Morgan Motor Company Ltd v Aero Investments Pty Ltd

[2012] ATMO 91

TRADE MARKS ACT 1995

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

Re:Opposition by Morgan Motor Company Limited to registration of trade mark applications 1310712 & 1348918(12) - AERO SPORTS CARS and AERO SPORTS CARS WITH DEVICE - filed in the name of Aero Investments Pty Ltd.

Delegate:

Nicole Worth

Representation:

Opponent: no submissions or attendance at hearing.

Applicant: Blake Knowles, Cullens Patent and Trade Mark Attorneys

Decision:

2012 ATMO 91

s52 opposition – specific grounds not pressed – s41 established in respect of application 1310712 – no grounds established in respect of application 1348918.

Background

1. Aero Investments Pty Ltd (‘the Applicant’) has applied to register two trade marks, relevant details of which appear below:

AERO SPORTS CARS

(‘the word mark’)

(‘the device mark’)

Application No: 1310712

Application No: 1348918

Priority date: 3 August 2009

Priority date: 15 March 2010

Class 12: Motor vehicles in assembled form and motor vehicle accessories.

Class 12: Sportscars in assembled form.

1. The applications were examined in accordance with section 31 of the Trade Marks Act 1995 (‘the Act’). The device mark initially faced grounds for rejection under section 44 of the Act, which were withdrawn at an ex parte hearing and the application was accepted. The word mark also faced grounds for rejection under section 44, and in addition faced grounds for rejection under section 41 of the Act. The examiner of the application withdrew the grounds under section 44 after the decision in respect of the device mark issued, and reconsidered then withdrew the grounds under section 41 after which the application was accepted.

2. Acceptance of the word mark and the device mark was advertised on 16 December 2010 and 21 October 2010, respectively, in the Australian Official Journal of Trade Marks. Morgan Motor Company Limited (‘the Opponent’) subsequently filed Notices of Opposition (‘the Notices’) to their registration, on 11 March 2011 and 21 January 2011 respectively. The Notices nominated most of the grounds available under the Act to oppose an application.

The Evidence

1. The parties filed and served the following evidence:

Evidence in Support

• Statutory declaration of Timothy John Whitworth, Finance Director and Company Secretary of the Opponent, dated 11 May 2011 with exhibits TJW-1 to TJW-15. (‘Whitworth 1’).

• Statutory declaration of Chris van Wyk, Director of Morgan Cars Australia Pty Ltd (distribution and service agent for the Opponent), dated 18 May 2011 with exhibits CvW-1 to CvW-28. (‘van Wyk’)

Evidence in Answer

• Statutory declaration of Peter Tony Ransom, a Director of the Applicant, dated 16 August 2011. (‘Ransom’)

• Statutory declaration of Blake David Knowles, Trade Mark Attorney for the Applicant, dated 19 August 2011 with exhibits BDK-1 to BDK-8. (‘Knowles’)

Evidence in Reply

• Statutory declaration of Timothy John Whitworth dated 11 November 2011. (‘Whitworth 2’).

1. Each of the statutory declarations comprising the Opponent’s evidence (being Whitworth 1, van Wyk and Whitworth 2) state that the information contained therein is confidential in relation to the business activities of the Opponent and/or its Australian distributor/Agent, and that disclosure of such would seriously or adversely affect their business activities. Since the Opponent has not been specific in its request the confidentiality claim effectively extends to the whole of the evidence led in support of the opposition, and given it is likely that this decision will be published I am potentially left in a difficult position. Were I to take the claim for confidentiality literally, I would be unable to discuss the bulk of the Opponent’s evidence nor give reasons for my decision and must hence find that the Opponent has not established its opposition.

2. It is therefore not in the Opponent’s interest that I take its claim for confidentiality literally. I consider that since the Opponent has filed this evidence to support its opposition it must expect such evidence to be discussed and weighed. Moreover much of what is contained within the declarations and exhibits is publicly available via the Opponent’s own website or else by third party websites. Accordingly, I will discuss those parts of the Opponent’s evidence which are relevant, noting that any material which might be of a sensitive commercial nature need not be discussed in detail.

