Nikon Corporation v Andrew Lovric

[2014] ATMO 48

TRADE MARKS ACT 1995

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

Re:Opposition by Nikon Corporation to registration of trade mark application 1485903(32) - IKON - filed in the name of Andrew Lovric.

Delegate:	Hearing Officer: Nicole Worth
Representation:	Opponent: Tracey Berger and Daniel J Wilson, Spruson & Ferguson Patent & Trade Mark Attorneys Applicant: No attendance at hearing or provision of written submissions
Decision:	2014 ATMO 48 Section 52 opposition – grounds of opposition under sections 44, 59 and 60 pursued – no grounds established – opposition dismissed.

Background

1. This decision is pursuant to an opposition by the Nikon Corporation (‘the Opponent’), under section 52 of the Trade Marks Act 1995 (‘the Act’), to registration of the trade mark the subject of application number 1485903, detailed below.

   Trade Mark:           IKON (‘the Trade Mark’)

   Owner:  Andrew Lovric (‘the Applicant’)

   Filing date:              17 April 2012

   Goods:  Class 32: juices; mineral water; bottled water; softdrinks.

2. The application was examined and initially a ground for rejection was raised under section 44 of the Act on the basis of two prior conflicting trade marks (both containing the word ‘icon’). The Applicant amended its goods to those listed here, and as a result the examiner withdrew the ground for rejection and accepted the application for possible registration. The acceptance was advertised in the Australian Official Journal of Trade Marks on 23 August 2012.

3. After obtaining an extension of time in which to do so, the Opponent filed a Notice of Opposition (‘the Notice’) to registration of the Trade Mark on 22 February 2013. The Notice nominated grounds of opposition under sections 41, 42, 44, 58, 58A, 60, 62 and 62A.

4. Thereafter the Opponent filed its evidence in support of its opposition. The Applicant did not file any evidence in answer and once the statutory period for doing so had ended, the Opponent requested that the matter be heard by way of written submissions. The Opponent filed written submissions on 2 April 2014. The Applicant did not file any submissions and has not participated in proceedings generally.

5. As a delegate of the Registrar of Trade Marks, the matter has been given to me for determination.

Evidence

1. The evidence filed in this matter comprises a statutory declaration of Daniel James Wilson, a trade mark attorney with the attorney firm Spruson and Ferguson, made 22 August 2013, with exhibits DJW-1 to DJW-20.

2. Mr Wilson attests that the Opponent has been in operation for more than 90 years, having been established as Nippon Kogaku Kogyo K.K. in 1917 and changing its name in 1988 to Nikon Corporation. Over that time the Opponent has become one of the world’s largest and most recognizable companies, with global net sales in the billions.

3. The Opponent commenced use of the trade mark NIKON in 1947 upon cameras, and first began to sell them and associated lenses in Australia in 1959. The provision of cameras and lenses under the NIKON trade mark has been continuous since then. The Opponent declares it has since diversified the goods and services it provides under the NIKON trade mark, such that in Australia NIKON is or has been used in respect of “sports optics” (which include various types of telescopes and binoculars), photographic workshops and courses, and equipment repair, inspection and cleaning services, in addition to the cameras and associated lenses. A broader range of optic and imaging related products and services is declared to be available globally.

4. The Opponent owns multiple trade mark registrations and applications globally and in Australia, including a defensive registration in all classes for NIKON in Japan. It promotes its trade marks widely using a range of platforms including the internet and social media, print media, television and cinema advertising and sponsorship.

5. Mr Wilson includes submissions in his declaration to the effect that the public are likely to be deceived or confused about a connection between the goods provided under the IKON trade mark and the goods provided under the NIKON trade mark, owing to the Opponent’s commercial diversification and the reputation of the NIKON mark.

Grounds and onus

1. In its submissions the Opponent pressed the grounds of opposition under sections 44, 59 and 60 of the Act. Although it did not abandon any of the other grounds, I do not consider the evidence establishes any of them and so for completeness I find that none of the other grounds listed in the Notice are established.

2. The Opponent acknowledged that it bore the onus of establishing a ground of opposition on the ordinary civil standard of the balance of probabilities[1], and the relevant date for the purpose of the opposition is the date the application was filed[2].

   [1] Pfizer Products Inc v Karam [2006] FCA 1663; (2006) 70 IPR 599 per Gyles J at [6] to [26].

   [2] Southern Cross Refrigerating v Toowoomba Foundry Pty Ltd (1954) 91 CLR 592 at 595.

