MS Marketing Inc.v EZ Imports Pty Ltd

[2019] ATMO 159

TRADE MARKS ACT 1995

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

Re:Opposition by MS Marketing Inc. to trade mark application 1866377 (12) – EZ MOBI CRUISER with stylisation - in the name of EZ Imports Pty Ltd

Delegate:	Bianca Irgang
Representation:	Opponent: Nathan Sinclair of Shelston IP Applicant: Not present at the hearing
Decision:	2019 ATMO 159 Trade Marks Act 1995 - Section 52 opposition: section 58 ground of opposition established for all goods – registration refused.

Background

1. EZ Imports Pty Ltd (‘the applicant’), filed trade mark application number 1866377 on 16 August 2017 in class 12 of the International Classification of Goods and Services. Current details of the application are set out below.

   Trade mark:   (the ‘Trade Mark’)

   Trade mark application no: 1866377

   Filing Date:  16 August 2017

   Specification:  Class 12: Electrically powered mobility scooters; Electrically powered wheelchairs; Foldable wheelchairs; Foldable electrically powered wheelchairs; Foldable mobility scooters; Power chairs and powered stand up chairs for use by and transporting the elderly, disabled, infirm, invalid, sick and/or handicapped individuals; Accessories, spare parts and replacement parts for electrically powered wheelchairs, manual wheelchairs mobility scooters, power chairs; scooters; Powered golf carts and buggies; spare parts for powered golf carts

2. After the Trade Mark had been advertised as accepted for possible registration, MS Marketing Inc (‘the opponent’) filed a notice of intention to oppose and a statement of grounds and particulars. The applicant then filed its Notice of Intention to Defend. Thereafter the opponent and applicant respectively filed evidence in accordance with the provisions of the Trade Mark Regulations 1995 (‘the Regulations’).

3. I heard the opposition in Canberra as a delegate of the Registrar of Trade Marks on 22 July 2019. The opponent was represented by Nathan Sinclair of Shelston IP. The applicant was not present at the hearing and did not provide written submissions.

   Grounds of Opposition

4. The Notice nominated a number of grounds of opposition under the Trade Marks Act 1995 (‘the Act’). Those grounds under sections 42(b), 58 and 62A were pursued at the hearing. The Opponent bears the onus of establishing at least one of the grounds of opposition.[1] The standard of proof is the ordinary civil standard of the balance of probabilities.[2] Should the opponent establish one ground of opposition in relation to all of the applicant’s services, there is no requirement for me to consider the other grounds of opposition.

   [1] Food Channel Network Pty Ltd v Television Food Network GP [2010] FCAFC 58 [32].

   [2] Pfizer Products Inc v Karam [2006] FCA 1663 [6] - [26]; Telstra Corporation Ltd v Phone Directories Co Pty Ltd [2015] FCAFC 156, [132]-[133]

   Evidence

5. The evidence in this matter consists of the following declarations being:

   Evidence in Support

   ·Declaration of Maciej Szkodzinski (‘Szkodzinski 1’) dated 19 July 2018 with annexures MS-1 to MS-15

   ·Declaration of Maciej Szkodzinski (‘Szkodzinski 2’) dated 7 August 2018

   Evidence in Answer

   ·Declaration of Werner Kaden (the ‘Kaden declaration’) dated 17 October 2018

   Evidence in Reply

   ·Declaration of Maciej Szkodzinski (‘Szkodzinski 3’) dated 7 February 2019 with annexures MAS-1 to MAS-3

   Background

   Opponent’s evidence

6. The opponent’s evidence demonstrates that the opponent established its business in November 2013. According to Szkodzinski 1 the opponent has manufactured and sold a range of its mobility aids including foldable wheelchairs, electric wheelchairs, other wheelchairs and wheelchair accessories since at least December 2013.