3. The Opponent describes itself as “an artisanal maker of motor cars” which is based in Malvern in the United Kingdom and which has been in existence for over a century. It began producing three-wheeled motor cars (known as ‘cyclecars’) in 1910, and over the years expanded its range of models to include four-wheeled motor cars as well. The Morgan cyclecars won a number of reliability and speed competitions which resulted in significant publicity of the Morgan name.

4. One of the cyclecar models was named ‘Aero’ in recognition of the famous aviator Captain Albert Ball, who had ordered a special-bodied cyclecar from the Opponent shortly before his death in 1917. The Aero was a sporting model cyclecar and came into production in 1920. Another sporting model, named the ‘Super Aero’ (or alternatively, it appears, ‘Super Sports Aero’) came into production in 1927. These cyclecars enjoyed a number of racing successes, and according to the website the Super Aero became one of the most fashionable machines to be seen driving in. Another website which chronicles the history of Morgan vehicles[2] states that production of the Aero ceased in 1933 and production of the Super Sports Aero ceased in 1939[3].

   [1] Extracts of which are shown at TJW-2 of Whitworth 1.

   [2] Being extracts shown at TJW-3 of Whitworth 1.

   [3] I note that production of all models ceased during the second world war when the factory was used for the war effort.

5. According to the Opponent, Emeritus Professor Craig Atkins of the University of Western Australia is an authority on the history of Morgan Cars in Australia. The Opponent declares that he is the Western Australian State Vice President of The Morgan Owners’ Club of Australia and the author of the independently published Morgans in Oz: A history of Morgan sports cars in competition in Australia from 1928 to 1974. There is no declaration from Prof Atkins himself, but the Opponent declares he provided information to the effect that there were three cyclecars designated ‘Aero’ in Australia before the Second World War, and the earliest large importer of Morgan motor cars was Bry-Law Motors in Melbourne.

6. A single, last shipment of nine “Super Sports models” was made to “Brylaws in Melbourne” in 1946[4]. Whilst the Opponent continued to produce motor cars, it appears that it did not utilise the name ‘Aero’ for any of its subsequent models until 2000, when it unveiled its new ‘Aero 8’ at “the Geneva show” (presumably being the Geneva International Motor Show or Salon International de l’Auto, an annual exhibition of car models, concept cars, accessories and related products).

   [4] According to the 1979 Feb/April issue of Australian Sports Car World, a copy of which is available at the website of The Morgan Owners’ Club of Australia, and is exhibited at TJW-5 of Whitworth 1.

7. The ‘Aero 8’ may be fairly described as a luxury sports car, produced in low volumes according to purchasers’ specifications and costing up to several hundred thousand dollars.

8. A distribution agreement was made between the Opponent and an Australian distributor in May 2001, and a ‘Morgan Aero 8’ was sold to that distributor in November 2001 as a “homologation car” (homologation being, broadly, the process of gaining approval of a car model for roadworthiness or racing). In respect of this sale the Opponent states “for the purposes of separating the issues of first use and continuous use, I assert that the documented first use of AERO in Australia by the opponent of the current era commenced with [the above-described] sale…” However the precise nature of this sale becomes unclear by the Opponent’s subsequent statements “The first November 2001 sale of an AERO8 was retained as a homologation car by the Australian distributor, and eventually sold in 2003” and “Use of the Opponent’s AERO marks has accordingly been continuous in respect of the relevant goods since 25 July 2003”.

9. The distribution agreement was superseded in 2004 by “Dealer and Authorised Service and Parts Agreements” between Morgan Cars Australia Pty Ltd (successor to the previous Australian distributor) and the Opponent. Mr. Chris van Wyk, Director of Morgan Cars Australia (and General Manager of the previous Australian distributor), placed advertisements for “the New Morgan Aero 8”, “the limited edition Morgan Aero SuperSports” and the “Morgan AeroMax” [5] in several publications directed at motoring enthusiasts or the affluent, examples of which are shown for the years 2005 to 2010. He also declares that the Morgan Aero was listed as being for sale in ‘Wheels’ magazine continuously from 2003 and that “the AERO8 Series 1 car…was displayed at various Motor Shows, Concours events and Morgan Club events, and it participated in track days in the Geelong Sprint meeting…During this time, it was officially available for sale, despite awaiting homologation”.

   [5] The latter two being subsequent models.