3. The Opponent also made a general submission about uncontested oppositions:

   Where the Opponent has raised matters which require an answer and the Applicant has not put anything to answer them, the Registrar will not act as an advocate for the Applicant.

   If there is doubt as to whether the Applicant’s mark will cause deception or confusion in the public’s mind, the matter must be resolved against the Applicant (Camelot Design Industries Group Pty Ltd v Bernard Leser Publications Pty Ltd (1987) 9 IPR 596 [‘Camelot’]).

4. The Camelot decision was made under the now repealed Trade Marks Act 1955, wherein the onus rested with an applicant to justify acceptance or registration of its trade mark. To that end Chief Assistant Registrar Farquhar stated in Camelot, at 598:

   By not responding in any way to the opposition proceedings the applicant renders its application more susceptible to refusal, since it is not appropriate that the Registrar act as advocate on its behalf. However, it is appropriate that I consider the opponent’s case to the extent of finding whether or not there are matters for the applicant to answer. If there are, and the applicant has not answered them, the matter must be resolved in favour of the opponent.

5. That onus has effectively been reversed under the current Act, wherein the onus now rests with the Registrar or an Opponent (as the case may be) to be satisfied or establish that the trade mark ought not to be accepted or registered – reflected in the so-called “presumption of registrability”. For that reason, the approach taken in Camelot is not entirely applicable and departure from it has been addressed in a number of the Registrar’s decisions, including Penta Hotel Holdings Ltd v Tomas Floden[3] at [18]:

   …I think the comments of Chief Assistant Registrar Farquhar in Camelot Design should be applied cautiously under the current Act. The onus now is on an opponent to establish, to at least some extent, a ground of opposition. If that it has done, perhaps the registrar will thereafter be less inclined to consider allowing an applicant or holder who has ignored proceedings an opportunity to amend its application. But until that point is reached, an applicant or holder who ignores proceedings does not thereby reduce the evidentiary onus that is on an opponent. Such an applicant or holder has, otherwise, done nothing more than forfeit its opportunity to bring in evidence that might have mitigated an adverse finding.

   [3] [2009] ATMO 76; (2009) 83 IPR 423.

6. Accordingly I adopt the approach that the Opponent must establish, on the balance of probabilities, one of the grounds of opposition and the burden upon it to do so is not lessened by the fact that the Applicant has not adduced any evidence. Only if the Opponent does establish a ground will the matter be resolved in its favour.

Section 44

1. Section 44 of the Act relevantly provides:

   44.(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. I need not reproduce subsections (3) and (4) here (which relate to use of an applied-for trade mark or other circumstances making acceptance or registration of the trade mark proper) because the Applicant has not adduced any evidence upon which to base the application of those provisions. The only matter to be determined under section 44 is whether the Trade Mark is substantially identical with, or deceptively similar to, another’s prior registered or applied-for trade mark in respect of similar goods or closely related services.

3. The evidence in support provides details of twenty registered and pending trade marks in the name of the Opponent, all of which incorporate the element NIKON. None are in respect of goods or services similar or closely related to those in the application, with the exception perhaps of a pending application for the trade mark NIKON in plain text, which lists a range of goods in class 30. However, I need not enter into a discussion of similar goods or closely related services because I am not satisfied, prima facie, that the degree of resemblance between NIKON and IKON rises to that contemplated by section 44.

4. There is no contention that the marks are substantially identical but the Opponent does submit that the Trade Mark and the various NIKON marks are deceptively similar, in accordance with the relevant principles in Australian Woollen Mills Ltd v FS Walton and Co Ltd[4]:

   …[T]he 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. If a mark is in fact or from its nature likely to be the source of some name or verbal description by which buyers will express their desire to have the goods, then similarities both of sound and of meaning may play an important part. 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.

   [4] [1937] HCA 51; (1937) 58 CLR 641.

5. The Opponent points also to a number of other factors including: that IKON is wholly contained within NIKON; both are invented words; the Applicant has not explained its reasons for adopting the Trade Mark and the Registrar is not to infer reasoning as to its adoption nor advocate the Applicant’s adoption of it; the parties’ trade marks differ by only one letter; the specified goods are commonly sold in cylindrical containers which, when displayed upon shelves, may obscure part of the Trade Mark; and the specified goods are lower priced items which are purchased without careful study of the packaging.

6. Despite these submissions, I do not consider the public would be deceived or confused as to the origin of the Applicant’s goods.

