National Australia Bank Limited v Mattel, Inc

[2016] ATMO 59

TRADE MARKS ACT 1995

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

Re:Oppositions by National Australia Bank Limited to registration of trade mark application nos. 1549919 NABI (9) and 1604759 NABI CLOUD (9, 42) - in the name of Mattel, Inc.

Delegate:	Heath Wilson
Representation:	Opponent: Bill Ladas of King Wood Mallesons. Applicant: Tim O’Callaghan of Piper Alderman.
Decision:	2016 ATMO 59 Opposition under section 52 of the Trade Marks Act 1995 – grounds of opposition under sections 44, 60 and 42(b) pursued – section 44 established – trade marks refused registration.

Background

1. Fuhu Holdings Inc, a company based in California, applied under the provisions of the Trade Marks Act 1995 (‘the Act’) to register two trade marks on 4 April 2013 and 7 February 2014 respectively. The relevant details of those two trade marks (collectively, ‘the Trade Marks’) at the time of filing were:

   Trade Mark No: 1549919

   Trade Mark: NABI

   Priority Date: 4 April 2013

   Specification of Goods:

   Class 9:

   Handheld mobile digital electronic devices comprising a full featured tablet computer, electronic book reader, digital audio and video player, electronic personal organizer, personal digital assistant, electronic calendar, and global positioning system (GPS) device, and capable of providing access to the Internet and sending, receiving, and storing messages and other data, with a special and unique focus on commerce by and related to children and their parents, including preloaded access to children's publications and sites and news and information feeds related to children's issues and unique filters related to children's content on the Internet; dedicated home computer screen for receipt and sending of messages and content related to children's issues; user manuals in electronically readable, machine readable or computer readable form for use with, and sold as a unit with, the aforementioned goods; computer software and firmware, namely, operating system programs, data synchronization programs, and application development tool programs for personal and handheld computers; pre-recorded computer programs for personal information management; database management software in the field of children's issues, optical character recognition software, telephony management software, electronic mail and messaging software, paging software, mobile telephone software to enable the transmission of data to mobile telephones; database synchronization software, computer programs for accessing, browsing and searching online databases; cameras, videophones; solid state memory apparatus, namely, computer memories; computer game and electronic game programs; parts, and fittings for, and electronic testing apparatus for testing the functionality of, all the aforementioned goods; parts, and fittings for, and electronic testing apparatus for testing the functionality of, mobile digital electronic devices comprising a full featured tablet computer, electronic book reader, digital audio and video player, electronic personal organizer, personal digital assistant, electronic calendar, and global positioning system (GPS) device, and capable of providing access to the Internet and sending, receiving, and storing messages and other data; electronic testing apparatus for testing the functionality of all the aforementioned goods; user manuals in electronically readable, machine readable or computer readable form for use with, and sold as a unit with, all the aforementioned goods; pre-recorded audio video discs featuring audio, audiovisual, musical, multimedia and video works in the field of children's issues; batteries; rechargeable electric batteries; battery chargers; chargers for electric batteries; headphones; stereo headphones; in-ear headphones; stereo audio speakers; audio speakers; audio speakers for home; digital music and/or video players; radios; video cameras; audio, video, and digital sound mixers; radio transmitters; parts and fittings for all the aforesaid goods; bags and cases adapted or shaped to contain tablet computer devices; bags and cases adapted or shaped to contain MP3 players, hand held computers, tablet computers, personal digital assistants, global positioning system (GPS) devices, electronic organizers and electronic notepads in Class 9
   The applicant has advised that the English translation of the Korean words NABI appearing in the trade mark is BUTTERFLY.*

   
   
   Endorsements:

Trade Mark No: 1604759

Trade Mark: NABI CLOUD

Priority Date: 7 February 2014

Specification of Goods and Services:

