NEC Corporation v Audioxtra International Pty Limited

[2003] ATMO 36

TRADE MARKS ACT 1995

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

Re:Opposition by NEC Corporation to registration of trade mark application 814270(9) - NECVOX - filed in the name of Audioxtra International Pty Limited.

Date of Decision:	17 June 2003
Delegate:	Mary Skivington
Representation:	Opponent: Ms Shelley Einfeld of Spruson & Ferguson, Patent and Trade Mark Attorneys. Applicant: Mr Wayne Willis of F B Rice & Co, Patent and Trade Mark Attorneys.
Decision:	Section 52 opposition - grounds under the provisions of sections 42, 43, 44 and 60 - none established. Application may proceed to registration. Opponent to pay the applicant's costs.

Background

1. Audioxtra International Pty Limited, ('the applicant') of Prospect, New South Wales, filed trade mark application number 814270 on 19 November 1998, to register the trade mark necvox, for the following goods in class 9:

   Automobile audio-visual entertainment equipment.

2. Numerous citations were raised in the examiner's first report, however, these were all withdrawn following submissions from the applicant and the trade mark application was accepted for registration.  Acceptance was advertised in the Australian Official Journal of Trade Marks on 9 November 2000. NEC Corporation, ('the opponent') of Tokyo, Japan, filed notice of opposition on 7 February 2001, citing grounds of opposition under the provisions of sections 41, 42, 43, 44, 58, 59 and 60 of the Trade Marks Act 1995, ('the Act').  The evidentiary phases were completed by 12 September 2002 and on 14 October 2002 the opponent requested that the matter be set down for a hearing. As a delegate of the Registrar of Trade Marks, I heard the matter in Sydney, on 11 March 2003.

3. Ms Shelley Einfeld, of Spruson & Ferguson, Patent and Trade Mark Attorneys, represented the opponent.  Mr Wayne Willis of F B Rice & Co, Patent and Trade Mark Attorneys, appeared on behalf of the applicant.

4. At the hearing a number of trade mark registrations were cited by the opponent, in support of the grounds of opposition under sections 44 and 60 of the Act. Details of these trade marks, all of which have priority dates that are earlier than that of the subject application, are set out below.

5. Trade Mark No:          177937

   Priority Date:            10 January 1963  
   Trade Mark:              NEC
   Goods:  Telegraph and phototelegraph equipment and parts thereof; telephone equipment and parts thereof; radio and television equipment and parts thereof; computing, measuring and data processing equipment and parts thereof; echo sounders, tape recorders, radar equipment and parts thereof; optical apparatus employing infra-red radiations and parts thereof; transmitting, receiving and repeater tubes, cathode ray oscillograph tubes, microwave tubes, silicon and germanium diodes, transistors, thermistors, metallic rectifiers; and home electrical appliances included in this class (class 9).

6. Trade Mark No:         326407           

   Priority Date:             1 January 1979  
   Trade Mark:               NEC
   Services:                   Installation, maintenance and repair of communications and electronic equipment (class 37).

7. Trade Mark No:         326408           

   Priority Date:             1 February 1979  
   Trade Mark:               NEC
   Services:                   Technical consultation, technical supervision and inspection (class 42).

8. Trade Mark No:         454938           

   Priority Date:             6 November 1986      
   Trade Mark:               NEC
   Goods:                     All goods in this class (class 16)

9. Trade Mark No:         460413           

   Priority Date:             23 February 1987       
   Trade Mark:               NEC
   Services:                   Computer programming and all other computer services in
   this class (class 42).

10. Trade Mark No:         648027

    Priority Date:             8 December 1994  

    Trade Mark:                NEC IMAGE RISCSTATION
    Goods:  Electronic computers and integrated circuits in this class (class 9).

11. Trade Mark No:         648028           

    Priority Date:             8 December 1994       

    Trade Mark:                NEC EXPRESS RISCSERVER
    Goods:  Electronic computers and integrated circuits in this class (class 9).