10. After a gap in sales of approximately five years (from 2003 to 2008), which the Opponent explains as being due to delays in homologation and Australian Design Rule compliance, a number of sales are recorded to have taken place up to 2010. I need not go into detail regarding the sales except to note that some occurred after the priority date of one or both of the applied-for trade marks and the volume of sales is not high, as might be expected for motor cars of this kind[6].

    [6] Such an expectation is based upon both the price and manner of purchase of the motor cars, which apparently includes the submission of an expression of interest together with a deposit, placement upon on a waiting list, confirmation of purchase, customisation of a range of features including colour and trim, and undergoing a substantial production period.

11. The Applicant was incorporated in 2009, and at the time of the Ransom declaration the vehicles to be sold under the applied-for trade marks were “in an advanced stage of development” and “nearing release”. The likely cost of the vehicles was to be between $400,000 and $500,000.

12. In respect of the adoption of the trade marks, Mr. Ransom declares that he and a colleague considered a number of different ideas, in the end choosing those applied for because “the imagery of ‘AERO SPORTS CARS’ evoked the classic mid to late 1960’s streamlined racing car era” and “the name was consistent with our desire to position our product as an Australian/Australasian vehicle. We intended to bring to mind famous characters from Australian and New Zealand racing from the 1960’s, for instance Bruce McLaren, Jack Brabham and Denny Hulme”.

13. The device element was developed by a graphic artist on the Applicant’s behalf, and of it Mr. Ransom declares “the ultimate sleek flowing wing device is related to the aerodynamic frontal wing forms of the Formula 1 cars, but modified to give form and shaping around the words AERO SPORTS CARS”. Mr. Ransom further declares that although he was, as a motoring enthusiast, aware of the Morgan Motor Company he was not aware of any models of Morgan vehicles that incorporated the word ‘Aero’ at the time he chose the trade marks.

14. The evidence does not show that the Applicant has yet used the applied-for trade marks, and the Applicant does not tender evidence of intended use.

15. Once the evidentiary stages had finished the Applicant requested to be heard. The Opponent declined attendance at the hearing and did not file written submissions. I heard the matter as a delegate of the Registrar of Trade Marks on 3 September 2012 in Brisbane. Blake Knowles of Cullens Patent and Trade Mark Attorneys prepared written submissions on the Applicant’s behalf and represented it at the hearing.

Grounds and Onus

1. The Notices contain most of the allowable grounds for opposing registration, and the Opponent bears the onus of establishing at least one of these in order to succeed. In the absence of submissions from the Opponent I presume that it wishes to rely upon all of the grounds in the Notices, however I consider that its evidence only lends support to the grounds pursuant to sections 41, 58 and 60 of the Act. For completeness I find that the other grounds in the Notices have not been established.

2. I proceed on the basis that the relevant standard of proof is the ordinary civil standard based on the balance of probabilities[7], and that the relevant dates at which the rights of the parties are to be determined are the Priority Dates[8].

   [7] Following Gyles J in Pfizer Products Inc v Karam (2006) 70 IPR 599 at [6] to [26]. See also Chocolaterie Guylian N.V. v Registrar of Trade Marks (2009) 82 IPR 13 per Sundbery J at [22] to [27] and NV Sumatra Tobacco Trading Company v British American Tobacco Services Limited [2011] FCA 1051 (9 September 2011) per Greenwood J at [16] to [32].

   [8] Southern Cross Refrigerating Co v Toowoomba Foundry Pty Ltd (1953) 91 CLR 592; Winton Shire Council v Lomas (2002) 56 IPR 243; Lomas v Winton Shire Council [2003] AIPC 91-839.

Section 41

1. Section 41 of the Act relevantly provides:

   (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.

   (3) In deciding the question whether or not a trade mark is capable of distinguishing the designated goods or services from the goods or services of other persons, the Registrar must first take into account the extent to which the trade mark is inherently adapted to distinguish the designated goods or services from the goods or services of other persons.

   (4) Then, if the Registrar is still unable to decide the question, the following provisions apply.