Class 9: Computers; computer software; computer application software for a handheld mobile digital electronic device comprising of a full featured tablet computer, electronic book reader, digital audio and video player, electronic personal organizer, personal digital assistant, electronic calendar, and global positioning system that contains a dedicated homepage for receipt and sending of messages and content related to children's issues, is preloaded with children's publications, websites that contain news and information feeds related to children's issues, and unique filters related to children's content on the Internet, and allows users to browse the Internet as well as send, receive, and store messages and other data, namely, software for use in uploading, downloading, storing, backing up, transmitting, receiving, accessing, retrieving, managing, organizing, synchronizing, displaying and sharing data, documents, images, audio, video, computer files, and multimedia content via global computer networks; computer software and firmware, namely, operating system programs and data synchronization programs for personal and handheld computers; database synchronization software; computer programs for accessing, browsing and searching online databases

Class 35: Advertising; business management; business administration; office functions; data management; data handling; data processing; data retrieval; data analysis and data capture services

Class 42: Design and development of computer hardware and software; computerised data storage services ; electronic storage of data, text, images, audio, and video; storage services for archiving electronic data; providing information and consultation services concerning the electronic storage of data, text, images, audio and video

1. During examination, the Trade Marks were accepted for possible registration and advertisement of those acceptances appeared in the Australian Official Journal of Trade Marks on 25 July 2013 and 26 June 2014 respectively.

2. On 18 September 2013, the Opponent had filed a Notice of Intention to Oppose Trade Mark no. 1549919. The Statement of Grounds and Particulars that followed set out sections 44 (citing trade mark nos. 1053282, 1161692, 1099421 and 1562338), 58, 60, 42 and 43 of the Act as the grounds of opposition. A Notice of Intention to Defend was subsequently filed.

3. On 19 August 2014, a Notice of Intention to Oppose Trade Mark no. 1604759 was filed by National Australia Bank Limited (‘the Opponent’) followed by a Statement of Grounds and Particulars setting out grounds of opposition under sections 44 (citing trade mark nos. 1053282, 1161692, 1099421, 1562338 and 1642867), 58, 60, 42, 59 and 62A of the Act. Once a Notice of Intention to Defend was filed by the Applicant on 17 October 2014 the evidence stages of the opposition commenced.

Evidence

1. The evidence filed by the parties for both oppositions consisted of:

• Statutory declaration of Susan Mary Brailsford (Manager - Brand Strategy for the Opponent) made 3 February 2015 with exhibits SMB-1 to SMB-54.

• Statutory declaration of Timothy John O’Callaghan (Solicitor for the Applicant) made 26 May 2015 with exhibits TOC-1 to TOC-9.

• Statutory declaration of Susan Brailsford made 19 August 2015 with exhibits SMB-1 to SMB-4.

• Statutory declaration of Bill Ladas (Special Counsel for the Opponent) made 24 August 2015 with exhibits BL-1 to BL-7.

1. Both parties requested to be heard on the oppositions to the Trade Marks and the matters were set down to be heard together in Canberra on 6 June 2016. I was allocated to hear and decide these oppositions as a delegate of the Registrar of Trade Marks and, in that capacity, I set out the schedule for the provision of a written summary of arguments.

2. On 1 June 2016, the Applicant filed a statutory declaration of Michael Moore made 31 May 2016. The main purpose of this additional material was to inform me that ownership of the Trade Marks had been assigned to Mattel, Inc. (beforehand and hereafter, ‘the Applicant’) and that the application to record that assignment had been recently filed with this office. The assignment has now been recorded on the Register.

3. Prior to the hearing, the Applicant’s attorney also applied to amend the specification of goods and services for both of the Trade Marks, stating in an email that the Applicant:

   [W]as willing to reduce the scope of the applications if the Hearing Officer (notwithstanding our submissions to the contrary) considered the relevant trade marks to be deceptively similar. We now have instructions to amend the application in any event as follows…

   …

   These amendments are made, not because we consider that the trade marks are deceptively similar, but because Mattel Inc. does not consider the deleted items to be necessary to the application.