12. Trade Mark No:         674029  

    Priority Date:              29 September 1995     
    Trade Mark:                NEC
    Goods:  Digital central office switching systems, digital PBXs, packet switching systems, fiber-optic transmission systems, digital transmission systems, submarine cable systems, CATV systems, teleconferencing systems, microwave communications systems, satellite communications systems, (satellite-mounted and ground support communications equipment), laser communications equipment, television and radio broadcast equipment, video and studio equipment, aircraft and space electronic equipment, satellites, rocket  guidance and control equipment, radio navigation and radar  equipment, defense electronic systems, mobile and portable  radio equipment, pagers, facsimile equipment, key telephone  systems, cordless telephone sets, telephone sets; mainframe  computers, small business computers, personal computers,  supercomputers, minicomputers, workstations being desk top computers optimized to run computer-aided design programs for engineering applications, software products, peripheral and terminal equipment, word processors, monitors, data  modems, optical disk players, CAD/CAM and computer aided engineering systems, automated fingerprint identification systems, telemetry and remote control systems,  communications network control systems, educational electronic equipment, postal automation systems, industrial robots, computerized numerical control equipment, underwater ultrasonic application equipment, semiconductor manufacturing equipment and vacuum equipment, measuring and testing systems; memories, microcomputers, gate arrays, standard cells, linear ICs, charge-coupled devices, transistors, gallium arsenide field-effect transistors, diodes, optical semiconductor devices, hybrid ICs, colour display tubes, fluorescent indicator panels, electroluminescent lighting panels, colour LCDs, PWBs, electronic tuners, laser application equipment, capacitors, relays, hermetic seals, electron tubes, gas lasers, variable  resistors keyboards, electrical connectors; colour  television receivers, projection televisions, direct broadcasting satellite receivers, extended definition  television and radio receivers, VCRs, compact disk players, surround amplifiers-decoders, video game units (class 9).

    Services: Services for the installation, construction, assembly and repair of communication apparatus and instruments and of electronic apparatus (class 37).

    Computer programming, computer rental, technical supervision and inspection of electronic apparatus and equipment (class 42).

13. Trade Mark No:         674031

    Priority Date:              29 September 1995
    Trade Mark:                NEC
    Goods:  Office requisites including printing ribbons (class 16).

14. Trade Mark No:         724362

    Priority Date:              18 December1996
    Trade Mark:                NEC EXPRESS
    Goods:  Computer hardware and software (class9).

15. Trade Mark No:          735957

    Priority Date:              3 June 1997
    Trade Mark:                NEC EXPRESSBUILDER
    Goods:  Computer software; software for hardware set up (class 9)

16. Trade Mark No:          750871

    Priority Date:              12 December1997
    Trade Mark:                NEC ULTRACARE
    Services:  Computer maintenance and repair services (class 37)

    The evidence

17. The respective parties filed and served their evidence which consists of the following:

    Evidence in support

Declarant	Referred to as -	Date made	Exhibits
Alison O'Keefe	O'Keefe	11October 2001	AOK-1 to AOK-3
Brian Munday	Munday	9 August 2001	BMM-1 to BMM-5

Evidence in answer

Declarant	Referred to as -	Date made	Exhibits
Michael John Kilpatrick	Kilpatrick	17 April 2002	None
Tony Pischedda	Pischedda	17 April 2002	None

Evidence  in reply

Declarant	Referred to as -	Date made	Exhibits
Michael Rumore	Rumore	10 September 2002	MR-1 to MR-3

Opponent's evidence in support
O'Keefe

1. Ms O'Keefe is the Corporate Marketing Manager of NEC Australia Pty Ltd, a wholly owned subsidiary of the opponent.  She declares that the company was established in Australia in 1969 and began using the NEC trade marks from that date.  She reports that the NEC trade mark has been used on a wide range of goods and was first used on mobile phones for cars, installed via a car kit with microphone or plug-in kit which plugs into the cigarette lighter, car phones and speakers in about 1996.  These goods, she declares, are sold through major department stores as well as national specialist telecommunications dealers. Exhibits include brochures for home entertainment products, computers and mobile telephones that can be purchased with hands-free adaptor kits that allow for in-vehicle use.  Installation of these items must, according to the brochures, be carried out by NEC authorised dealers or service centres

   Ms O'Keefe provided approximate estimates of sales and advertising figures for the years 1995 to 2000.  I regard these as being substantial.