   (5) If the Registrar finds that the trade mark is to some extent inherently adapted to distinguish the designated goods or services from the goods or services of other persons but is unable to decide, on that basis alone, that the trade mark is capable of so  distinguishing the designated goods or services:

   (a) the Registrar is to consider whether, because of the combined effect of the following:

   (i) the extent to which the trade mark is inherently adapted to distinguish the designated goods or services;
   (ii) the use, or intended use, of the trade mark by the applicant;
   (iii) any other circumstances;

   the trade mark does or will distinguish the designated goods or services as being those of the applicant; and
   (b) if the Registrar is then satisfied that the trade mark does or will so distinguish the designated goods or services—the trade mark is taken to be capable of distinguishing the applicant's goods or services from the goods or services of other persons; and
   (c) if the Registrar is not satisfied that the trade mark does or will so distinguish the designated goods or services—the trade mark is taken not to be capable of distinguishing the applicant's goods or services from the goods or services of other persons.

   Note 1:  For goods of a person and services of a person see section 6.

   Note 2:  Use of a trade mark by a predecessor in title of an applicant and an authorised use of a trade mark by another person are each taken to be use of the trade mark by the applicant (see subsections (1) and 7(3) and section 8).

   (6) If the Registrar finds that the trade mark is not inherently adapted to distinguish the designated goods or services from the goods or services of other persons, the following provisions apply:

   (a) if the applicant establishes that, because of the extent to which the applicant has used the trade mark before the filing date in respect of the application, it does distinguish the designated goods or services as being those of the applicant—the trade mark is taken to be capable of distinguishing the designated goods or services from the goods or services of other persons;
   (b) in any other case—the trade mark is taken not to be capable of distinguishing the designated goods or services from the goods or services of other persons.

   Note 1:  Trade marks that are not inherently adapted to distinguish goods or services are mostly trade marks that consist wholly of a sign that is ordinarily used to indicate:

   (a)  the kind, quality, quantity, intended purpose, value, geographical origin, or some other characteristic, of goods or services; or

   (b)  the time of production of goods or of the rendering of services.

   Note 2:  Use of a trade mark by a predecessor in title of an applicant and an authorised use of a trade mark by another person are each taken to be use of the trade mark by the applicant (see subsections (1) and 7(3) and section 8).

2. The initial test for the inherent adaptability of a trade mark to distinguish was set out by Kitto J in F.H. Faulding & Son Ltd v Imperial Chemical Industries of Australia and New Zealand Ltd[9] as follows:

   The question to be asked in order to test whether a word is adapted to distinguish one trader’s goods from the goods of all others is whether the word is one which other traders are likely in the ordinary course of their business and without any improper motive, to desire to use it upon or in connection with their goods.

   [9] [1965] HCA 72; (1965) 112 CLR 537 at 555.

3. Sundberg J, in Chocolaterie Guylian NV v Registrar of Trade Marks[10], described further the steps the Registrar must take in considering a trade mark under section 41:

   [10] (2009) 180 FCR 60; [2009] FCA 891 at [9].

   (a) The Registrar must first “take into account the extent to which the trade mark is inherently adapted to distinguish” the relevant goods from the goods of others: subs 41(3);

   (b) If that consideration leads to a conclusion that the trade mark is capable of distinguishing the goods from those of others, then, so long as the Registrar is not satisfied that any other grounds for rejecting the [trade mark] exist, she must accept the [trade mark]…

   (c) However, if the Registrar is “unable to decide” whether the trade mark is capable of distinguishing the goods by the “inherently adapted” consideration alone, then either subs 41(5) or subs 41(6) applies: see subs 41(4). Subsection 41(5) will apply if the Registrar finds that the trade mark “is to some extent inherently adapted to distinguish the ... goods ... from the goods ... of other persons but is unable to decide, on that basis alone, that the trade make is capable of so distinguishing the ... goods”. By contrast, subs 41(6) will apply if the Registrar finds that the trade mark “is not to any extent inherently adapted to distinguish”.

   (d) If the Registrar finds the trade mark is to some extent inherently adapted (subs 41(5)), the Registrar is then required to consider whether the trade mark “does or will distinguish the ... goods as being those of the applicant”, by taking into account the combined effect of the following three matters (par 41(5)(a)):

   ·the extent to which the trade mark is inherently adapted to distinguish;

   ·the use, or intended use, of the trade mark by the applicant; and

   ·any other circumstances.