4. The specification for Trade Mark no. 1549919 was subsequently amended, deleting a number of goods in class 9, and adding a restriction (which can be seen below in bold). The specification now reads:

   Class 9: Handheld mobile digital electronic devices comprising a full featured tablet computer, electronic book reader, digital audio and video player, electronic personal organizer, personal digital assistant, electronic calendar, and global positioning system (GPS) device, and capable of providing access to the Internet and sending, receiving, and storing messages and other data, with a special and unique focus on and related to children and their parents, including preloaded access to children's publications and sites and news and information feeds related to children's issues and unique filters related to children's content on the Internet; dedicated home computer screen for receipt and sending of messages and content related to children's issues; user manuals in electronically readable, machine readable or computer readable form for use with, and sold as a unit with, the aforementioned goods; database management software in the field of children's issues, optical character recognition software, telephony management software, electronic mail and messaging software, paging software, mobile telephone software to enable the transmission of data to mobile telephones; database synchronization software, cameras, videophones; computer game and electronic game programs; parts, and fittings for, and electronic testing apparatus for testing the functionality of, all the aforementioned goods; pre-recorded audio video discs featuring audio, audiovisual, musical, multimedia and video works in the field of children's issues; batteries; rechargeable electric batteries; battery chargers; chargers for electric batteries; headphones; stereo headphones; in-ear headphones; stereo audio speakers; audio speakers; audio speakers for home; digital music and/or video players; radios; video cameras; audio, video, and digital sound mixers; radio transmitters; parts and fittings for all the aforesaid goods; bags and cases adapted or shaped to contain tablet computer devices; bags and cases adapted or shaped to contain MP3 players, hand held computers, tablet computers, personal digital assistants, global positioning system (GPS) devices, electronic organizers and electronic notepads in Class 9; none of the abovementioned being in relation to insurance services, commercial banking or commercial financial services

5. The amended specification for Trade Mark no. 1604759 also deleted certain goods and services, removed class 35 in its entirety and included an identical restriction to classes 9 and 42 (in bold). The entire specification for that Trade Mark now reads:

   Class 9: Computers; computer software; computer application software for a handheld mobile digital electronic device comprising of a full featured tablet computer, electronic book reader, digital audio and video player, electronic personal organizer, personal digital assistant, electronic calendar, and global positioning system that contains a dedicated homepage for receipt and sending of messages and content related to children's issues, is preloaded with children's publications, websites that contain news and information feeds related to children's issues, and unique filters related to children's content on the Internet, and allows users to browse the Internet as well as send, receive, and store messages and other data, namely, software for use in uploading, downloading, storing, backing up, transmitting, receiving, accessing, retrieving, managing, organizing, synchronizing, displaying and sharing data, documents, images, audio, video, computer files, and multimedia content via global computer networks; computer software and firmware, namely, operating system programs and data synchronization programs for personal and handheld computers; database synchronization software; computer programs for accessing, browsing and searching online databases; none of the abovementioned being in relation to insurance services, commercial banking or commercial financial services

   
   Class 42:

   Design and development of computer hardware and software; computerised data storage services; electronic storage of data, text, images, audio, and video; storage services for archiving electronic data; providing information and consultation services concerning the electronic storage of data, text, images, audio and video; none of the abovementioned being in relation to insurance services, commercial banking or commercial financial services

6. At the hearing, Bill Ladas of King Wood Mallesons appeared on behalf of the Opponent and Tim O’Callaghan of Piper Alderman appeared for the Applicant. I heard further submissions from Mr O’Callaghan regarding why the abovementioned declaration of Michael Moore should be considered, despite not being provided during the relevant statutory period for filing evidence. I noted at the time of the hearing that the application for assignment had been filed and the bulk of the Michael Moore declaration was unnecessary in that regard. Ultimately, I was not convinced by the submissions made by Mr O’Callaghan and, as I did not intend to consider the declaration in making my decision, it was unnecessary to consider the Opponent’s submissions on the issue. 

7. The Opponent initially pursued the grounds of opposition under sections 44, 60, 43, 42(b) and 62A at the hearing. However, in an email following the hearing (which contained additional submissions prompting further debate amongst the parties) Mr Ladas withdrew the Opponent’s reliance on the grounds of opposition under sections 43 and 62A. It is therefore unnecessary for me to consider those grounds and I will instead address (as necessary) the grounds under sections 44, 60 and 42(b) of the Act.

