Nexans v Nex 1 Technologies Co., Ltd

[2011] ATMO 24

TRADE MARKS ACT 1995

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

Re:Opposition by Nexans to registration of trade mark application 1165913(9) - NEX1 - filed in the name of Nex 1 Technologies Co., Ltd.

Delegate:

Iain Thompson

Representation:

Opponent:  Fiona Brittain of Davies Collison Cave

Applicant: Atkinson IP – did not appear at hearing or make written submissions

Decision:

2011 ATMO 24

s52 opposition – sections 44, 42(b) and 60 – trade marks are not similar (sections 42(b) and 60) or deceptively similar (section 44) – opposition not established – costs awarded against opponent.

Background

1. In this matter, Nex 1 Technologies Co., Ltd. of Taipei, Taiwan, (‘the applicant’) has applied to register a trade mark, current details of which appear below:

Application No: 1165913

Priority Date:  14 March 2007

Goods:Class 9:  Networks cables, network connectors, LAN cables, LAN connectors, optical fibres, patch cable, fiber optical cable, patch panels, network jacks, keystone jacks

Trade Mark:  

1. The application was advertised as accepted for possible registration in the Australian Official Journal of Trade Marks on 19 July 2007.

2. On 16 October 2007, Nexans, of Paris, France, (‘the opponent’) filed Notice of Opposition (‘NOO’) to the registration of the trade mark. The NOO includes, inter alia, the grounds under sections 44, 60 and 42(b) of the Trade Marks Act 1995 (‘the Act’) that were subsequently argued at the hearing of the matter.

3. Prior to the hearing, both parties were advised of their right to be heard.  As a delegate of the Registrar of Trade Marks, I heard the submissions of the opponent made by Fiona Brittain of Davies Collison Cave, of Melbourne.  The applicant, while represented by Atkinson IP, elected not to appear or to put in written submissions.

The Evidence

1. The opponent served and filed evidence in support of the opposition comprising a statutory declaration of Michel Rousseau dated 30 October 2008 and exhibits thereto.  The applicant served and filed evidence in answer comprising a statutory declaration of Vincent Tsao dated 23 March 2009 and exhibits thereto.  The opponent thereafter served and filed evidence in reply comprising a statutory declaration of Thierry Roucher dated 30 July 2009 and exhibits thereto.  Subsequently, the opponent served and filed further evidence (following permission being granted by the Registrar’s delegate on 21 January 2010) comprising a statutory declaration of Thierry Roucher dated 16 February 2010 and exhibit thereto.

2. Relevant to this decision, the evidence shows that the opponent has registered its NEXANS trade marks in Australia as follows:

Registration No:              860431

Priority Date:  26 June 2000 (convention claim based on French appln)

Goods:Class 9:  Electric cables and wires; electronic cables and wires; telecommunications cables; winding wires (electricity), magnetic, telephone wires; connectors; switches; connections; cut-outs; capacitors; converters; branching, splitter and junction boxes for electric, electronic and telecommunications cables and wires; junction sleeves and sheaths for electric, electronic and telecommunications cables and wires; components and accessories for connecting electric, electronic and telecommunications cables and wires; electric conductors; apparatus for processing information; apparatus for transmission and reproduction of sound, images or data; recorded computer programs for managing cable installations

Trade Mark:  NEXANS

Registration No:              866141

Priority Date:  31 August 2000

Goods:Class 9:   Electric cables and wires; electronic cables and wires; telecommunications cables; winding wires (electricity), magnetic, telephone wires; connectors; switches; connections; cut-outs; capacitors; converters; branching, splitter and junction boxes for electric, electronic and telecommunications cables and wires; junction sleeves and sheaths for electric, electronic and telecommunications cables and wires; components and accessories for connecting electric, electronic and telecommunications cables and wires; electric conductors; apparatus for processing information; apparatus for transmission and reproduction of sound, images or data; recorded computer programs for managing cable installations

Trade Mark:  

1. For the sake of simplicity I will refer to both of the above trade marks as the NEXANS trade mark as nothing in this decision turns on the way the way the NEXANS trade mark is represented.