   (e) After taking those matters into account, the trade mark is “taken to be capable of distinguishing the applicant’s goods ... from the goods ... of other persons” only if the Registrar is “satisfied” that the trade mark in fact does or will so distinguish the goods: par 41(5)(b). If the Registrar is not so satisfied, then the trade mark is taken not to be capable of distinguishing (see par 41(5)(c)), a ground for rejecting the [trade mark] will thereby exist and the Registrar is then required to reject the [trade mark]…

   (f) In the alternative scenario that the Registrar finds that the trade mark is not to any extent inherently adapted to distinguish (subs 41(6)), then the trade mark is taken not to be capable of distinguishing the goods unless the applicant “establishes” that, because of the extent to which the applicant has used the trade mark prior to the relevant filing date of the application, the trade mark does in fact distinguish the goods as being those of the applicant: pars 41(6)(a) and (b).

1. That case also indicates that whilst a presumption of registrability applies to the assessment made under subsection 41(3), where some doubt remains after the assessment “rather than resolving that doubt in favour of an applicant (by operation of a presumption), the statute expressly directs the decision-maker to consider the criteria in s41(5) or s41(6) (whichever is applicable)”[11].

   [11] ibid, at [20].

2. In this case there is no scope for the application of subsections 41(5) or 41(6) since there is no apparent use of the trade mark by the Applicant, and there is scant information regarding intended use or other circumstances which might engage consideration of subsection 41(5). The only matter to be decided therefore is the extent to which the trade marks are inherently adapted to distinguish the designated goods, under subsection 41(3).

3. The Opponent contends that the grant of exclusive rights to a single party for marks consisting of or comprised essentially of the word ‘Aero’ would be to register a mark not capable of distinguishing the Applicant’s goods. It also evidences internet searches which show other makers of motor cars using the term ‘Aero’[12], including SAAB (although I note this example is raised in the context of other traders’ ‘reputation’), Holden Dealer Team (HDT), SSC and Nissan.

   [12] Exhibits TJW-11, 12, 13 and 14 of Whitworth 1. I note that the internet searches are undated and are therefore not necessarily reliable indicators of the use of ‘Aero’ at the priority dates of the applications.

4. The Applicant acknowledges that “the word ‘Aero’ brings to mind aerodynamic efficiency” but contends that when it is combined with the words ‘Sports Cars’, and a device as is the case with the device mark, the trade marks in their entirety are grammatically unusual and not something other traders would have a legitimate need to use. It further submits that the word mark’s capacity to distinguish has already been tested in examination by virtue of the initial ground for rejection under subsection 41(5) being raised and subsequently withdrawn. In this regard I note that the trade mark had not undergone “the kind of detailed adversarial examination of the application that might emerge from a contested opposition” referred to by French J in Registrar of Trade Marks v Woolworths[13]. The possibility is open, therefore, that, some trade marks will be accepted for registration and subsequently be found to lack inherent adaption with the benefit of consideration of an opponent’s evidence.

   [13] [1999] FCAFC 1020; (1999) 45 IPR 411.

5. It is convenient to discuss each of the applied-for trade marks separately as they are comprised of different features and are in respect of different ranges of goods.

6. I consider that the device mark is more easily dispensed with and so will deal with it first. For convenience I reproduce the mark below:

1. The ‘wing device’, whilst relatively simple in shape, is a distinguishing feature of the device mark (if not the distinguishing feature of the device mark). It is neither a conventional embellishment (such as that contemplated in Morny Ltd’s Trade Mark[14]) nor is it a device which is merely an illustration of the words (such as in E&J Gallo Winery v Lion Nathan Australia Pty Ltd[15]). Rather, it is an unusual shape and due to its size and positioning in relation to the words it is the type of feature which “strikes the eye and fixes itself in the recollection”[16]. It, in combination with the words ‘Aero Sports Cars’, comprises a trade mark which when taken as a whole is inherently adapted to distinguish the Applicant’s “sports cars in assembled form” from the same or similar goods of other traders. Therefore in making the assessment under subsection 41(3) I am satisfied that the trade mark is capable of distinguishing the designated goods.

   [14] (1951) 68 RPC 55.

   [15] [2010] HCA 15; (2010) 241 CLR 144.

   [16] Saville Perfumery Ltd v June Perfect Ltd (1941) 58 RPC 147.