Onus

1. The oppositions before me will be decided on the basis of the Opponent establishing at least one ground of opposition for each of the Trade Marks on the civil standard of the balance of probabilities.[1] I turn to the ground of opposition under section 44 first.

Discussion

[1] Telstra Corporation Limited v Phone Directories Company Pty Ltd [2015] FCAFC 156; [133] affirming (amongst others) the approach of Gyles J in Pfizer Products Inc. v Karam [2006] FCA 1663; [26].

Section 44

1. Section 44 of the Act relevantly provides:

44Identical 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.

(2)Subject to subsections (3) and (4), an application for the registration of a trade mark (applicant’s trade mark) in respect of services (applicant’s services) must be rejected if:

(a)it is substantially identical with, or deceptively similar to:

(i)a trade mark registered by another person in respect of similar services or closely related goods; or

(ii)a trade mark whose registration in respect of similar services or closely related goods 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 services is not earlier than the priority date for the registration of the other trade mark in respect of the similar services or closely related goods.

(3)If the Registrar in either case is satisfied:

(a)that there has been honest concurrent use of the 2 trade marks; or

(b)that, because of other circumstances, it is proper to do so;

the Registrar may accept the application for the registration of the applicant’s trade mark subject to any conditions or limitations that the Registrar thinks fit to impose. If the applicant’s trade mark has been used only in a particular area, the limitations may include that the use of the trade mark is to be restricted to that particular area.

(4)If the Registrar in either case is satisfied that the applicant, or the applicant and the predecessor in title of the applicant, have continuously used the applicant’s trade mark for a period:

(a)beginning before the priority date for the registration of the other trade mark in respect of:

(i)the similar goods or closely related services; or

(ii)the similar services or closely related goods; and

(b)ending on the priority date for the registration of the applicant’s trade mark;

the Registrar may not reject the application because of the existence of the other trade mark.

1. In the Statements of Grounds and Particulars for the Trade Marks, the Opponent relied upon its own trade mark registrations, the relevant details of which are extracted below:

16.     TM No.	17.     Trade Mark	18.     Priority Date	19.     Classes of Goods and Services
20.     1053282	21.     NAB	22.     2.5.05	23.     Class 9: Computer programs used in the provision of banking, financial, insurance, business advisory and/or business consultancy services; computer equipment used in the provision of banking, financial, insurance, business advisory and/or business consultancy services; pre-recorded computer software containing information relating to business advisory, business consultancy, banking, financial and/or insurance services; debit and credit cards, encoded and magnetic cards and parts for encoded and magnetic cards; smart cards; integrated circuit cards; magnetic strips and memory chips; card readers; electronic funds and point of sale terminals; apparatus and systems including computer software, computer hardware, modems and disks 24.     Classes 16, 35, 36, 38, 41 and 42
25.     1099421	26.	27.     16.2.06	28.     Classes 9, 16, 35, 36, 38, 41, 42
29.     1161692	30.     NAB GROUP	31.     15.2.07	32.     Classes 9, 16, 35, 36, 38, 41, 42
33.     1562338	34.	35.     12.6.13	36.     Classes 9, 35, 36
37.     1642867	38.	39.     25.8.14	40.     Classes 9, 36

1. The Opponent’s trade mark no. 1642867 has a later priority date to the Trade Marks and cannot be relied upon for the purposes of this ground of opposition. In addition, trade mark no. 1562338 has a later priority date to the Trade Mark no. 1549919 and I note that it was only relied upon in respect of the opposition to the Trade Mark no. 1604759.

2. The abovementioned latter trade marks of the Opponent (no. 1562338 and 1642867) are registered in spite of one (or both) of the earlier filed Trade Marks. That is, neither of those trade marks of the Opponent (‘nab’ or ‘nab and star device’) had objections raised during examination based on the existence of either of the Trade Marks.

