Nikon Corporation v Nikkon Lighting Pty Ltd

[2017] ATMO 21

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 1394487(11) - NIKKON - filed in the name of Nikkon Lighting Pty Ltd.

Delegate:

Heath Wilson

Representation:

Opponent: Daniel Wilson of Spruson & Ferguson.

Applicant: Michelle Calder of IP Wealth.

Decision:

2017 ATMO 21

Opposition to registration under section 52 of the Trade Marks Act 1995 – grounds under sections 44 and 60 pursued – trade marks substantially identical – provisions of section 44(3) considered - section 44 established - Trade Mark refused registration.

Background

1. This is an opposition to the registration of a trade mark under section 52 of the Trade Marks Act 1995 (‘the Act’). The trade mark application that is the subject of this opposition was filed on 25 November 2010 (‘the filing date’) and its current details are set out below:

   Trade Mark No. 1394487

   Trade Mark: (‘the Trade Mark’)

   Specification of Goods:

   Class 11: Lighting fixtures (other than for photographic use)

   Owner: Nikkon Lighting Pty Ltd (‘the Applicant’)

2. The Trade Mark was examined under section 31 of the Act and subsequently accepted for possible registration. Advertisement of the acceptance appeared in the Australian Official Journal of Trade Marks on 1 November 2012. Afterwards, the following relevant events occurred:

• 1 May 2013 – Notice of Intention to Oppose filed by Nikon Corporation (‘the Opponent’).

• 31 May 2013 – Opponent filed Statement of Grounds and Particulars (‘SGP’) nominating grounds of opposition under sections 44 (TM No. 1104788), 60, 42(b) and 62A of the Act.

• 22 July 2013 – Applicant filed Notice of Intention to Defend.

• Evidence in Support was filed comprising the statutory declaration of Tracey Berger (Principal of Spruson & Ferguson) made 28 October 2013 with exhibits TB-1 to TB-23 (‘Berger declaration’).

• Evidence in Answer was filed comprising the statutory declaration of Wong Chaw Meng (Director of the Applicant) made 31 January 2014 with exhibits 1 to 16 (‘Meng Declaration’).

• Evidence in Reply was filed comprising the declaration of Brecht Robert Olga Valcke (paralegal of Spruson & Ferguson) made 10 June 2014 with exhibits BV-1 to BV-6.

• 22 August 2014 - the specification of goods in class 11 of the application was amended to exclude lighting fixtures for photographic use.

• By 8 September 2014, both parties had requested to be heard on the matter.

• On 8 July 2015, the parties applied for, and were granted, a cooling off period.

1. After the expiration of a second cooling-off period, the opposition was set down to be heard and I was allocated to hear and decide the matter as a delegate of the Registrar of Trade Marks. In that capacity, I issued directions for the provision of written submissions, and heard the opposition in Canberra on 2 December 2016.

2. The Opponent was represented by Daniel Wilson of Spruson & Ferguson appearing via video link. The Applicant was represented in person by Michelle Calder and Karla Holzberger of IP Wealth.

3. The Opponent specifically pressed grounds of opposition under sections 44 and 60 of the Act, but did not abandon the grounds under sections 42(b) and 62A. However, the oral submissions were confined to section 44 and 60, and I will address those grounds first.

Onus

1. The Opponent’s written submissions also argued that if there was any doubt regarding whether the Trade Mark would cause deception or confusion, the matter should be resolved against the Applicant.[1] I mentioned at the hearing to Mr Wilson that this is not the current state of the law and highlighted that this issue had been addressed by other hearing officers in at least one previous opposition involving his client.[2] I will therefore not dwell on this point any further here, other than to note that I affirm the relevant comments of the hearing officers in those decisions.

   [1] Referring to the decision of Camelot Design Industries Group Pty Ltd v Bernard Leser Publications Pty Ltd (1987) 9 IPR 596.

   [2] See Nikon Corporation v Andrew Lovric [2014] ATMO 48; and Nikon Corporation v Nison Engineering Co Pty Ltd [2014] ATMO 95.