   Munday

2. Mr Munday, then a principal of Spruson & Ferguson, Patent and Trade Mark Attorneys, reports that his firm's Searching Department conducted a search of IP Australia's trade marks database, for trade marks in class 9, consisting of or beginning with the letters NEC and for trade marks consisting of or including the word VOX.  He declares that the search revealed that there are only two trade marks in class 9 beginning with the prefix NEC, other than the opponent's trade marks, one of these being a registration for the word NECA and the other being the applicant's trade mark necvox.  Mr Munday further declares that the search also revealed some twenty-six registrations for trade marks containing the word VOX for audio visual equipment and similar goods.

   Applicant's evidence in answer
   Kilpatrick

3. Mr Kilpatrick is a self employed consultant in the communications industry. He declares that he has more than thirty years experience at management level or in research and development positions, within multinational and local companies, of the Australian electronics industry. Mr Kilpatrick states that he is qualified to comment on the retail market in Australia, in relation to car audio and audio-visual entertainment equipment on the one hand and computers, computer peripherals and accessories and mobile phones on the other.  He reports his conviction that the market segments are clearly separated in the mental perceptions of consumers and by virtue of different sales and marketing channels.  Mr Kilpatrick declares that automobile audio-visual entertainment equipment is sold through car audio specialists and automotive accessory stores.  He declares that the skills needed to advise, sell and install car equipment are different from those required to advise, sell and install computers.  He states that in his opinion there is no basis upon which ordinary consumers in Australia would assume a commercial nexus between the production and sale of these different sorts of goods.

   Pischedda

4. Mr Pischedda is the National Sales Manager of Uniden Australia Pty Ltd and has sixteen years in the electronics industry in relation to consumer electronics, communications and car audio products.  He states that most after-sale automobile audio-visual entertainment equipment sales are made through specialist retail outlets dealing in such goods or goods that are closely related and that consumers would seek out specialist suppliers for these goods.

   Opponent's evidence in reply
   Rumore

5. The evidence in reply consists of a statutory declaration from Michael Rumore, who is a licensed private enquiry agent. Mr Rumore was instructed by Spruson & Ferguson to investigate whether mobile phones including car installation kits are sold through the same trade outlets as automotive audio-visual entertainment equipment.  Mr Rumore declares that his investigations show that two of the three Sydney outlets that sell and install the applicant's goods also sell mobile telephones for motor vehicles. He visited one of the stores and found that the mobile telephones were on display in the front of the store whereas the in-car entertainment units including sound systems and audio-visual equipment were on display in the remainder of the store.  Mr Rumore states that he also visited two branches of a store named Strathfield, where he found both car audio-visual entertainment equipment and mobile telephones for sale.  He reports that he telephoned five stores selected from the Sydney Yellow Pages and confirmed with each of them that they sell and install both car audio-visual entertainment equipment and mobile telephones.

   Grounds of opposition

6. At the hearing, NEC Corporation pursued grounds of opposition based on sections 42(b), 43, 44 and 60 of the Act.

   Submissions and the law

   Section 44

7. Section 44 provides that a trade mark application must be rejected if the trade mark is substantially identical with or deceptively similar to another trade mark which has an earlier priority date and which is in respect of similar goods or closely related services. Section 10 of the Act states that a deceptively similar trade mark is one that so nearly resembles another trade mark that it is likely to deceive or cause confusion.

8. French J in Registrar of Trade Marks v Woolworths Limited, (1999) 45 IPR 411 at paragraph 39 said,

   The logic of subs 44(2) suggests that the determination whether goods are closely related to the services in question is logically antecedent to the determination whether the trade mark in respect of the services is deceptively similar to that in respect of the goods. Wilcox J at first instance in this case saw the questions as "conceptually distinct" but accepted that one could not be addressed in isolation from the second.

   It follows that the same principle applies in a consideration of trade marks under the provisions of subsection 44 (1). The tests for determining if goods are of the same description were defined in Jellinek's Application (1946) 63 RPC 59. The factors to be considered are the nature of the goods, the uses of the goods and the trade channels employed.