3. Having made those observations, I will now turn to the matter before me concerning the Opponent’s trade marks 1053282 (‘NAB’), 1099421 (‘NAB’ and star device) and 1161692 (‘NAB GROUP’) in comparison with the Trade Marks. Before I do, I will address whether the goods and services in the recently amended specifications of the Trade Marks are similar[2] to the goods and services of trade marks nos. 1053282 and 1099421.

   [2] See section 14(1)(a) and (b) of the Act.

‘Similar Goods and Services’

1. Mr Ladas argued that despite the amendments to the Applicant’s specifications there remain conflicting goods and services within the specifications. In relation to the goods, he highlighted the presence of ‘computer hardware’ and ‘computer software’ in the Opponent’s specification and argued that there was a conflict regardless of the refinement to the Applicant’s specification of goods.

2. The argument as to the similarity of the respective goods hinged upon the interpretation of the wording in the Opponent’s class 9 specifications: ‘apparatus and systems including computer software, computer hardware, modems and disks’. Mr O’Callaghan relied upon a conjunctive rather than the disjunctive interpretation (with reference to the case below) and submitted that to do otherwise would mean the Opponent effectively enjoyed protection for all apparatus and systems in class 9 which, he submitted, was akin to an ‘all goods’ claim.

3. In the case of Hills Industries Limited v Bitek Pty Ltd (‘Digitek’) Lander J found:

   The specification of the goods in the DGTEC trade mark is, as mentioned in [8] above, “digital and electronic products including televisions, video players, DVD players, CD players, decoders and cameras”.

   Hills argued that the specification “digital and electronic products” should be read disjunctively and the remaining specification read by reference to the digital and electronic products which are included in the broad description.

   Usually the word “and” is read conjunctively to the words to which it applies whilst the word “or” is usually read disjunctively. However, it is not always the case and sometimes the word “and” is used disjunctively or, to put it another way, it has a dispersive effect. However, in my opinion these words are to be read conjunctively. If they were to be read disjunctively the class of goods to which they would refer would be extremely wide. I think also the fact that the words are followed by the word “includes” and then a description of goods means also that the word “and” is conjunctive.

   The next question is whether the words which follow “digital and electronic products” are meant to define precisely the extent of the digital and electronic products or whether they are examples of digital and electronic products and the words are not meant to be exhaustive of the types of digital and electronic products which are described in the statement of goods.

   The delegate from whose decision the appeal proceeding was brought said:

   Registration 90-1020 is for a broad range of goods, namely “digital and electronic products”. Although it describes “televisions, video players, DVD players, CD players, decoders and cameras” as being included in the category of “digital and electronic products” its registration is not limited to those specific goods.

   I agree with the delegate. In my opinion, the words which follow the words “digital and electronic products” are not exhaustive of the goods to which the mark refers but they provide examples of the type of digital and electronic products for which the mark is registered. In ordinary construction, the use of the word “means” in the definition is used where it is intended to make the words which follow exhaustive of the item defined, whilst the use of the word “includes” is used if it is intended that the words following would enlarge the ordinary meaning of the word being defined.

   In this case the opening words “digital and electronic” are very wide in their application. The reference to the goods which follow is a reference to the type of goods which are the subject of the mark. The goods particularly described in the description are the types of digital and electronic goods to which the mark applies. They cannot be said to be necessarily all of the goods to which the mark applies because of the use of the word “includes”. Although in these proceedings it is not necessary to consider the full extent of the goods which are being described, they will be goods of a like kind to the digital and electronic goods defined after the word “includes”.[3]

   [3] Hills Industries Limited v Bitek Pty Ltd [2011] FCA 94 (Lander J) [259-265] (my emphases in bold).

4. In Digitek, as here, the items listed after the word “including” are non-exhaustive and, in this case, the items listed are specific examples of apparatus and systems. On the conjunctive/disjunctive question,  even if I were to view the expression ‘apparatus and systems’ conjunctively rather than disjunctively I would find that the specification is still sufficiently broad for the similarity between the respective goods in the specifications to remain. I find that the claim of ‘apparatus and systems’ in class 9 are nevertheless similar to ‘handheld mobile electronic devices’ as well as ‘computers’. In other words, the comments made in Digitek do not, in my opinion, assist the Applicant’s position.

