying degrees of audio performance when hooked up to loudspeakers. From this discovery, he developed a high performance speaker cable, named it Monster Cable, and literally created an industry. The invention of Monster Cable created a new product category that revolutionized the audio market.
While it is apparent from Mr Tognotti’s declaration that the opponent has considerable sales of, and reputation for, its specialist hi-fi cables and connectors sold under the MONSTER trade mark in Australia, it is impossible to gauge from his declaration whether the opponent has sold any other goods in Australia under any of its MONSTER family of trade marks or whether the opponent’s trade marks’ reputation extends beyond hi-fi audio cabling and connectors. While a catalogue is exhibited to Mr Tognotti’s declaration, it is not obvious from the evidence that this catalogue has been available to the public in Australia or if goods have been ordered from, or within, Australia by reference to the catalogue.
Similarly, while Mr Tognotti refers me to the opponent’s Internet site at it is not claimed by him that Australians had, by the priority date, actually ordered a wider range of goods than hi-fi cables and connectors over the Internet.
The opponent’s goods under its MONSTER CABLES trade mark are distributed in Australia by Convoy International Pty Ltd (‘Convoy’) of Botany NSW. Mr Alex McInnes is the CEO of Convoy and he states that:
Convoy is the distributor in Australia of "audio and video cables, wires and connectors, splitters, adapters, clamps, mounts and speaker systems, cables for electronic and electrical equipment including computers and computer games and parts and fittings therefor, electrical signals distribution panels, boards, boxes, consoles and machines and parts and accessories therefor, electrical signal transmitting cables and connectors, computer cables, telephone cables and wires, modems and parts and accessories therefor, batteries, power strips and boards, power conditioners, extension cords, and parts and accessories therefore and musical signal transmitting cables and connectors" ("the Goods"). under the trade marks MONSTER, MONSTER CABLE, MONSTER COMPUTER, MONSTER CENTRAL, MONSTER INTERNET, MONSTER WIRE AMERICA and MONSTER POWER ("the Monster Marks").
The nature of the claim makes any assessment of the reputation of the MONSTER trade mark in Australia beyond that above (restricted to cables and connectors) impossible.
Mr John Denlay is Product Manager for Gaming Systems at Aristocrat Technologies Australia Pty Ltd of Lane Cove. Mr Denlay says:
Aristocrat is a leading global provider of gaming solutions, namely software, systems and hardware. Aristocrat specialises in the creation and supply of gaming products including gaining and poker machines and their parts and accessories.
Gaming and poker machines require cables and connectors for their operation. Cables and connectors are used to link the various and numerous electro mechanical components to the electronic devices that control the operation of gaming and poker machines and referred to in the gaming industry as control logic. Typical components connected by said cables and connectors would be Light Emitting Diodes (commonly known as LED's) and/or incandescent or fluorescent lamps and to provide distribution of electrical power from mains sockets to transformers via an electrical socket. Gaming and poker machines are sold with the cables and connectors as integral parts of the machines.
Gaming and poker machines require cables and connectors are also used to facilitate the actions of players selecting options in the control of game choices. That is when a player presses a push button on a gaming machine they make or break an electronic connection that in turn changes a state within the gaming machine and influences the game's operation. Gaming and poker machines can be converted from one game to another to the extent that the number of push buttons might need to change to a higher number of push buttons (E.G. from 14 to 16). In order to do so, gaming and poker machine manufacturers such as Aristocrat sell conversion kits. Included in such a conversion kit might be the extra 2 push buttons and corresponding cables to be connected to the extra push buttons.
I note that Mr Denlay does not claim that Aristcrat uses the opponent’s cables in his company’s machines – or that a gaming machine manufacturer would use cables of the same nature as those of the opponent for the same purpose.
Reasoning
Section 44(1) of the Act relevantly 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 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.
Note 4: The regulations may provide that an application must also be rejected if the trade mark is substantially identical with, or deceptively similar to, a protected international trade mark or a trade mark for which there is a request to extend international registration to Australia: see Part 17A.
Given that the opponent’s applications and registrations all predate the opposed application, the questions that arise for my decision are whether:
v The goods of the parties are similar goods – this includes consideration of whether the goods are goods of the same description; and, if so, if
v The trade marks of the parties are either substantially identical or deceptively similar.
The consideration of the parties’ goods is logically antecedent to consideration of the trade mark since the comparison of the trade marks is in the context of the goods and marketplace.[1]