9. Trade mark numbers 177937, 326407 and 674029 are registered for the trade mark NEC.  Trade mark number 177937 includes radio and television equipment and trade mark number 674029 includes goods described as colour television receivers, video cassette recorders (VCRs), compact disc players, surround amplifiers-decoders and video games units. These goods are similar to those of the subject application, namely, automobile audio-visual entertainment equipment, being similar in nature and the purposes for which they are used. The services for 326407 and 674029 include installation, construction, assembly and repair of communication apparatus and instruments and of electronic apparatus.  These services are clearly closely related as they encompass the installation and repair of electronic audio-visual entertainment equipment for automobiles. Trade mark numbers 177937 and 674029 also include telephone equipment and parts thereof and key telephone  systems, cordless telephone sets, telephone sets. I am satisfied that in accordance with the  tests set down in the Jellinek case that these goods are not similar to the applicant's goods.

10. The services of trade marks number 326408 are technical consultation, supervision and inspection services.  Providers of these services would not generally be directly involved in the production of automobile audio-visual entertainment equipment.  I do not think they can be regarded as being in the same trade.  I am not satisfied that these goods and services are closely related. 

11. Trade mark number 454938 is registered for all goods in class 16.  I believe that if the Jellinek tests are applied no nexus of similarity can be found to exist between these goods and the applicant's goods.

12. Trade mark number 460413 is for computer programming services and other computing services and again I believe there is no nexus of similarity between these services and the applicant's goods.

13. Trade mark numbers 648027 and 648028 are both for goods being computers and integrated circuits. The essential nature of a computer is, I think, different from vehicle audio-visual entertainment equipment.  I do not think a computer would normally be thought of as entertainment equipment.  Certainly, the trade channels for computers are different from the trade channels for entertainment equipment and the purposes for which the goods are used are generally different. I am satisfied that the opponent's computers and the applicant's automobile audio-visual entertainment equipment are not similar goods.

14. As I have found that some of the goods and services of trade marks 177937, 326407 and 674029 are similar or closely related to the goods specified in the subject application I must now decide if the trade mark necvox is substantially identical with or deceptively similar to these trade marks.

15. Ms Einfeld conceded and I agree with her, that the trade mark necvox is not substantially identical with any of the opponent's registered trade marks.  She submitted, however, that the trade mark necvox is deceptively similar to these trade marks.  In support of her submissions she referred to the tests for deceptive similarity set down in Australian Woollen Mills Ltd v F S Walton & Co Ltd, (1937) 58 CLR 641 at page 658 per Dixon & McTiernan J.J.

    '...the marks ought not, of course, to be compared side by side.  An attempt should be made to estimate the effect or impression produced on the mind of potential customers by the mark or device for which the protection of an injunction is sought.  The impression or recollection which is carried away and retained is necessarily the basis of any mistaken belief that the challenged mark or device is the same. The effect of spoken description must be considered. ... The usual manner in which ordinary people behave must be the test of what confusion or deception may be expected.  Potential buyers of goods are not to be credited with any high perception or habitual caution.  On the other hand, exceptional carelessness or stupidity may be disregarded.  The course of business and the way in which the particular class of goods are sold gives, it may be said, the setting and the habits and observation of men considered in the mass affords the standard. 

16. She noted that in Registrar of Trade Marks v Woolworths Ltd, 45 IPR 411 at page 428 French J said, when restating the propositions of Kitto J in Southern Cross Refrigerating Co. v. Toowoomba Foundry Pty Ltd (1954) 91 CLR 592,

    A trade mark is likely to cause confusion if the result of its use will be that a number of persons are caused to wonder whether it might not be the case that the two products or closely related products and services come from the same source. It is enough if the ordinary person entertains a reasonable doubt.  

17. French J then went on to say,

    It may be interpolated that this is another way of expressing the proposition that the trade mark is likely to cause confusion if there is a real likelihood that some people will wonder or be left in doubt about whether the two sets of products or the products and services in question come from the same source.