5. The new restriction to the end of the class 9 and 42 specifications of the Trade Marks, namely, ‘none of the abovementioned being in relation to insurance services, commercial banking or commercial financial services’ does not avoid this conflict with the broader goods of the Opponent in class 9 since the Opponent’s conflicting goods are not limited in respect of those services. Nor does the restriction remove the conflict with other goods ‘used in the provision of banking, financial, insurance, business advisory and/or business consultancy services’. The Opponent’s specification notionally covers, for example, financial and banking services that could be described as non-commercial.

6. The specification for Trade Mark no. 1604759 has a broader claim than no. 1549919 as it includes ‘computers; computer software’, albeit with the restriction at the end of the specification I referred to earlier. I have already found that particular restriction is not effective in removing the conflict between the goods. As a consequence, I also find that the goods in the Applicant’s specification and the class 9 specifications of trade marks nos. 1053282 and 1099421 are similar.

7. For completeness, I find that the amended class 42 services (again, despite the restriction) of Trade Mark no. 1604759 are of the same description as the services of ‘design and development of computer hardware and software; advisory services to business relating to the use of computer hardware and software; consultancy services relating to the use of computer hardware and software’ in the class 42 specification of Opponent’s trade mark no. 1099421.

8. Having made those findings, the remaining consideration is whether the Trade Marks are substantially identical with, or deceptively similar to any of the Opponent’s trade marks.

‘Deceptively Similar’

1. Mr Ladas focused his arguments on the Trade Marks being deceptively similar to the Opponent’s trade marks. For the avoidance of doubt, I find that on a side-by-side comparison that none of the Trade Marks are substantially identical to the Opponent’s trade marks. When placed together, the differences between the trade marks are noticeable and there is not a ‘total impression of resemblance’.[4]

   [4] Shell Co (Aust) Ltd v Esso Standard Oil (Aust) Ltd (1961) 109 CLR 407; [414] (Windeyer J).

2. The test for determining deceptive similarity is a different one and has been set out in Australian Woollen Mills Ltd v F. S. Walton and Company Ltd by Dixon and McTiernan JJ:

   [T]he marks ought not … 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 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. [5]

   [5] Australian Woollen Mills Ltd v F. S. Walton and Company Ltd (1937) 58 CLR 641; [658].

1. In making the determination, I must estimate the impression the Trade Marks would have on the mind of consumers of the relevant goods and services. When faced with one of the Opponent’s trade marks would the impression retained by the relevant consumer be likely to result in deception or confusion in the Australian marketplace?

2. In most instances, consumers will more naturally refer to the word elements in composite trade marks rather than to any device element[6], such as a star. Furthermore, words within trade marks which have less capacity to distinguish in relation to the goods and services are likely to have less attention paid to them by consumers.[7] Here, the word ‘CLOUD’ in the Trade Mark no. 1604759 when used in the context of goods such as ‘computer software and hardware’ and also in relation to ‘storage services for electronic data’ is a clear reference to “…storage made available through the internet or other network”.[8] Similarly, the word ‘GROUP’ in the Opponent’s trade mark no. 1161692 will be seen as a non-distinctive reference to a group of companies. While it is true that trade marks under comparison should be considered as a whole[9], less attention can be attributed to the device aspects of the Opponent’s trade mark no. 1099421 and also to the non-distinctive words such as ‘CLOUD’ appearing in Trade Mark no. 1604759 or ‘GROUP’ appearing in the Opponent’s trade mark no. 1161692.

   [6] See American Trading & Shipping Co Ltd’s Appn (1936) 6 AOJP 78; Sizzler Restaurants International Inc. v Sabra International Pty Ltd (1990) 20 IPR 331.

   [7] See, for example, Coca Cola Co of Canada v Pepsi Cola Co of Canada (1940) 58 RPC 127.

   [8] Macquarie Dictionary Online © Macmillan Publishers Group Australia 2016.

   [9] Clark v Sharp (1898) 15 RPC 141; [146].