7. It is well established that the appearance of the same component in different trade marks will not necessarily render them deceptively similar. Among the plethora of examples of marks wholly contained other marks are VIVICILLIN and CYLLIN, MOREX and REX, OLEX and FINOLEX, BECK and ISENBECK, OMO and DOMO, HEALTHPLUS and INNER HEALTH PLUS, BULL and BULL TRADER and JOCKEY and THROTTLE JOCKEY, none of which were considered to be deceptively similar. Rather, it is the context of the words and the impression produced by them that is of primary significance.

8. IKON is most likely to be interpreted as a deliberate misspelling of ‘icon’, the substitution of ‘k’ for ‘c’ being a common mechanism in trade marks. As such the pronunciation and meaning of ‘icon’, and any associated imagery or notions, is likely to be brought to mind and recollected in the person observing IKON.

9. On the other hand NIKON has no familiar or commonly understood meaning and produces the impression of an invented word. The Opponent declares that NIKON was created from the previous corporate name Nippon Kogaku K.K. by taking the first two letters of each word and adding an ‘n’, however I do not believe the majority of the public would be aware of this and they would consider it simply a word invented by the Opponent. There is therefore a significant difference between it and IKON, a word most likely to be taken as an equivalent of a familiar English word with a commonly understood meaning.

10. Additionally, whilst IKON would almost certainly be pronounced ‘icon’ (owing to the common mechanism of replacing ‘c’ with ‘k’ in trade marks and the familiar pronunciation of ‘icon’), the pronunciation of NIKON is less obvious. As an invented word, it is possible that NIKON would be pronounced with either a long ‘i’, as in ‘icon’, or a short ‘i’, as in ‘ink’. Were it the second of these possibilities then the aural comparison of the words would differ markedly.

11. In respect of the typically cylindrical packaging of the specified goods, I am not satisfied that confusion is likely to arise by virtue of the Trade Mark being obscured when such packaging is stacked upon shelves. Even were it the case that only KON or ON was visible, I consider it unlikely that purchasers would be caused to wonder whether it was in fact NIKON that appeared upon the bottle or can. The same would apply where the whole of the Trade Mark appeared on the bottle or can – it is unlikely purchasers would wonder whether the ‘N’ of NIKON had been obscured and the goods originated from the Opponent. To hold that confusion would be likely on this basis could bestow NIKON with an overly broad monopoly, extending to dissimilar and unrelated words that nonetheless end in the same letters.

12. Lastly, although the goods specified in the application are lower priced items not purchased with a great deal of care, I am not satisfied in the first instance that confusion would occur. Given the risk of confusion is remote, the tolerance for the level of care taken in the purchase is broad.

13. When all of these factors are taken into consideration I am not satisfied that the twenty trade marks owned by the Opponent are either substantially identical or deceptively similar to the Trade Mark, and the ground therefore fails.

Section 60

1. Section 60 of the Act provides:

   The registration of a trade mark in respect of particular goods or services may be opposed on the ground that:

   (a) another trade mark had, before the priority date for the registration of the first-mentioned trade mark in respect of those goods or services, acquired a reputation in Australia; and
   (b) because of the reputation of that other trade mark, the use of the first-mentioned trade mark would be likely to deceive or cause confusion.

2. Accordingly, section 60 contemplates confusion or deception between trade marks that are not necessarily deceptively similar and which are in respect of goods or services that need not be similar or closely related. It is primarily concerned with the use of the Trade Mark in the face of the demonstrated reputation in Australia of another trade mark, and the likelihood of deception or confusion arising from that use. The Registrar’s delegate in Rogers Seller & Myhill v Reece Pty Ltd[5] discussed the amended form of section 60 after the requirement for deceptive similarity or substantial identity was removed in 2006, and qualified that general proposition, stating:

   Confusion cannot arise solely from the reputation of one trade mark. There must always remain a level of similarity between the marks, whether we call it deceptive similarity or something less, and no matter how small it might be. The likelihood of confusion must depend on the reputation of the opponent’s trade mark, but have regard (amongst other factors) to the level of similarity of the goods/services and the degree of similarity of the trade marks, greater or smaller.

   [5] [2010] ATMO 5; (2010) 85 IPR 647.