2. The Opponent bears the onus of establishing at least one of the grounds of opposition on the civil standard of the balance of probabilities.[3] I now turn to the grounds pressed by the Opponent.

Reasons

[3] Telstra Corporation Limited v Phone Directories Company Pty Ltd [2015] FCAFC 156, [133] affirming 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.

Note 1:For deceptively similar see section 10.

Note 2:For similar goods see subsection 14(1).

Note 3:For priority date see section 12.

Note 4:The regulations may provide that an application must also be rejected if the trade mark is substantially identical with, or deceptively similar to, a protected international trade mark or a trade mark for which there is a request to extend international registration to Australia: see Part 17A.

(2)…

(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.

1. In order to successfully establish the ground of opposition under section 44 of the Act, the Opponent must identify an earlier filed trade mark application or registration that is in respect of similar goods or closely related services to the Applicant’s goods and is substantially identical with, or deceptively similar to, the Trade Mark.

2. If the Opponent is able to establish those elements of the ground, the Applicant may nevertheless be able to demonstrate prior continuous use (s 44(4)), honest concurrent use (s44 (3)(a)) of the Trade Mark, or other circumstances (s 44(3)(b)) such that the Trade Mark may proceed to registration under those provisions.  

3. In the SGP, the Opponent referred to one trade mark under section 44 (namely, trade mark no. 1104788). However a list of other trade marks were mentioned under the section 60 ground in the SGP and the Opponent’s evidence in support then referred to around 20 pending or registered trade marks owned by the Opponent. In its written submissions, the Opponent relied on only two trade mark registrations (‘the Opponent’s trade marks’) the relevant details of which are set out below:

Trade Mark No.	Trade Mark:	Priority Date:	Specification of Goods/Services
326470	NIKON	1 Feb 1979	Class 37: Repair services to cameras, lenses, movie cameras, microscopes, profile-projectors, transits, auto-levels, distance measuring instruments, telescopes, binoculars and accessories therefor
1104788 (IR No. 877098)	1 Apr 2004	Numerous goods and services in classes 7, 9, 11, 37 and 40, relevantly: Class 9: lighting apparatus for microscope Class 11: Lamps used for LCD projectors Class 37: repair or maintenance of electric lighting apparatus; repair or maintenance of rotary electric machines, power distribution or control machines and apparatus, electric lamps and other lighting apparatus, batteries and cells, electric or magnetic meters, and testers, electric wires and cables, consumer electric appliances.

1. I note the Opponent’s trade marks have earlier priority dates to the Trade Mark.

‘Similar goods and closely related services’

1. Under section 14(1) of the Act, goods are ‘similar’ to other goods if they are the same, or if they are of the same description, as those other goods. In the current opposition, there was some argument surrounding the scope of the respective specifications of goods. In particular, the debate concerned which goods were encompassed within and therefore similar to the Applicant’s ‘lighting fixtures (other than for photographic use).’ Ms Calder provided dictionary definitions of ‘fixtures’ as a piece of equipment in a fixed position within a building and a ‘lighting fixture’ as the part of a light that is securely attached to the wall or ceiling. In that regard, she argued that there was no similarity with the goods in class 9 and 11 of the Opponent’s trade mark no. 1104788. Mr Wilson took a broader view of the scope of the Applicant’s goods.

2. I note that the exclusion of ‘for photographic use’ in the Applicant’s specification would not affect the consideration of whether the Applicant’s lighting fixtures are similar to ‘lighting apparatus for microscope’ or ‘lamps used for LCD projectors’ because neither of those products are for photographic use. It is possible, from a broad view of a ‘lighting fixture’, that a lighting apparatus for a microscope includes a fixture such that those goods would be defined as ‘goods of the same description’ under section 14(1) of the Act. The same may not be said for lamps for LCD projectors which are a niche product in class 11 and largely differ in the nature, their respective uses and the trade channels through which they are bought and sold.[4]

   [4] Re an Application by John Crowther & Sons (Milnsbridge) Ltd (1948) 65 RPC 369, (372).