18. Ms Einfeld said that necvox shares a common prefix with the opponent's trade marks and noted, as per London Lubricants (1920) Limited's Application (1925) 42 RPC 264 at 279, the importance of the role of the prefix, because of the tendency in English to slur the termination of words. She claimed that NEC is the essential feature of the applicant's trade mark because VOX is a descriptive word common to the trade. She drew my attention to the fact that the opponent, on occasion, uses its primary trade mark NEC with other words and submitted that it would not be unreasonable for consumers to believe that the opponent had combined its NEC mark with VOX in respect of a range of automobile audio-visual entertainment equipment. She submitted that the opponent has a strong family of NEC marks and that the subject mark is deceptively similar to them. She said that as per John Fitton & Co's App'n, (1949) 66 RPC 110, deception was likely because NEC on its own or with other words indicates a connection with the opponent.

1. I think it is likely that consumers seeing the word NEC used on its own or with other words, particularly in respect of computer related goods, would rightly assume a connection with the opponent. Indeed there could be little doubt that purchasers would correctly assume that the trade marks NEC, NEC IMAGE RISCSTATION and NEC EXPRESS RISCSERVER emanated from the same source. However, I consider it is stretching a long bow to suggest that where the element NEC forms part of a single word, consumers are likely to infer a connection with the opponent. Such a claim is simply not tenable.  If I were to accept this argument then I would also need to accept that ordinary English words, such as 'nectarine', 'necessary' or 'necromancy' for instance, when used as trade marks for the goods, Automobile audio-visual entertainment equipment, would be taken as indicating a connection with the opponent.  The opponent has in fact, no registrations where the element NEC forms only part of a word.

2. Ms Einfeld submitted that there is a real likelihood that consumers would be confused because of the derivation of the word necvox and its similarity in pronunciation to the opponent's trade marks. Consumers, in her opinion, may pronounce NEC in the opponent's trade marks either as a word, NEC or as letters, N-E-C. She said that consumers may also pronounce necvox as a word NEC-VOX or a word/letter combination N-E-C-VOX.

3. To the extent that the pronunciation of the opponent's trade marks may vary from one customer to another I agree with Ms Einfeld.  Those who have only seen the mark, are, I believe, likely to pronounce it as a word, whereas those who have heard the opponent's goods being promoted, or who know that NEC is derived from the original company name of the opponent, Nippon Electric Company, are likely to pronounce it as the letters N-E-C.  However, the proposition that customers might pronounce the applicant's trade mark as N-E-C-VOX is remarkable.  Indeed, this proposition is so far removed from the regular or established methods by which the pronunciation of words is determined, that in the absence of supporting evidence I dismiss it. 

4. Mr Willis noted that it was conceded that the applicant's trade mark is not substantially identical with the opponent's trade marks. He submitted that in determining whether the applicant's trade mark is deceptively similar to any of the opponent's trade marks the comparison must be made on a one-by-one assessment as per Buttress BV v Lancome Parfums Et Beaute & Cie, [2001] ATMO 105. He said the comparison of a single mark with a 'stable of trade marks' does not alter the tests of comparison. He observed that the fact that the opponent has a number of trade marks with words in addition to the house-mark does not strengthen its position in relation to the tests for deceptive similarity. Mr Willis submitted that, 'The usual manner in which ordinary people behave must be the test of what confusion or deception may be expected,' Australian Woollen Mills Ltd v FS Walton & Co Ltd, supra. He said that the applicant's goods are ordinary consumer items and it was unlikely that the ordinary Australian consumer would go through a process of analysis of trade marks in the brief time given to the purchase of these items. 