7. On 26 November 2013 the opponent placed an order with Fiverr, to engage the services of a graphic designer to develop the opponent’s EZ LITE CUISER logo as shown below:

8. Under Fiverr’s terms and conditions, all intellectual property generated by their independent contractors (including copyright) is automatically transferred to Fiverr’s clients unless clearly stated on the seller’s “Gig” page/description. Szkodzinski 1 states that the copyright generated by the opponent’s order #FO118A750B34 was automatically transferred to the opponent[3].

   [3] Annexure MS-1 accompanying Szkodzinski 1

9. Szkodzinski 1 states that while the above trade mark was not registered the opponent has used its trade mark on its wheelchairs and mobility aid goods in Australia since at least December 2013 as well as other numerous countries and regions around the world including the United States of America, Canada, Mexico, Australia, New Zealand, the Middle East and Europe[4].

   [4] Confidential Annexures MS-5 to MS-7 accompanying Szkodzinski 1

   Applicant’s evidence

10. The applicant has provided one declaration in support of its application. Kaden states that the applicant completed all due diligence and researched the trade marks and company names in Australia prior to lodging its Trade Mark. Kaden claims that at that time the opponent did not have a registered business or trade mark. Mr Kaden avers that the opponent on had a trade mark covering the state of California in the USA. He states that the opponent did not have any trade mark in the name of EZ MOBI CRUISER.

11. Mr Kaden disputes the opponent’s claim that the opponent manufactures wheelchairs and states that both the applicant and the opponent purchase their wheelchairs from the same manufacturer’s in China being Golden Motor Technology Co. Ltd. Mr Kaden claims that the applicant was appointed distributors by Golden Motor Technology Co. Ltd and that the opponent only sought to register a trade mark after it became aware of the applicant obtaining the distributorship.

12. Mr Kaden explains that the opponent’s EZ Lite Cruiser and the applicant’s EZ Mobi Cruiser are the same wheelchairs imported from the exact same manufacturer in China.

    Discussion

    Section 58 – Applicant not the owner of the trade mark

13. Section 58 of the Act provides:

    58             Applicant not owner of trade mark

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

14. In order to make out a ground of opposition under section 58, the opponent must establish that:

    ·   the respective trade marks of the applicant and opponent are either identical or substantially identical,[5]

    ·   the respective goods and services on which the trade marks have used  are the ‘same kind of thing’ as the applicant’s goods and services ^[6]

    ·   the opponent has the earlier claim to ownership based on authorship[7] and use of its trade mark prior to both the filing of the application and any actual use of the Trade Mark by the applicant.[8]

    [5] Carnival Cruise Lines Inc. v Sitmar Cruises Ltd (1994) 120 ALR 495; 31 IPR 375

    [6] Re Hicks’ Trade Mark (1897) 22 VLR 636, 3 ALR 75

    [7] Authorship in that 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 [399]

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

15. It must firstly be determined if the opponent has used an identical or substantially identical mark to the Trade Mark. The test for substantial identity is that the trade marks are to 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.”[9]

    [9] The Shell Company of Australia Limited v Esso Standard Oil (Australia) Limited (1961) 109 CLR 407 per Windeyer J [414]

16. The respective trade marks to be compared are as follows:

The Trade Mark Opponent’s trade mark

1. A comparison of the opponent’s trade mark and the Trade Mark creates an impression of resemblance.[10] The trade marks of the parties are comprised of an identical stylized EZ device followed by two words of which the last word is CRUISER.

   [10] Carnival Cruise Lines Inc v Sitmar Cruises Ltd (1994) 120 ALR 495

2. The opponent’s representative, Mr Sinclair, referred me to the case of Pham Global Pty Ltd v Insight Clinical Imaging Pty Ltd[11](‘Pham Global’) where the Full Federal Court found the primary judge erred in failing to give proper consideration to the essential features and found the following two marks to be substantially identical:

   [11] [2017] FCAFC 83 (26 May 2017)