3. If there were any doubt as to the similarity of the goods, the consideration of how closely related the Opponent’s services are to the Applicant’s goods resolves that doubt. Although the expression ‘closely related’ does not have a definition within the Act, the decision of Caterpillar Loader Hire (Holdings) Pty Ltd v Caterpillar Tractor Co provided earlier guidance on the issue:

   Although service marks are in their infancy in Australia they may give rise to problems of confusion between service marks themselves, and between goods marks on the one hand and service marks on the other, of greater difficulty and subtlety than has previously been experienced in the case of goods marks alone. It is obvious that there is likely to be confusion if substantially the same or deceptively similar trade marks are used by different proprietors, one for goods and the other for services, where the goods and services are closely related. Examples that present practical difficulties are the sale of goods such as data processing equipment and the sale of programs for their operation; the sale of curtains and furnishing materials on the one hand, and the sewing of curtains on the other, as interior decorators often sell curtains and perform the service of sewing; the sale of clothes on the one hand and tailoring on the other, because the service of custom tailoring is frequently provided in addition to the sale of ready-made clothes; and the sale of educational material on the one hand and educational services (language courses, home study programmes) on the other.[5]

   [5] [1983] FCA 145; (1983) 77 FLR 139, (276).

4. Subsequently, French J made the following comments in the decision of Registrar of Trade Marks v Woolworths (‘Woolworths’):

   The range of relationships between goods and services which may support the designation "closely related" will be limited by the requirement in s 44(2) that there be a substantial identity or deceptive similarity between the potentially conflicting trade marks which attach to them. The relationships may, and perhaps in most cases will, be defined by the function of the service with respect to the goods. Services which provide for the installation, operation, maintenance or repair of goods are likely to be treated as closely related to them. [6]

   [6] [1999] FCA 1020, [38]. [My emphasis in bold]

5. I find that services being the ‘repair or maintenance of electric lighting apparatus’ would include the ‘repair or maintenance of lighting fixtures’ regardless of whether the fixtures were for photographic purposes or not. An analogous approach was taken by the court in the decision of NEC Corporation v Punch Video (S) Pte Limited[7] where Branson J found that services in class 37 of ‘installation, maintenance and repair of communications and electronic equipment’ were closely related to the goods ‘automobile audio-visual entertainment equipment’.

   [7] [2005] FCA 1126.

6. The Applicant’s goods and the associated repair and maintenance services of those goods in the specification for trade mark registration no. 1104788 are closely related. I turn now to the nature and degree of the resemblance between the trade marks, noting the following comments of French J in Woolworths:

   In the end there is one practical judgment to be made. Whether any resemblance between different trade marks for goods and services renders them deceptively similar will depend upon the nature and degree of that resemblance and the closeness of the relationship between the services and the goods in question. It will not always be necessary to dissect that judgment into discrete and independent conclusions about the resemblance of marks and the relationship of goods and services.[8]

   [8] [1999] FCA 1020, [40].

Substantially Identical/Deceptively Similar

1. For substantial identity, the comments of Windeyer J in Shell Co (Aust) Ltd v Esso Standard Oil (Aust) Ltd set out the relevant test for comparison: 

   [the trade marks] should, I think, be compared side by side, their similarities and differences noted and the importance of these assessed having regard to the essential features of the registered mark and the total impression of resemblance or dissimilarity that emerges from the comparison.[9]

   [9] (1961) 109 CLR 407 (414 - 415).

1. In the matter before me, the Trade Mark is NIKKON (ignoring font and colour) and the Opponent’s trade marks differ in either one letter only (the letter ‘K’) or one letter with the addition of some minor visual stylisation. I am also of the view that the trade marks are likely to be pronounced in an identical fashion, despite the slight difference in spelling. In that regard, I refer to the decision of Canon Kabushiki Kaisha v Robert James Brook trading as the Cannon Watch Co & Anor[10] concerning similarities between the trade marks CANNON and CANON, where Tamberlin J found:

   In the present case there is no difference in sound or pronunciation between the two marks, so that one could readily be identified with the other in speech. Moreover, visually and notwithstanding the use by the applicant of a particular colour (red) in most instances (over seventy percent), the differences in spelling and the lower case print, I consider that the two marks are identical in substance. Any difference in dictionary meanings which might be conveyed by the different spellings, is in my view, of no importance. It is unlikely that anyone would pause to consider the meaning of the words, as distinct from their effect as an identifying mark. It is even more unlikely that anyone would pause to analyse the words in any detail or in such a way as to appreciate different meanings as between a "gun" and a "rule". The two marks are in my view substantially identical.