5. Here, I do not altogether agree with Mr Willis. In my opinion, the goods concerned are not the sort of goods that would be purchased in a hurry and with scant thought. They will only be purchased after some close attention to the goods themselves and to the trade marks under which they are sold.  While I do not think purchasers spend much, if any, time in analysing the derivation of  trade marks they will, I think, give some serious consideration to the trade marks themselves. They are likely to make some careful investigations into the likely quality and durability of goods bearing various trade marks along with other matters such as access to after sales services and availability of spare parts. During such considerations it is likely that the trade marks under consideration will be impressed on the minds and fixed in the memories of purchasers.  In the circumstances of trade in Automobile audio-visual entertainment equipment the differences between NEC and necvox are significant.  I note that on the matter of deceptive similarity Parker J in Pianotist Co.'s Appn (1906) 23 RPC 774 set down some rules for comparison of trade marks when he said,

   You must take the two words. You must judge of them, both by their look and by their sound. You must consider the goods to which they are to be applied. You must consider the nature and kind of customer who would be likely to buy those goods. In fact, you must consider all the surrounding circumstances; and you must further consider what is likely to happen if each of those trade marks is used in a normal way as a trade mark for the goods of the respective owners of the marks.

6. NEC is a single syllable word or three letter trade mark. The applicant's trade mark, necvox, is a two syllable word in which I think both syllables would be clearly enunciated. It is true that the goods concerned will be purchased following visual inspection so that the pronunciation is perhaps less important than visual appearance but it is not usually necessary to hear a word to know how it will be pronounced and to fix the pronunciation in the memory.  The second syllable of necvox is a word meaning voice or sound, which gives the word as a whole a measure of meaning. I do not agree with Ms Einfeld that because VOX has a meaning and is common to the trade this element of the trade mark should be 'discounted to a significant degree' for the purposes of section 44 of the Act. VOX alludes to the nature of the goods but it is not the name of the goods so the extent to which it can be discounted is, I think, quite limited. It was found in London Lubricants (1920) Ltd's Appn, (1925) 42 RPC 264 that the beginning of words is accentuated in comparison with the end of the word so that 'the first syllable of a word is, as a rule, far the most important for the purpose of distinction,' but, in this instance, I believe, the syllable VOX, is phonetically, equally as strong as the prefix NEC. Visually the differences between NECVOX and necvox are marked.

7. Whether the opponent's trade marks are perceived as the word NEC or the letters N-E-C, the impression created is different from the word necvox.  As a word the opponent's trade marks do not convey any particular idea or meaning although to some it may occur that the letter 'k' is missing. When seen and heard as the letter N-E-C, the marks create a totally different impression from the six-letter word necvox.  Although the opponent's trade marks are wholly contained in the subject trade mark this is insufficient to satisfy a claim that the applicant's trade mark is deceptively similar to the opponent's trade marks. To reach such a conclusion I would have to ignore the significance of the suffix that clearly differentiates the trade marks.

8. The applicant did not provide any evidence of use of the trade mark necvox, however Mr Rumore's declaration indicated that the applicant is using its trade mark to a limited degree. The opponent has not reported any instances of confusion.  In Registrar of Trade Marks v Woolworths Ltd, supra, at page 426, French J said that under the 1995 Act,

   The position now is that the registrar and the court at first instance would need to be satisfied that there was a reasonable likelihood of deception or confusion before denying acceptance of the application for registration.

9. And in Blount Inc v Registrar of Trade Marks, 40 IPR 498 at page 504, Branson J observed,

   Where the Act requires the Registrar to be "satisfied" of any matter, it is to be understood as requiring that he or she be persuaded of the matter according to the balance of probabilities (Rejfeck v McElroy (1965)112 CLR 517 That is, that the Registrar be persuaded, having given proper consideration to those factors and circumstances that the Act requires him or her to give consideration to, that such matter is more probable than not.

10. For all of the above reasons I find that I am not satisfied that there is a reasonable likelihood of deception or confusion between the opponent's trade marks NEC, and the applicant's trade mark necvox. The opponent has not established the grounds of opposition under section 44 of the Act.

    Section 43

11. Section 43 provides that registration may be refused if, because of some connotation that the trade mark (or a constituent part of the trade mark) has, the use of the trade mark is likely to deceive or cause confusion. T.G.I. Friday's Australia Pty Limited v TGI Friday's Inc., 48 IPR 513 at 521, confirms that the connotation must be in the mark itself, and cannot be determined as the result of external considerations, such as comparison with another trade mark. Rather, to be caught by section 43, the applied-for trade mark must be deceptive on its face in the sense that it connotes that the goods or services to which the trade mark is to be applied have a quality or attribute which they do not actually possess. In Down to Earth (Victoria) Co-operative Society Ltd v George Schmidt, (1998) 41 IPR 632 at 643, Hearing Officer Forno said that 'the word connotation refers to that which is implied in a trade mark - in addition to its essential or primary meaning.'