3. The concepts of ‘dominant cognitive cues’ and ‘essential elements’ of trade marks were considered in the recent decisions of the Full Federal Court in Accor Australia & New Zealand Hospitality Pty Ltd v Liv Pty Ltd[12] (‘Accor’) and Pham Global. The court stated in Pham Global, at paragraph 51:

   here is no doubt in our view that the Full Court in Accor in using the phrase ‘dominant cognitive cues’ was making analogical reference to the ‘essential features’ of the mark for the purposes of a side by side comparison in determining whether marks are substantially identical consistent with the observations of Windeyer J in The Shell Co of Australia Ltd v Esso Standard Oil (Australia) Ltd [1963] HCA 66; (1963) 109 CLR 407 at 414 as earlier recognised by the court in the reasons. The dominant cognitive cues are the essential features striking the eye in a side by side comparison so as to determine whether marks are substantially identical. ...

   and, at paragraph 52:

   The required exercise of side-by-side comparison is not carried out in a factual and legislative vacuum. The purpose of the exercise is to decide if two trade marks are substantially identical, where a trade mark is ‘a sign used, or intended to be used, to distinguish goods or services dealt with or provided in the course of trade by a person from goods or services so dealt with or provided by any other person’ (s 17). Given this context, it is unlikely that the essential elements of a mark or its dominant cognitive clues are to be found in mere descriptive elements, which are not apt to perform this distinguishing role in respect of the relevant goods or services. While this does not mean that differences, including descriptive differences, may be ignored, it does mean that the side-by-side comparison is to be carried out cognisant of the essential elements of the mark. 

   and, at paragraph 56:

   The essential elements are the words “Insight” and the device. The word is the same in both marks. The device appears to the left of the word in both marks. While the differences which her Honour noted do exist, the dominant cognitive clues in both marks is a device which is circular in shape evoking an eye to the left of the word “Insight”, in circumstances where the other words “clinical imaging” and “radiology” are descriptive of the services offered. The importance of the visual differences which her Honour noted, and which we accept exist, must be assessed having regard to these essential elements of the marks. Once this necessary exercise is undertaken, we consider that not only is there a total impression of resemblance between the marks, but also that the differences between the marks are slight having regard to their essential elements or the dominant cognitive clues which they present.”

   [12] [2017] FCAFC 56

4. In Pham Global, the court found the elements ‘insight’ and the devices in each trade mark to be the essential elements. In finding the two trade marks substantially identical the court discounted the words ‘Clinical Imaging’ and ‘radiology’ due to the descriptive nature of those words in connection with the relevant services.

5. In applying these tests for “substantial identity” between the respective trade marks reveals numerous similarities between them including the same “dominant cognitive cue” and “essential elements”, such that I am satisfied there is a total impression of resemblance between them.

6. More specifically:

   ·Both marks are comprised of three “words” which consist of five syllables in total

   ·Both marks share the same stylised “EZ Device” element.  Given its larger size and prominent position, the “EZ Device” element clearly represents both the “essential element” and “dominant cognitive cue” of both of the above marks

   ·Both marks adopt the same format whereby the stylised “EZ Device” is located on the left hand side, is larger than the other words contained within the marks with the final “Cruiser” located on the right hand side.

   ·Both marks incorporate the slightly unusual term “Cruiser” in the same format, with a capital “C” followed by the lower case letters “ruiser”.

   ·The only discernable difference between these marks are the terms “Lite” and “MOBI”, which have suggestive significance when used in relation to wheelchairs and mobility scooters by suggesting a specific quality that is generally desirable for such goods, namely, that they are “Lite” (i.e. lightweight) and “Mobi(le)”.

   ·In the context of such goods, consumers would likely assume goods bearing the respective trade mark shared a common origin and/or originated from the same source and simply represented a model variant.  As with the words ‘Clinical Imaging’ and ‘radiology’ in the Pham Global decision above, the presence of the words ‘lite’ and ‘mobi’ can be discounted to some extent due to the suggestive nature of those words in connection with the relevant goods

   ·The respective marks will have very similar pronunciation as they share the first two syllables and the last two syllables, differing only in the third/forth syllables which are contained in the middle of the respective trade marks.  On this basis, there is a high likelihood that consumers will assume the applicant’s goods sold under or by reference to Trade Mark are produced by the opponent, represent a model variant and originate from the same trade source when this is not the case.