[1] Registrar of Trade Marks v Woolworths [1999] FCA 1020 at paragraph 39 per French J.
The goods at issue are not the same goods. Whether the goods are goods of the same description is to be assessed in the light of the tests set out in, Southern Cross Refrigerating Co v Toowoomba Foundry Pty Ltd [1953] HCA 73; (1954) 91 CLR 592 at pages 606-607:
There may be many matters to be considered apart from the inherent character of the goods in respect of which the application is made and some indication of what matters are relevant to this inquiry was given by Romer J. in In re Jellinek's Application (1946) 63 RPC 59 . Romer J. thought it necessary to look beyond the nature of the goods in question and to compare not only their respective uses but also to examine the trade channels through which the commodities in question were bought and sold. Shortly after the decision in Jellinek's Case (1946) 63 RPC 59 the Assistant-Comptroller elaborated on the observations of Romer J. in the following manner: "In arriving at a decision upon this issue the reported cases show that I have to take account of a number of factors, including in particular the nature and characteristics of the goods, their origin, their purpose, whether they are usually produced by one and the same manufacturer or distributed by the same wholesale houses, whether they are sold in the same shops over the same counters during the same seasons and to the same class or classes of customers, and whether by those engaged in their manufacture and distribution they are regarded as belonging to the same trade. In the case of Jellinek's Application (1946) 63 RPC 59 , Romer J. classified these various factors under three heads, viz., the nature of the goods, the uses thereof, and the trade channels through which they are bought and sold. No single consideration is conclusive in itself, and it has further been emphasized that the classifications contained in the schedules to the Trade Marks Rules are not a decisive criterion as to whether or not two sets of goods are 'of the same description'": In re an Application by John Crowther & Sons (Milnsbridge) Ltd. (1948) 65 RPC 369, at p 372. Much the same considerations are evident in the observation of Dixon J. (as he then was) in Reckitt & Colman (Australia) Ltd. v. Boden [1945] HCA 12; (1945) 70 CLR 84 when he said: "What forms the same description of goods must be discovered from a consideration of the course of trade or business. One factor is the use to which the two sets of goods are put. Another is whether they are commonly dealt with in the same course of trade or business. In the present case, the goods are quite different, their uses are widely separated and they are not commonly sold in the same kinds of shops or departments" (1945) 70 CLR, at p 94.
With the above precepts in mind, there can be no doubt that the goods of the parties are not goods of the same description. The closest that the goods come, to my mind, is within the opposed specification, ‘wire and filaments, all being magnetic or encoded and for bearing recorded data’ on the one hand and the opponent’s cables and connectors on the other. However, the opponent’s cables are for the transmission of signal or current – the carriage of impulses. The applicant’s wires are for the storage of recorded data. In the absence of evidence which would show otherwise, it appears to me that on a prima facie basis, these goods are quite different in their natures, their manufacture and their purposes. It appears to me quite unlikely that a purchaser would view the articles as having the same trade origin or having a use in common.
It must necessarily follow that the opposition in terms of section 44 cannot be established.
Section 60
Section 60 of the Act provides:
60 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) 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.
To establish this ground the opponent must establish that there was at the priority date of the opposed application a reputation within Australia in its common-law or registered trade marks; and, that the opposed trade mark is either substantially identical or deceptively similar to the opponent’s trade mark or trade marks; and the opponent must establish to my satisfaction that because of the reputation of the opponent’s trade mark(s) the use of the opposed trade mark would confuse or deceive.
Reputation was discussed by Kenny J in McCormick & Company Inc v McCormick [2000] FCA 1335 at paragraph 81:
What is intended by the word "reputation" in s 60? The word is defined in The Macquarie Dictionary as follows:
reputation ... 1. the estimation in which a person or thing is held, esp. by the community or the public generally; repute ... 2. favourable repute; good name ... 3. A favourable and publicly recognised name or standing for merit, achievement, etc. ... 4. The estimation or name of being, having done, etc, something specified.
Cf. The Oxford English Dictionary. In s 60, the word is, I think, apt to refer to "the recognition of the McCormick & Co marks by the public generally".
Does the evidence establish that in Australia before 9 March 1992 the McCormick & Co marks were recognised by the public generally and, because of that, the use by Mary McCormick of her marks would be likely to cause the public confusion, as for example, by the public's mistakenly attributing a business connection between the two or attributing her product to the company?