2. The word mark consists solely of the words ‘Aero Sports Cars’ and is in respect of a broader range of goods, being “motor vehicles in assembled form and motor vehicle accessories”. The expression ‘Sports Cars’ is utterly descriptive in respect of some of those goods, and is therefore discounted to some degree in assessing capacity to distinguish. It is the word ‘Aero’ which largely bears the burden of distinguishing the Applicant’s motor vehicles and accessories from the motor vehicles and accessories of others.

3. The Oxford English Dictionary defines ‘Aero’ as “adj. Chiefly with reference to motor vehicles: aerodynamic, streamlined…” and “comb. form With reference to air or the air…”[17] On the other hand the Macquarie Dictionary defines ‘Aero’ as “adjective 1. of or for aircraft. 2. of aeronautics.”[18] There is therefore more than one meaning which may be attributed to ‘Aero’. Despite this the descriptive meaning of the word ‘Aero’ is apparent when viewed as part of the trade mark ‘Aero Sports Cars’ and in the context of motor vehicles and their accessories. In this manner ‘Aero’ is, I consider, clearly a reference to ‘aerodynamic’. The Applicant itself states that ‘Aero’ was chosen as a trade mark because it evoked the “mid to late 1960’s streamlined racing car era”.

   [17] Oxford English Dictionary online < 2012, Oxford University Press.

   [18] Macquarie Dictionary online < 2012, Macmillan Publishers Australia 2012.

4. I am not persuaded by the argument that the trade mark is grammatically unusual. It is true that the expression ‘Aerodynamic Sports Cars’ would be more grammatically precise, however were that the trade mark it would fall into the category of marks that are not to any extent inherently adapted to distinguish as contemplated in subsection 41(6). Here, the short form ‘Aero’ in ‘Aero Sports Cars’ lends a degree of distinctiveness to the trade mark, however not to the extent that the trade mark is inherently adapted to distinguish. This stance is supported by the Opponent’s exhibits of other traders using ‘Aero’ in the names of their motor car models: there is nothing to suggest those other traders are actuated by improper motives in using the word, rather they appear to be using it for its ordinary signification.

5. I do not consider the word mark ‘Aero Sports Cars’ is capable of distinguishing the Applicant’s goods on the basis of its inherent characteristics. In terms of subsection 41(3) I am unable to decide the question of capacity to distinguish without evidence of use or other circumstances (of which there is little), and therefore the ground of opposition under section 41 is made out.

6. Given that one of the grounds of opposition is made out in respect of the word mark, I need not discuss it further. The remaining discussion is in respect of the device mark only.

Section 58

1. Section 58 of the Act provides:

Applicant not owner of trade mark

58. The registration of a trade mark may be opposed on the ground that the applicant is not the owner of the trade mark.

Note:  For applicant see section 6.

1. It is well established in law that, in order to succeed under this ground of opposition, the Opponent must establish the authorship in Australia[19] and use by a person other than the Applicant of another trade mark:

   i) that is either identical or substantially so to the applied-for trade mark[20],

   ii) that has been used in relation to goods and services which are ‘the same kind of thing’ as that for which registration is sought[21], and

   iii) which occurred prior to the application to register or any actual use of the applied-for trade mark, whichever is the earlier.[22]

   [19] Authorship in this sense involves the origination or first adoption of the word as and for a trade mark: Aston v Harlee Manufacturing Company [1960] HCA 47; (1960) 103 CLR 391.

   [20] Carnival Cruise Lines Inc. v Sitmar Cruises Ltd [1994] FCA 936; 31 IPR 375 (1994).

   [21] Hick's Trade Mark (1897) 22 VLR 626, per Holroyd J at 640.

   [22] Settef SpA v Riv-Oland Marble Co (Vic) Pty Ltd 10 IPR 402 at 413.

2. It is not clear which of the several trade marks used by the Opponent is relied upon in attempting to establish that the Applicant is not the owner of the applied-for trade mark. The Opponent appears to ground its ownership claim in use during “the current era” (as opposed to its use of ‘Aero’ in the early twentieth century), exhibits of which show use of ‘Morgan Aero 8’, ‘Aero 8’, ‘Morgan AeroMax’, ‘AeroMax Coupe’, ‘Morgan Aero SuperSports’ and ‘Aero SuperSports’[23]. Whilst the word ‘Aero’ features in all of the Opponent’s marks and in the Applicant’s mark, the question of substantial identity must be arrived at after comparing the trade marks:

   …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.[24]

   [23] I note that ‘Aero SuperSports’ is shown only once, in the ‘description’ section of an invoice.