3. Accordingly, I will primarily consider whether the trade marks ‘NAB’ and ‘NABI’ are deceptively similar in that one trade mark “so nearly resembles that other trade mark that it is likely to deceive or cause confusion”.[10]

   [10] Section 10 of the Act.

4. Visually, the addition of the letter “I” at the suffix of the Trade Marks is the main (and in one instance, the only) difference between the trade marks. As I have said, this difference is evident on a side-by-side comparison, but I am to determine the likelihood of confusion if the consumer did not have the two trade marks placed next to each other. As Lathan CJ said in Jafferjee v Scarlett[11]:

   The court naturally and readily appreciates the distinctions between the marks which are seen side by side. When, however, the court has to determine the probability of deception arising from simultaneous user of the same marks in the same market, it is very important to remember that the purchasers in that market will not ordinarily have an opportunity of comparing the two marks side by side. They will compare the actual mark which they see upon goods which are offered to them with the memory of the other mark, which they will retain in a more or less distinct form. They therefore will not be in the same position as that in which the court finds itself when it is endeavouring to determine whether or not they are likely to be deceived.

   [11] [1937] HCA 36; (1937) 57 CLR 115

5. The visual difference is minimal and the entirety of the trade mark ‘NAB’ is encompassed within the word ‘NABI’. In addition, it represents the majority of the Trade Marks and their entire prefix. There is a real danger that a consumer imperfectly recalling either trade mark may overlook the presence (or absence) of the letter ‘I’ at the suffix. That, however, is not the end of the matter.

6. In terms of potential aural differences between ‘NAB’ and ‘NABI’, both parties spent some time on the issue of the pronunciation of the respective trade marks at the hearing. Mr Ladas argued that the Opponent’s trade marks are commonly pronounced as one syllable, ‘NAB’ to rhyme with ‘lab’, rather than as three distinct letters (although the Opponent conceded the latter pronunciation is not unheard of). The Opponent’s further submission was that the Trade Marks would be pronounced as ‘NABI’ to rhyme with ‘yabbie’- in other words, with identical sounding prefixes. I find that Mr O’Callaghan’s opposing view of the pronunciation of the Trade Marks is the more likely, that is, with the long ‘A’ (i.e. ‘Nar-bee’) but I cannot discount the reasonable possibility of the Opponent’s interpretation. It has been said in previous authority that ‘Australians are notoriously careless in their speech’[12] and as Luxmoore LJ said in Rysta Ltd’s Application:

   The answer to the question whether the sound of one word resembles too nearly the sound of another so as to bring the former within the limits of s 12 of the Trade Marks Act, 1938, must nearly always depend on first impression, for obviously a person who is familiar with both words will neither be deceived nor confused. It is the person who only knows the one word, and has perhaps an imperfect recollection of it, who is likely to be deceived or confused. Little assistance, therefore, is to be obtained from a meticulous comparison of the two words, letter by letter and syllable by syllable, pronounced with the clarity to be expected from a teacher of elocution. The court must be careful to make allowance for imperfect recollection and the effect of careless pronunciation and speech on the part not only of the person seeking to buy under the trade description, but also of the shop assistant ministering to that person’s wants.[13]

   [12] Hills Industries Limited v Bitek Pty Ltd [2011] FCA 94 [77] (Lander J) quoting with approval the words of the delegate in DGTEC Pty Ltd v Bitek Pty Ltd (18 January 2008) [Unreported].

   [13] (1943) 60 RPC 87; [108] [My emphasis in bold].