12. The opponent asserted that consumers would understand the trade mark necvox to mean NEC voice or NEC sound and thus the  word necvox would connote to a substantial section of the Australian public, that the opponent is offering consumers a range of audio-visual goods.  In support of this claim the opponent referred to Twentieth Century Fox Film Corporation v Durkan, 47 IPR 651.

13. In that case, Deputy Registrar Helen Hardie found the section 43 ground of opposition was established because BRAVEHEART had achieved 'significant currency' as the name of a film. It had become part of the common language. The opponent has not provided evidence to establish that the expression NEC enjoys a currency in language in Australia, with consumers, to the extent that it conveys a specific meaning and as a result, consumers would be likely to be deceived or confused. I am not satisfied that consumers would be caused to wonder, if goods to which the trade mark necvox had been applied, were connected with the opponent. The opponent has not established its grounds of opposition under section 43 of the Act.

    Section 60

14. In order to establish a section 60 ground of opposition the opponent must establish that the applied-for trade mark is substantially identical with, or deceptively similar to another trade mark that enjoyed a reputation in Australia at the priority date of the applied-for mark and that as a result of that reputation, use of the applied-for trade mark would be likely to cause deception or confusion.

15. The opponent conceded at the outset that the trade marks are not substantially identical and  I have found that the trade mark necvox is not deceptively similar to the trade mark NEC. Given this, the section 60 ground fails at the first leg and I have no need to consider the matter of the opponent's reputation in Australia. The opponent has not established this its ground of opposition.

    Section 42

16. The opponent alleges that use of the trade mark would contravene section 52 (1) of the Trade Practices Act 1974 which provides that:

    A corporation shall not, in trade or commerce, engage in conduct that is misleading or deceptive or is likely to mislead or deceive.

17. In support of this ground Ms Einfeld referred to the decision of Madgwick J in Advantage Rent-A-Car v Advantage Car Rental Pty Limited, 5 IPR 24. She also referred to Taco Co of Australia Inc. v Taco Bell Pty Limited (1982) 42 ALR 177, Fletcher Challenge Limited v Fletcher Challenge Pty Limited, [1981] 1NSWLR 196, ConAgra Inc v McCain Foods (Australia) Pty Ltd, (1992) 33 FCR 302, Betta Foods Australia Pty Limited v Betta Fruit Bars Pty Limited (1998) ATPR 41-624, and Office Cleaning Services Limited v Westminster Office Cleaning Association, [1944] All ER 269.

18. In the Advantage Rent-A-Car case, Madgwick J confirmed that the test to be satisfied is that use would, rather than could, be contrary to law.  Therefore, I must decide on the balance of probabilities, and on the basis of a hypothetical case which takes into account all the evidence and submissions before me, whether use of the applied-for trade mark on automobile audio-visual entertainment equipment would cause, or be likely to cause consumers to be misled or deceived.  The test to be applied in order to determine if conduct is misleading or deceptive or is likely to mislead or deceive, in terms of the Trade Practices Act, are sufficiently similar to those applied in respect of sections 44 and 60 of the Trade Marks Act 1995. For the reasons I have already provided, I am not satisfied that consumers would be deceived or confused in terms of sections 44 and 60. On this basis, I am not satisfied that use of the applied-for trade mark would contravene section 52 (1) of that Act. This ground of opposition has not been established.

    Decision

19. None of the grounds of opposition has been established. The trade mark application may proceed to registration one month from the date of this decision.  If the Registrar has been served with a notice of appeal before that time, I direct that registration shall not occur until the appeal has been decided or discontinued.

    Costs

20. I order that the opponent pay the applicant's costs in accordance with the official scale.

    Mary Skivington
    Hearing Officer
    Trade Marks Hearings
    17 June 2003