2. The opponent’s NEXANS trade mark has been used and promoted in Australia since 2001 by the opponent’s authorised user, Nexans Australia Pty Ltd, in relation to cables and cabling systems.  These cables and cabling systems are used in a wide range of applications including telecommunications, energy networks, ship building, oil and gas, automotive, aeronautics and aerospace.  Sales for 2005 and 2006 by the opponent of €13.9 million occurred in relation to sale of NEXANS branded products in Australia.  Major Australian customers include the Australian Defence Department, Alcatel Australia and Alston Areva.

3. The opponent’s NEXANS trade mark thus has sufficient to reputation to found the ground under section 60 : McCormick & Company Inc v McCormick [2000] FCA 1335, per Kenny J at 81.

4. The applicant’s trade mark has also been used in Australia.  The goods on (or in relation to which) the applicant uses the opposed trade mark include network cables, network connectors, LAN cables, LAN connectors, optical fibres, patch cable, fiber optical cable, patch panels, network jacks, keystone jacks.  The opposed trade mark was first used in Australia on or about 12 September 1995.  Goods sold under the opposed trade mark are distributed in Australia through an Australian company named Sourceman International Pty Ltd.

5. The opposed trade mark is registered by the applicant in various countries, including Republic of China, United States of America, Japan, China, Germany, Russia and Kazakhstan and trade mark application in European Union and India.

Issues

1. Ms Brittain pressed only the grounds of opposition under sections 44, 60 and 42(b). In relation to the section 44 ground, she did not argue that the trade marks of the parties are substantially identical, but that the trade marks of the parties are deceptively similar.

2. Some of the parties’ goods nominated in the respective specifications of goods are either the same goods or goods of same description. Further, the opponent’s registrations have earlier priority dates than that of the opposed application. Two legs of the ground under section 44 are thus present. Moreover, as I have previously observed, the opponent’s trade mark arguably also has sufficient reputation to found the grounds under sections 60 and 42(b) in respect of similar goods.

3. Accordingly, in terms of the grounds argued by Ms Brittain at the hearing, the issue resolves itself to an assessment of whether the trade marks of the parties are sufficiently similar to found grounds under sections 42(b) or 60 or deceptively similar in terms of section 44. In the context of the trade marks here under consideration the differences between my assessments of the similarity of the parties’ trade marks in terms of either sections 42(b) and 60 on the one hand or section 44 on the other are of no substance.

Onus

1. The opponent bears the onus of establishing one or more grounds of opposition on the balance of probabilities: Pfizer Products Inc v Karam [2006] FCA 1663. See also Chocolaterie Guylian N.V. v Registrar of Trade Marks [2009] FCA 891 (18 August 2009) at [22] to [26].

Deceptive similarity

1. The expression ‘deceptively similar’ is defined within section 10 of the Act which provides:

   Definition of deceptively similar

   10. For the purposes of this Act, a trade mark is taken to be deceptively similar to another trade mark if it so nearly resembles that other trade mark that it is likely to deceive or cause confusion.

2. Deceptive similarity is to be assessed according to the tests set out in Shell Company of Australia Ltd v Esso Standard Oil (Australia) Ltd [1963] HCA 66; (1963) 109 CLR 407 at paragraph 13 per Windeyer J:

   On the question of deceptive similarity a different comparison must be made from that which is necessary when substantial identity is in question. The marks are not now to be looked at side by side. The issue is not abstract similarity, but deceptive similarity. Therefore the comparison is the familiar one of trade mark law. It is between, on the one hand, the impression based on recollection of the plaintiff’s mark that persons of ordinary intelligence and memory would have; and, on the other hand, the impressions that such persons would get from the defendant’s television exhibitions. To quote Lord Radcliffe again: “The likelihood of confusion or deception in such cases is not disproved by placing the two  marks  side by side and demonstrating how small is the chance of error in any customer who places his order for goods with both the marks clearly before him . . . . It is more useful to observe that in most persons the eye is not an accurate recorder of visual detail, and that marks are remembered rather by general impressions or by some significant detail than by any photographic recollection of the whole”: de Cordova v. Vick Chemical Co (1951) 68 RPC, at p 106. And in Australian Woollen Mills Ltd v. F.S. Walton & Co. Ltd. (1937) 58 CLR 641 Dixon and McTiernan JJ. said: “In deciding this question, the marks ought not, of course, to be compared side by side. An attempt should be made to estimate the effect or impression produced on the mind of potential customers by the mark or device for which the protection of an injunction is sought. The impression or recollection which is carried away and retained is necessarily the basis of any mistaken belief that the challenged mark or device is the same” (1937) 58 CLR, at p 658.