   [10] [1996] FCA 756.

2. The similarities in this matter are greater than in the above case because there is no apparent difference in meaning between the invented words ‘NIKON’ and ‘NIKKON’. The Applicant did attempt to explain the origin of the expression, stating that ‘In 1990, one of the directors of the Malaysian company Success Electronics & Transformer Manufacturer SDN & BHD (‘SETM’)[11] chose the Trade Mark as it had attributes of an attractive and appealing trade mark.’[12] However, this vague explanation does not inform the comparison of the two trade marks nor explain the evident similarities between two brands consisting of an invented word.   

   [11] The Applicant is the Australian subsidiary of SETM.

   [12] Statutory declaration of Wong Meng [72].

3. The minor visual difference of the additional letter ‘K’ in the middle of the Trade Mark is a difference easily overlooked, even when comparing the trade marks side-by-side. Neither does the addition of the stylised background to the word NIKON in the Opponent’s second trade mark substantially affect the identity of the mark overall.

4. I find that the Trade Mark and the Opponent’s trade marks are substantially identical. As a consequence, the ground of opposition under section 44(1) has been established subject to a consideration of the exceptions available under the provisions of section 44(3) of the Act.

5. The Applicant did not press the application of section 44(4) of the Act as there is no evidence of use of the Trade Mark before the priority date of the Opponent’s trade marks.

Section 44(3)(a): Honest Concurrent Use

1. Kenny J in the McCormick decision summarised the relevant considerations for the application of honest concurrent use under section 44(3)(a) of the Act. They are:

(a) the honesty of the concurrent use;

(b) the extent of the use in terms of time, geographic area and volume of sales;

(c) the degree of confusion likely to ensue between the marks in question;

(d) whether any instances of confusion have been proved; and

(e) the relevant inconvenience that would ensue to the parties if registration were to be permitted. [13]

[13] McCormick & Company Inc. v McCormick [2000] FCA 1335, [30] (‘McCormick’).

1. In respect of the above considerations, I note that the Applicant has not made a definitive statement regarding the honesty of its trade mark use. Despite Mr Wilson’s submissions on this point (and the reference to office practice in this regard under Part 28.3.3 of the Trade Marks Office Manual of Practice and Procedure), I am not convinced that the Applicant omitting to provide a positive statement regarding their awareness of the Opponent’s trade mark should result in a finding that any concurrent use was dishonest and the further conclusion that the honest concurrent user provisions cannot be applied on that basis. Undoubtedly, the onus is on the Applicant to satisfy the Registrar of the honesty element of section 44(3)(a), and as mentioned earlier, the Applicant has supplied some information on the adoption of the Trade Mark in Australia. There is nothing in the evidence to cause me to doubt the honesty of the adoption of the trade mark, nor its subsequent use.

2. Turning to the extent of the use in the Applicant’s evidence, the Meng declaration provides evidence that the Applicant commenced using the Trade Mark in Australia from May 2007 and that it has been used in all Australian states.[14] The Applicant also owns a number of international trade mark registrations for the same trade mark for similar goods in class 11 of the NICE International Classification of Goods and Services. The Applicant argued that its international trade marks co-exist in those jurisdictions with the Opponent’s trade marks. However, I am not aware of the circumstances of any alleged co-existence surrounding the registrations. In addition, accepting the differences in overseas trade marks legislation from Australian trade marks law, I find that I cannot give any weight to the arguments that the trade marks should co-exist for that reason.  

   [14] Meng declaration, [78].