3. I am satisfied that the NIKON trade mark had acquired a reputation in Australia in respect of cameras and associated lenses by the filing date of the subject application. In applying the tests proposed in McCormick & Company v McCormick[6] to the Opponent’s evidence, the reputation that may be inferred from sales and promotional figures is impressive. Similarly, the long history of the brand and the exhibits of advertising material from some of the most prominent retailers in Australia supports that finding. That being the case, the first leg of section 60 is established. However, in order to succeed on this ground the Opponent must establish that because of the reputation of its NIKON trade mark, the use of IKON in respect of the various specified beverages would be likely to deceive or cause confusion.

   [6] [2000] FCA 1335; (2000) 51 IPR 102.

4. In this respect the Opponent submits that it has engaged in extensive brand extension, applying its trade mark to goods and services beyond cameras and associated lenses. In Australia this extension consists of “sports optics” (being a range of binoculars, telescopes and laser range finders – optical devices which utilise lasers to measure distance), photography workshops, and inspection, repair and cleaning services for photographic equipment. The Opponent also submits that it has promoted its trade mark in relation to a large number of diverse industries. In addition to advertisements in print media, cinemas, online and on television, it operates multiple social media accounts, has developed a number of applications for smartphones, was a main sponsor and “official camera” of the television program “MasterChef” in 2011, and has sponsored numerous events ranging from sports to film to journalism. The Opponent concludes that in light of the reputation of the NIKON mark, its submitted history of brand extension and its submitted similarity to the Trade Mark, confusion or deception is likely to occur.

5. I consider the so-called brand extension undertaken by the Opponent is significantly narrower than submitted. The goods and services to which the Opponent applies its trade mark are all related to optics and photography. Whilst they may fall outside a strict realm of cameras and camera lenses, they are nonetheless related. On the other hand the various beverages specified in the application are quite dissimilar.

6. Nor do I consider that sponsorship of a broad range of events necessarily amounts to a reputation in respect of those industries. Whilst sponsorship may associate a trade mark with a type of industry or activity the Opponent has not led evidence to show, for example, long standing or repeated sponsorship of event(s) that would associate the trade mark with that industry.

7. Contrary to the Opponent’s submissions, I find that the reputation of the Opponent’s trade mark is largely confined to cameras and associated lenses, with perhaps some degree of expansion into fields related to optics and photography. My own knowledge, as a consumer of its products, is in relation to cameras and associated lenses. The exhibits to the Wilson declaration of web pages downloaded from the Opponent’s website show use largely in respect of cameras and lenses, although they include also the referred-to “sports optics”, photography workshops and equipment care and repair services. Similarly the majority of advertisements in print and online media relates to cameras and associated lenses.

1. It is the very strength of the reputation of NIKON in respect of cameras and associated lenses that I find weighs against the likelihood of confusion with IKON in respect of the various specified beverages. As noted by the Registrar’s delegate in Flight Centre Pty Ltd v World Flight Centre Pty Ltd[7] “Reputation can thus be a double-edged sword and may either reinforce or mitigate the effect of differences”. The same delegate also noted in Matthew Wherrett v Holley Performance Products that “those who know of the opponent will be immunized, by the very character of their knowledge, against any deception or confusion about the connection with the applicant”[8].

   [7] [2003] ATMO 60.

   [8] [2004] ATMO 9.

2. Accordingly, although the Opponent’s trade mark has, and had by the filing date, acquired a very strong reputation in a particular industry, I am not persuaded that because of that reputation deception or confusion is likely to ensue by the use of the Trade Mark by the Applicant for the specified beverages. As such, the ground under section 60 fails.

Section 59

1. The Opponent did not nominate section 59 in the Notice or apply for its inclusion by having the Notice amended, nor did it address section 59 in the evidence in support. The Applicant therefore was not on notice that the question of its intention was in issue and has not had a reasonable opportunity to respond. As such I consider it inappropriate to address the ground, although I will note that the Opponent’s very brief submissions regarding section 59 are largely based on conjecture and do not in any way shift the onus to the Applicant.

Decision and costs

1. Section 55 provided, at the date the application was filed:

   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 Opponent has not established any of the grounds of opposition and the opposition fails. Accordingly, I direct that trade mark application 1485903 may proceed to registration after one month from the date of this decision.

3. If the Registrar is served with a notice of appeal on or before that time, I direct that registration shall not occur until the appeal has been discontinued, or in the event of a decision from the Court, that the application be subject to the Court’s orders.

4. The Opponent sought an award of costs in its favour. However as it has not succeeded in its opposition I decline its request.

Nicole Worth
Hearing Officer
Trade Marks Hearings
04 June 2014