3. This comparison is not abstract – it is to be carried out in the context of the goods of the parties – see In Re Application by the Pianotist Co Ltd (1906) 1A IPR 379 at 380; 23 RPC 774 at 777, above, where Parker J 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.

4. The principles to be applied under the Act in assessing deceptive similarity were conveniently summarised by French J in Registrar of Trade Marks v Woolworths Ltd [1999] FCAFC 1020; (1999) 45 IPR 411 at [50]:

   In Southern Cross Refrigerating Co v Toowoomba Foundry Pty Ltd [1954] HCA 82; (1954) 91 CLR 592 at 594-5, which concerned the 1905 Act, Kitto J set out a number of propositions which have frequently been quoted and applied to the 1955 Act. The essential elements of those propositions continue to apply to the issue of deceptive similarity under the 1995 Act. Applied also to service marks and absent the imposition of an onus upon the applicant they may be restated as follows:

   (i) To show that a trade mark is deceptively similar to another it is necessary to show a real tangible danger of deception or confusion occurring. A mere possibility is not sufficient.

   (ii) 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.

   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.

   (iii) In considering whether there is a likelihood of deception or confusion all surrounding circumstances have to be taken into consideration. These include the circumstances in which the marks will be used, the circumstances in which the goods or services will be bought and sold and the character of the probable acquirers of the goods and services.

   (iv) The rights of the parties are to be determined as at the date of the application.

   (v) The question of deceptive similarity must be considered in respect of all goods or services coming within the specification in the application and in respect of which registration is desired, not only in respect of those goods or services on which it is proposed to immediately use the mark. The question is not limited to whether a particular use will give rise to deception or confusion. It must be based upon what the applicant can do if registration is obtained.

   In respect of the last proposition, Mason J observed in Berlei Hestia Industries Ltd v The Bali Company Inc [1973] HCA 43; (1973) 129 CLR 353 at 362:

   “...the question whether there is a likelihood of confusion is to be answered, not by reference to the manner in which the respondent has used its mark in the past, but by reference to the use to which it can properly put the mark. The issue is whether that use would give rise to a real danger of confusion.”

5. The goods here are of some specialty and technical application and are likely to be bought or ordered by people who are trained in the electrical or electronics fields and thus more likely to exercise care in their purchases.  Additionally, the goods are not such as are casually purchased from the shelves of supermarkets: Re Stuart Alexander and Co (Interstate) Pty Limited and Douwe Egberts Koninklijke Tabaksfabriek-Koffiebranderijen-Theehandel NV v Blenders Pty Limited [1981] FCA 152; (1981) 53 FLR 307. The goods, while not particularly expensive, are not exceptionally cheap and are also, for this reason, likely to be bought with a modicum of care: LANCER - Trade Mark Application   [1987] RPC 303 (LANCER versus LANCIA for cars).

6. It was put to me by Ms Brittain that the first syllable is of importance in the assessment: in London Lubricants (1920) Ltd’s Application (1925) 42 RPC 264 at 279 Sargant LJ observed that the “tendency of persons using the English language to slur the termination of words ... has the effect necessarily that the beginning of words is [sic] accentuated in comparison, and ... the first syllable of a word is, as a rule, far the most important for the purpose of distinction.”

7. Ms Brittain referred to me some trade marks which have been found to be deceptively similar.  She submitted:

   By way of example, we refer to the finding of the Federal Court that the marks LEVI'S and REVISE are deceptively similar (Wingate Marketing Pty Ltd & Anor v Levi Strauss & Co & Anor (1994) 28 IPR 193).