1. Exhibits 4 to 6 of the Meng declaration comprise invoices and bills of lading for products shipped from SETM in Malaysia to the Applicant’s Australian distributors. The dates of the invoices range from March 2007 up until the priority date of the Trade Mark. As the Opponent has pointed out, some of the invoices contain a number of brands listed at the bottom (‘QPS’, ‘NIKKON’, ‘SUPER-LITE’, ‘SES’, ‘LIKO’ and ‘IBC’) and the destination of the shipments is not always clear. However, I am satisfied that the Applicant’s evidence demonstrates use of the Trade Mark in Australia upon or in relation to what appear to be industrial lighting fixtures (some examples include: ‘NIKKON floodlight empty casing’  and ‘MH 400W NIKKON IP65 Highbay COM40IP65’).

2. The evidence contained in the Meng declaration from exhibit 7 onwards is either undated or occurs mainly after the priority date of the Trade Mark. In relation to post priority date evidence, Dodds-Streeton J in Tivo Inc. v Vivo International Corporation Pty Ltd found:

   The date for the purposes of s 44(3)(a) is the date of the application, in this case 18 February 2008. In Hills Industries, Lander J held that evidence of honest concurrent use after the priority date was not relevant to an application under s 44(3)(a). While acknowledging some contrary decisions of delegates, and obiter of Hammond J in VB Distributors and Carr J in PB Foods v Malanda Dairy Foods Ltd [1999] FCA 1602; (1999) 47 IPR 47 (“PB Foods”), Lander J nevertheless concluded at [163] and [164]:

   In my opinion, evidence of concurrent use after the priority date is not relevant in regard to an application under s 44(3)(a). Section 44(3)(a) is only engaged if a finding has been made under s 44(1). It is agreed that the evidence relevant to an opposition under s 44(1) for the registration of a trade mark is evidence prior to the priority date. It would be most unusual if, having determined that the applicant’s trade mark was deceptively similar to the trade mark registered by another person in respect of similar goods at a particular time, the registrar or the court, as in this case, is entitled to exercise its discretion in favour of the applicant having regard to use of that mark at a different time.

   It seems to me that s 44(3)(a), which allows the exercise of discretion if there has been an honest concurrent use of the two trade marks, is speaking of the same time as s 44(1), that is, before the priority date. Such a conclusion is consistent with Southern Cross and the assumption made by Kenny J in McCormick at [30]–[31] who when addressing s 44(3)(a) and citing decisions of the registrar said that the rights of the parties are to be determined as at the date of the application for registration.

   As recognised in Conde Nast Publications Pty Ltd v Taylor [1998] FCA 864; (1998) 41 IPR 505 at 509, Johnson & Johnson at 439, McCormick, Guylian and like authority, evidence of events after the priority date may be admitted to illuminate the likelihood of confusion as at the priority date. In the present case, both TiVo and Vivo sought to rely on evidence of confusion or an absence thereof after the priority date for that purpose.[15]

   [15] Tivo Inc. v Vivo International Corporation Pty Ltd [2012] FCA 252, (244 to 245).

3. I note that some of the evidence in the Meng declaration refers to the Applicant’s sales of products that appear to parts other than fixtures including ‘NIKKON Lamps’ and ‘NIKKON tubes’ (e.g. ‘70W Metal Halide Floodlight – Complete with Rx7s Nikkon tube’).

4. Some advertisements from 2010 depict use of the Trade Mark accompanied with the tagline ‘Light up the World’ in relation to industrial floodlights and fluorescent lamps.[16] Other subsequent advertisements for coded products in exhibits 10 and 11 appear to only use the Applicant’s company name ‘Nikkon Lighting Pty Ltd’, rather than the Trade Mark in relation to the claimed goods.

   [16] Meng declaration, exhibit 9.