   [24] Windeyer J in Shell Co (Aust) Ltd v Esso Standard Oil (Aust) Ltd [1963] HCA 66; (1961) 109 CLR 407 at 414-415.

3. The applied-for mark contains, as well as the word ‘Aero’, a ‘wing device’ and the words ‘Sports Cars’. It was stressed in Carnival Cruise Lines Inc. v Sitmar Cruises Ltd[25] that in order to establish a ground under section 58, the marks in question must at a minimum be substantially identical:

   When the decision is understood in this way, it does not supply any general authority for the proposition that in the case of disputed claims to proprietorship under the present statute anything less than substantial identity will suffice…It requires a total impression of similarity to emerge from a comparison between the two marks. In a real sense a claim to proprietorship of the one extends to the other. But to go beyond this is, in my view, not possible.

   [25] [1994] FCA 936; (1994) 31 IPR 375.

4. In comparing the Opponent’s and Applicant’s marks I consider the additional features (alone or in combination) of ‘Morgan’, ‘8’, ‘Max’, ‘SuperSports’, and the ‘wing device’ preclude a finding of substantial identity. In particular the significant ‘wing device’ in the applied-for mark would most likely preclude a finding of substantial identity even if the Opponent did show use of the word ‘Aero’ simpliciter. Therefore the use of the trade marks ‘Morgan Aero 8’, ‘Aero 8’, ‘Morgan AeroMax’, ‘AeroMax Coupe’, ‘Morgan Aero SuperSports’ and ‘Aero SuperSports’ is not use of essentially the same trade mark as that applied for, and the ground fails at this hurdle.

Section 60

1. Section 60 of the Act provides:

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) 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.

Note 1:  For deceptively similar see section 10.

Note 2:  For priority date see section 12.

1. It is not necessary to establish deceptive similarity or substantial identity in order to establish a ground under section 60. What is necessary is that the Opponent establish that its trade marks had acquired a reputation in Australia before the priority date of the subject application and that because of that reputation, use of the Applicant’s trade mark would be likely to deceive or cause confusion.

2. Of reputation Kenny J said in McCormick & Company Inc v McCormick[26] 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?

   [26] (2000) 51 IPR 102.

3. Further, at 85, her honour quoted the Registrar’s delegate in his decision Hugo Boss AG v Jackson International Trading Co Kurt D Bruhl GmbH & Co KG[27]:

   [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.

   It follows that a trade mark used in relation to goods with comparatively low sales may have a high and strong reputation by virtue of the high credit or esteem in which it is held or, conversely, that a trade mark which has very high sales may have a strong reputation notwithstanding the lack of esteem that attaches to it. The particular popular images, or sets of values, that attach to the trade mark are also, therefore, important parts of the reputation of the trade mark and may be as strong an associative force in the minds of the public as the association of the trade marks with the goods or services themselves.

and continued that:

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…

[27] (1999) 47 IPR 423.

1. Here I do not consider that sales volume or advertising expenditures will necessarily be of direct assistance. I am not surprised by the low volume of sales of the Opponent’s goods, in particular because their price is a prohibitive factor to the general populous. Accordingly it is not necessarily the case for luxury sports cars that low sales volume translates to a lack of reputation in the trade mark under which they are sold. The Applicant’s own evidence supports this[28]: new vehicle sales for May 2011 show that Bentley, Lamborghini, Lotus and Rolls Royce each made fewer than five sales, whereas they are some of the most famous makers of motor cars.

   [28] Exhibit BDK-4 of Knowles, being New Vehicle Sales Figures May 2011 given by the website <

2. Nor is advertising necessarily a direct gauge by which reputation may be assessed. As observed by the delegate in Companie des Montres Longines, Francillon SA (Longines Watch Co Francillon Ltd) v Voxson Pty Ltd[29]:

   “reputation may arise in differing way: for example, I have never consciously observed an advertisement for a Rolls Royce® motor car in a magazine or a newspaper, much less on television or on radio and yet the reputation of the Rolls Royce trade mark has arisen seemingly despite the lack of extensive advertising in such media”.