   In a finding that the marks BOSE and BASE were deceptively similar on the basis of visual and phonetic similarities, the Hearing Officer in Bose Corporation v Target Australia Pty Ltd 2008 ATMO 54 stated as follows:

   "...It strikes me that there is no such thing as uniformity or homogeneity of pronunciation in the present instance. The Australian community is multicultural and ethnically diverse.  Persons of different cultural backgrounds would be expected to pronounce the word "BOSE" in a variety of different ways and with different emphases and accents. Realistically, there is every likelihood that the words "BOSE" and "BASE" would be pronounced the same way by a significant proportion of the purchasing public..."

   Further examples of marks which have been found to be deceptively similar on the basis of aural similarities are:

   ·     COPRICE and TOP-RICE (Rice Growers Co-Op Ltd v Howling Success Australia Pty Ltd (1987) ATPR 40-778)

   ·     CHANTELLE and CHANDEAL (Chantelle v Kabushiki Kaisha Chandeal (1996) 36 IPR 563)

   ·     FRUSAL and FRUIT SALT (Taylors Elliots & Australian Drug Ply Ltd's Appln (1938) 8 AOJP 2221 at 2214).

   ·     BAND-AID and BAND >> IT (stylised) (Johnson & Johnson v Kalnin & Anor (1993) 26 IPR 435).

8. I do not consider that it is possible to glean some kind of principle of what is deceptively similar (or what is not) from the above examples or to extract some kind of general guidance from them.  This kind of abstract consideration of what has, or has not, been considered to be deceptively similar in the past just from the trade marks involved would take the consideration before me out of the commercial context (ie, the particular goods involved) against which it should be set and impose an abstract consideration of the similarities of the trade marks upon me.  The commercial context is essential in a consideration of deceptive similarity: particular trade marks which are adjudged deceptively similar in respect of biscuits might not be so when assessed in relation to motor vehicles.

9. Ms Brittain also submitted:

   As previously referred to, [the applicant] filed CTM Application No. 4330684 to register NEX1 before OHIM.  The application was opposed by Nexans.  While the opposition was originally unsuccessful, OHIM’s Board of Appeal issued a Decision on 8 October 2009 which held that the contested Decision erred in finding that the signs were sufficiently dissimilar so that no link would be established between the signs.  The Decision referred to the certain degree of similarity of the signs as well as the identity of the goods as registered and as applied for.  In this regard, we refer to paragraphs 3 and 4 of the second Roucher Declaration and Exhibit “TR-4”, being a copy of the Appeal Decision dated 8 October 2009.  We submit that the OHIM decision should be afforded persuasive value in a determination of the deceptive similarity of the respective marks.

10. I consider that in the context of the goods and the likely Australian purchaser, the opposed trade mark presents itself as an obvious truncation of the English words NEXT ONE whereas the trade marks on which the opponent relies do not suggest any obvious English derivation.  The opponent’s trade mark appears to be, essentially, an invented word: Howard Auto-Cultivators Ltd v Webb Industries Pty Ltd [1946] HCA 15; (1946) 72 CLR 175. This difference in derivation, along with the obvious differences in appearance and pronunciation, is likely, in my estimation, to lead to the trade marks of the parties being seen, remembered, recalled and recognized in quite different ways.

11. I therefore consider it to be unlikely that the co-existence of the trade marks of the parties will lead to deception or confusion in terms of section 44 of the Act.

12. The differences between the trade marks are also such that it is unlikely that, because of the reputation of the NEXANS trade mark, the use of the opposed trade mark would confuse or deceive in terms of sections 42(b) or 60 of the Act.

13. The opponent has, accordingly, not established its grounds in terms of sections 44, 42(b) or 60 of the Act.

Decision

1. Section 55 of the Act relevantly provides:

   Decision

   55. Unless the proceedings are discontinued or dismissed, the Registrar must, at the end, decide:

   (a) to refuse to register the trade mark; or
   (b) to register the trade mark (with or without conditions or limitations) in respect of the goods and/or services then specified in the application;

   having regard to the extent (if any) to which any ground on which the application was opposed has been established.

   Note:  For limitations see section 6.

2. The trade mark application may then 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 the disposition of the application be in accordance with the Court’s order or direction.

Costs

1. Having been successful in this matter the applicant is entitled to its cost which I award against the opponent at the official scale.

Iain Thompson

Hearing Officer

Trade Marks Hearings

30 March 2011