Here the question becomes, ‘does the evidence establish that in Australia before 27 April 2004, the opponent trade marks were recognized amongst the public generally and, because of that, the use of the opposed trade mark would be likely to result in public confusion?’
The easy answer to that question is ‘no’. The opponent’s trade marks are predominantly used in Australia in relation to specialized, high quality, cable for carrying audio signal in hi-fi and other top-of-the-line electronic equipment where consumers put sound quality at a premium. This sector of the market is, I think, as a matter of commonsense, a fraction of the population and not ‘Australians generally’.
However, I do not think that that is the end of the issue. Where the goods are specialized goods, I should, I think, be considering the sector of the Australian market at which the goods are directed. Although it was a matter in trade practices law, Bridges & Ors. v Bridge Stockbrokers Limited & Ors. 4 FCR 21 states that the relevant market should be considered. As I have previously intimated, I believe that the opponent has shown that it has a reputation in its MONSTER CABLE trade mark, which it seemingly uses as a ‘house’ trade mark and probably in the trade mark MONSTER, solus, within the Australian hi-fi marketplace. I do not consider that the evidence clearly establishes that the trade marks of the opponent have been used in Australia beyond hi-fi cables and cable connectors and so, accordingly, the reputation of the opponent trade mark is limited to these goods amongst audiophiles and some other people who require or appreciate high quality audio reproduction.
It is here, I think, whatever the similarities of the trade marks might be, the opponent’s prospects of establishing its opposition are extinguished. The opponent’s prospects of success under section 60 rest to a large extent on establishing to my satisfaction that the market for computer games and the specialist market for its hi-fi cables run in the same channel such that if the trade marks are deceptively similar the result would be a likelihood of confusion. The opponent’s evidence does not address the question of to what extent the parties’ different customers might be viewed as being within the one market and it seems to me that the marketplaces are largely distinct. The risk of confusion is, because of this, very low.
To pursue the ‘markets’ analysis one stage further – there is no high likelihood that the advertising and promotion of the goods in magazines outside the audiophile market will have brought the opponent’s trade mark to the attention of those who might purchase computer games. Mr Tognotti says:
… however for some time now, there has not been a need to advertise or promote the Goods under the Trade Marks and the Monster Marks as the excellent reputation of the Goods under the Trade Marks and the Monster Marks is so firmly entrenched throughout the world, that the usual forms of advertising and promotion by MCP are no longer perceived as required, As with any popular, high quality product, word of mouth has become a strong advertising source. MCP has as a consequence chosen to redirect its advertising and promotional expenditure into improving its already high quality and affordable products and in research and development of related accessories and new products.
Mr McInnes gives the amounts spent on advertising goods sold under the trade mark by Convoy in Australia. These are quite modest.
So while the evidence shows that the opponent’s goods are quite well known, it is likely that reputation is within the specialist market for the goods.
Mr Denlay’s evidence about cabling being used in gaming machines is, I consider, not particularly convincing inasmuch as it might go to supporting arguments about potential confusion. To take an extreme example, cabling, and (relevantly) audio cabling might be found in most large, modern, passenger aircraft; however, that fact in itself would not be a source of confusion between the aircraft and the cabling if the aircraft and cabling had a word in common within their trade marks. That sort of approach suggested by the evidence also depends on convincing me that people who play computer games are aware of any trade marks on the cables therein.
For the sake of completeness, I will add that I do not consider that the trade marks are deceptively similar. Deceptive similarity is to be assessed according to the tests set out in, for example, Australian Woollen Mills Limited v F S Walton and Company Limited [1937] HCA 51; (1937) 58 CLR 641 where Dixon and McTiernan, JJ said:
In deciding this question, the marks ought not, of course, to be compared side by side. An attempt should be made to estimate the effect or impression produced on the mind of potential customers by the mark or device for which the protection of an injunction is sought. The impression or recollection which is carried away and retained is necessarily the basis of any mistaken belief that the challenged mark or device is the same. The effect of spoken description must be considered. If a mark is in fact or from its nature likely to be the source of some name or verbal description by which buyers will express their desire to have the goods, then similarities both of sound and of meaning may play an important part. The usual manner in which ordinary people behave must be the test of what confusion or deception may be expected. Potential buyers of goods are not to be credited with any high perception or habitual caution. On the other hand, exceptional carelessness or stupidity may be disregarded. The course of business and the way in which the particular class of goods are sold gives, it may be said, the setting, and the habits and observation of men considered in the mass affords the standard. Evidence of actual cases of deception, if forthcoming, is of great weight.
The trade marks in question have the word MONSTER in common. In the opponent’s trade marks the word MONSTER is used either on its own or with a second descriptive word such as CABLE, or possibly with the words POWER or COMPUTER although I am not satisfied that the opponent has demonstrated that it uses the latter two trade marks in the Australian market. In the context of the opponent’s goods, the word MONSTER conjures to mind ideas of length, size, and power. This analysis is supported by the opponent’s evidence – Mr Tognotti states that Noel Lee, the founder of the opponent selected the trade mark MONSTER, “because it sounded strong and powerful.”
In the opposed trade mark, the word MONSTER is the central of three words – the latter two of which are suggestive, in the context of computer games, of some sort of gladiatorial competition between grotesques or monsters. To this extent, the ideas of the parties’ trade marks appear to me to be substantially different and to bring quite different things to mind.
I am not satisfied that the trade marks are deceptively similar.
The opponent has not established its opposition in terms of section 60 of the Act.
Decision
Section 55 of the Act provides:
55 Decision
Unless the proceedings are discontinued or dismissed, 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.
Trade mark application number 999612 may therefore proceed to registration one month from the date of this decision. If the Registrar has been served with notice of appeal before that time, I direct that registration shall not occur until the appeal has been decided or discontinued.
Costs
The applicant, having been successful in these proceedings, is entitled to it costs which I order at the official scale.
Iain Thompson
Hearing Officer
Trade Marks Hearings
9 August 2007

[2007] ATMO 47

9 August 2007

Key Legal Topics

Areas of Law

Intellectual Property

Legal Concepts

Appeal

Costs

Statutory Construction