   [29] Companie des Montres Longines, Francillon SA (Longines Watch Co Francillon Ltd) v Voxson Pty Ltd [2011] ATMO 82 (27 August 2011).

3. Without going into detail I note that the examples of advertising and associated expenditure are not “substantial” in the sense discussed by Kenny J in McCormick. At the same time it must be acknowledged that the relevant market is small, confined to motoring enthusiasts and possibly the wealthy in general. Advertisements in target publications such as ‘Unique Cars’, ‘Precious Metal’, ‘The Morgan Ear’ and ‘Centurion’, whilst not extensive, may support a positive finding in respect of reputation as might promotion at exhibitions such as “the Geneva show” (and the resultant press).

4. There is a difficulty, however, in that it is not clear in which of the trade marks it uses the Opponent is attempting to establish a reputation, or whether in fact it is attempting to establish a reputation in ‘Aero’ as the essential feature in a family of marks[30]. Whichever may be the case, there is little evidence showing public use of ‘Aero’ without the name ‘Morgan’ (the exception being limited use upon the Opponent’s own website).

   [30] I presume it is attempting to establish its reputation in ‘Aero’ given that is the feature in common with the applied-for trade mark.

5. Therefore the further difficulty for the Applicant is that I am being asked to gauge the reputation of ‘Aero’ from evidence which shows it to be almost always used in conjunction with the house mark ‘Morgan’. The third party websites relate to the history of Morgan vehicles; the issue of ‘Australian Sports Car World Quarterly’ evidenced by the Opponent is called ‘The Morgan Issue’, the trade marks specified in agreements with the Australian agent feature only ‘Morgan’, and the advertisements placed by the Australian agent all refer to the “Morgan Aero 8”, the “Morgan Aero SuperSports” or the “Morgan AeroMax”[31].

   [31] This lack of consistency in the use of the word ‘Aero’ by the Opponent within its trade marks distinguishes this matter from the circumstances in Wellness Pty Ltd v Pro Bio Living Waters Pty Ltd [2004] FCA 438; (2004) 61 IPR 242.

6. Thus when isolated from the house mark, the proposition that the Opponent has a reputation in ‘Aero’ (in the various forms in which it is used) is not established by the evidence. Whilst it seems that a reputation may reside in the house mark ‘Morgan’, I am not satisfied that the same can be concluded for the word ‘Aero’.

7. I consider also that purchasers would take great care selecting either the Opponent’s motor cars or the Applicant’s “sports cars in assembled form”. Despite the relevant market for both parties being largely the same, the cost of the goods and their usual manner of purchase are such that differences in the trade marks under which they are sold are likely to be noted (as opposed to a casual purchase such as bread or detergent) [32].

   [32] See for example LANCER Trade Mark Application [1987] FPC 303, ‘LANCER’ vs ‘LANCIA’, where it was observed that the more expensive an item to be purchased, the greater the care that was usually exercised in that purchase.

8. To conclude, I am not satisfied that ‘Aero’, as part of the Opponent’s marks, possesses the kind of reputation contemplated by s60, even when considered in respect of the relatively small relevant market. Nor am I satisfied that deception or confusion would occur given the differences in each parties marks, the nature of the goods and their manner of purchase. The Opponent has accordingly not established its ground of opposition under section 60 in respect of the only remaining trade mark, being the device mark.

Decision and costs

1. Subsection 55(1) provides:

   55Decision

   (1)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.

1. I refuse to register application 1310712. However I am not satisfied that any grounds of opposition have been established in respect of application 1348918, and it may therefore proceed to registration one month from the date of this decision. If the Registrar has been served with a notice of appeal by either party before the elapse of that month, I direct that registration shall not occur until the appeal has been decided or discontinued and that the disposition of the Application be in accordance with the Court’s order or direction.

2. In respect of costs, there does not appear to be any reason that costs should not follow the event. That being the case, I award costs against the Applicant in respect of application 1310712 and I award costs against the Opponent in respect of application 1348918, in accordance with Schedule 8 of the Trade Marks Regulations 1995.

Nicole Worth

Hearing Officer

Trade Marks Hearings

15 October 2012