   ·There is a total impression of resemblance between the Trade Mark and the opponent’s trade mark.

7. In regards to the second limb of section 58, it is clear that the opponent uses its trade mark on mobility aids including foldable wheelchairs, electric wheelchairs, other wheelchairs and wheelchair accessories. The Trade Mark seeks registration for:

   Electrically powered mobility scooters; Electrically powered wheelchairs; Foldable wheelchairs; Foldable electrically powered wheelchairs; Foldable mobility scooters; Power chairs and powered stand up chairs for use by and transporting the elderly, disabled, infirm, invalid, sick and/or handicapped individuals; Accessories, spare parts and replacement parts for electrically powered wheelchairs, manual wheelchairs mobility scooters, power chairs; scooters; Powered golf carts and buggies; spare parts for powered golf carts

8. I am satisfied that that opponent uses its trade mark for goods that are the ‘same kind of thing’ as the Trade Mark with the possible exception of Powered golf carts and buggies; spare parts for powered golf carts.

9. In considering the last limb of section 58 I turn to the evidence of use put forward by the parties in these proceedings. The applicant’s evidence does not show an use of the Trade Mark before the priority date. Hence the opponent must demonstrate use of its trade mark before the priority date of the Trade Mark being 16 August 2017 in order to succeed in establishing the section 58 ground of opposition.

   26.  To this end, I turn to the opponent’s evidence and in particular:

   ·Confidential Annexure MS-4 – the Opponent’s annual Australian sales revenues for wheelchairs and mobility aid goods prior to August 2017

   ·Confidential Annexure MS-5 – a document which provide details of the Opponent’s sale of electric wheelchairs in Australia between December 2013 and July 2018

   ·Annexure MS-6 – copies of the Opponent’s catalogues for wheelchairs and mobility aid goods sold in Australia prior to 16 August 2017

   ·Annexure MS-7 – copies of the Opponent’s invoices for wheelchairs and mobility aid goods sold in Australia prior to 16 August 2017

   ·Annexure MS-8 – printouts of the Opponent’s website through which it sold wheelchairs and mobility aid goods in Australia prior to 16 August 2017

   ·Annexure MS-9 – printouts of the Opponent’s Youtube Channel at which was established in November 2013 through which the Opponent’s range of wheelchairs and mobility aid goods were promoted in Australia prior to 16 August 2017

   ·Annexure MS-11 – dated extracts of the Opponent’s website through which it sold wheelchairs and mobility aid goods in Australia in 2014, 2015 and 2016.

10. In conclusion, I find that the opponent first used a substantially identical trade mark in Australia before the priority date of the Trade Mark in relation to goods that are the ‘same kind of thing’. Therefore, the opponent has established the section 58 ground of opposition in relation to the goods in class 12 apart from Powered golf carts and buggies; spare parts for powered golf carts. However, when it comes to these powered golf cart goods in class 12, it is for the applicant to establish a principled basis to distinguish between the goods that are the ‘same kind of thing’ and those that are not.[13] In the absence of the applicant providing me with a principled basis, I find the section 58 ground of opposition established for all of the goods in class 12.

    [13] Phone Directories Company Australia Pty Ltd v Telstra Corporation Limited (2014) 106 IPR 281, 231.

11. Taken all together, it stands that I find the ground of opposition established, therefore, I do not need to consider the other grounds which were argued at the hearing.

    Decision

12. Section 55 of the Act provides:

    55  Decision

    (1)  Unless subsection (3) applies to the proceedings, 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:          Forlimitationssee section 6.

13. I find that the opponent has met the onus upon it, in terms of the ground of opposition under section 58. Accordingly I refuse to register trade mark application no. 1866377.

    Costs

14. It is usual for costs to follow the event, and I see no reason to depart from that principle here. I award costs against the applicant in terms of Schedule 8 of the Regulations.

    Bianca Irgang

    Hearing Officer

    Trade Marks Hearings

    8 November 2019