5. Exhibit 12 demonstrates use the Trade Mark from an electrical wholesaler including use on the storefront. Once again, dates are absent, as is the location of the showroom. Exhibit 13 to the Meng declaration provides use in Australia from September 2013 of the Trade Mark on floodlights accessed through an Australian distributor’s website (‘

6. With regard to the extent of sales, there appears to be around three years of use before the priority date of the application, but I am not convinced that the demonstrated use absent sales and advertising figures is sufficient to justify the application of the provision. The deficiencies in the Applicant’s evidence should also be viewed in light of the high likelihood of confusion between the trade marks arising from the fact that the trade marks are not only deceptively similar but substantially identical.

7. It may be the case that the Opponent has not yet used its trade marks in relation to the conflicting goods and services identified above. However, under section 44, the Registrar is required to postulate a notional use of the trade marks in relation to the goods and services and it is for the Applicant to satisfy the Registrar that its Trade Mark may proceed to registration in the face of the likelihood of notional deception or confusion in the Australian marketplace. The absence of actual instances of confusion is not determinative but the presence of actual deception will likely inform the ultimate decision. Here, there are no demonstrated instances of confusion either from overseas use or within Australia.

8. I do not need to address the possible reasons for the lack of demonstrated instances of confusion in the marketplace since the demonstrated use of the Trade Mark before the priority date is in my view not sufficient for the application of honest, concurrent use. Neither is the use shown after the priority date helpful in shedding further light on the position at filing. I am not satisfied that the use of the Trade Mark to the relevant date outweighs the high likelihood of confusion arising from the use of substantially identical trade marks with closely related goods and services. I find that the exception under section 44(3)(a) of the Act should not be applied to the Trade Mark.

S44(3)(b): Other Circumstances

1. In written submissions for the Applicant, Ms Calder also argued that the ‘other circumstances’ which make it proper for the Registrar to allow the Trade Mark to proceed to registration include:

• The Applicant’s Trade Mark is the name of the Applicant.

• The Applicant has used the Applicant’s Trade Mark in Australia since 2007;

• The Opponent has never provided similar goods or services to the Applicant and has never used the Opponent’s Trade Mark on similar goods or services;

• The Applicant’s Trade Mark is registered in 14 countries with the earliest registration being in March 1998;

• The Applicant’s Trade Mark and the Opponent’s Trade Mark are both registered in 13 countries and co-existing; and

• The Applicant’s Goods are narrow and specifically exclude the Opponent’s goods.

1. In relation to the first point, I am unsure of the significance of the Trade Mark also being the name of the Applicant (the name of the Applicant is Nikkon Lighting Pty Ltd) for the purposes of accepting a trade mark under the ‘other circumstances’ provision. There is reference in the Applicant’s submissions to the Indian decision of London Rubber Co Ltd v Durex Products Inc. AIR (1959) Cal 56 - the operative passage being:

   In the first instance the word 'Durex' is the name of the company itself. The company used its own name on its own product which every company should be entitled normally to use unless there be cogent reasons against it.

2. To the extent that the above quote taken in context applies to Australian trade marks law, there are certain distinctions between use of a company name in Australia and the use of a Trade Mark. I am not convinced by the Applicant’s argument here. In addition, I have already mentioned the extent of the Applicant’s Trade Mark use under the honest concurrent user provision, the issue of notional use and the likelihood of confusion, and also the significance of the Applicant’s overseas trade mark registrations.

3. In short, I am not satisfied that any of these factors alone or in combination, make it proper to allow the Trade Mark to proceed to registration under the provisions of section 44(3)(b) of the Act. Accordingly, I find that the ground of opposition under section 44(1) has been established.

Decision

1. Section 55 of the Act relevantly provides:

55 Decision

(1)Unless subsection (3) applies to the proceedings, the Registrar must, at the end, decide:

(a)to refuse to register the trade mark; or

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

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

Note:For limitations see section 6.

1. The Opponent has established a ground of opposition under the Act on the balance of probabilities. As a result, I refuse to register trade mark application no. 1394487.

Costs

1. As the Opposition has been successful and costs ordinarily follow the event, I award costs against the Applicant under section 221 of the Act in line with the amounts set out under Schedule 8 of the Trade Marks Regulations 1995.

Heath Wilson

Hearing Officer

Oppositions and Hearings

10 March 2017