7. If the trade marks were pronounced in a similar fashion, it has been said that the first syllable is more important than the second. This issue was highlighted in the case ofLondon Lubricants (1920) Ltd’s Appn:

   [T]he tendency of persons using the English language to slur the termination of words also has the effect necessarily that the beginning of words is accentuated in comparison, and in my judgment, the first syllable of a word is, as a rule, far the most important for the purpose of distinction.[14]

   [14] (1925) 42 RPC 264; [279]

8. In terms of the meaning of the Opponent’s trade marks, Mr O’Callaghan referred to the ordinary definition of ‘NAB’, namely to ‘grab’ something. The Trade Marks, on the other hand, have no meaning in English but the endorsement appearing on the Register for Trade Mark no. 1549919 indicates that ‘NABI’ is the English translation of a Korean word meaning ‘butterfly’. I note that this meaning would not be evident to the majority of Australian consumers of electronic devices and, as Mr Ladas correctly points out, consumers in the marketplace do not encounter the Trade Marks with the endorsements at hand. While I accept this difference in meaning, I am not convinced that it would be immediately evident to consumers, nor am I convinced that it sufficiently mitigates the likelihood of visual and aural confusion in this matter.

9. Mr Ladas submitted that consumers would view the “I” in the suffix of the Trade Marks as meaning ‘internet’ but there was no indication that traders are in the practice of using the letter in this fashion, nor evidence of consumers expectations in that regard. I am not convinced by that submission.

10. Justice French in Registrar of Trade Marks v Woolworths Ltd[15] observed in relation to the expression ‘likely to deceive or cause confusion’:

    The use of the word “likely” in this context does not import a requirement that it be more probable than not that the mark has that effect. The probability of deception or confusion must be finite and non-trivial. There must be a “real tangible danger of its occurring” …

    [15] (1999) 45 IPR 411; [426].

11. Considering the doctrine of imperfect recollection I find that there is a danger of confusion arising from consumers of these goods overlooking the presence of the letter ‘I’ in the suffix of the Trade Marks. Taking the trade marks as a whole, I am of the view that they look similar and that the prefixes are likely to be pronounced in a similar fashion. I am therefore satisfied from the overall impression that the there is ‘a real, tangible danger’[16] of deception or confusion likely to arise from the use of the Trade Marks.

    [16] Southern Cross Refrigerating Co v Toowoomba Foundry Pty Ltd (1954) 91 CLR 592 [594-595].

12. I was not provided with evidence of honest concurrent use or prior continuous use of the Trade Marks such that the exceptions under sections 44(3) or 44(4) could be applied in this matter. Nor did Mr O’Callaghan press this point. In any event, the Applicant’s evidence shows that use of the Trade Marks before the priority date is targeted at overseas rather than Australian customers and would not be sufficient (by itself) to establish honest concurrent use in Australia. As a result, I find that the ground of opposition under section 44 of the Act has been established in relation to the Trade Marks.

13. Mr O’Callaghan requested that should I find the section 44 ground of opposition established then the Applicant be given the opportunity to amend the specification of goods and/or services to remove any conflicts. I do not believe that an amendment to the specification of goods in class 9 and services in class 42 would remove the conflicts I have identified and the resultant likelihood of deception or confusion. Also, I have not been provided with a principled basis upon which I could approach such a task.[17]   

    [17] See Phone Directories Company Australia Pty Ltd v Telstra Corporation Limited [2014] FCA 373 [231] and, on appeal, Telstra Corporation Limited v Phone Directories Company Pty Ltd [2015] FCAFC 156 [13].

14. As a ground of opposition has been established, I need not consider the merits of the remaining grounds argued by the Opponent. Those grounds (and others under the Act) will, in any event, be available to the Opponent in the event this decision is appealed to the court.

Decision

1. Section 55(1) of the Act provides:

55Decision

(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:For limitations see section 6.

1. The Opponent established a ground of opposition in relation to the Trade Marks. I refuse to register trade mark applications nos. 1549919 and 1604759.

Costs

1. Both parties have sought an award of costs. As it is the unsuccessful party, I award costs for the opposition to Trade Mark no. 1549919 against the Applicant in accordance with the applicable amounts set out in Schedule 8 of the Trade Marks Regulations 1995. For Trade Mark no. 1604759, I direct that costs be awarded against the Applicant in accordance with the practice set out in Hume Industries (Malaysia) Berhad v James Hardie & Coy Pty Ltd.[18]

   [18] [2001] ATMO 78; (2001) 53 IPR 591.

Heath Wilson
Hearing Officer
Oppositions and Hearings
4 August 2016