Nikon Corporation v Nison Engineering Co Pty Ltd

[2014] ATMO 95

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 1530953 - NISON logo - in the name of Nison Engineering Co Pty Ltd.

Delegate:
Representation:

Decision:

Deirdre O’Brien
Hearing by written submission
  Opponent: Written submissions by Spruson & Ferguson
  Applicant: No submissions
2014 ATMO 95
s52 opposition to registration – grounds pursuant to sections 44 and 60 considered – neither ground established – registration may proceed.

Background

1. Nison Engineering Co Pty Ltd (‘the applicant’) is applying under the Trade Marks Act 1995 (‘the Act’) for registration of the trade mark hereunder:

   Trade Mark No:         1530953

   Filing Date:                12 December 2012

   Trade Mark:                 (‘the Trade Mark’)

   Goods & Services:     Class 6

   Shop display fittings of metal (other than furniture); Shop fitting apparatus of metal (other than furniture); Shop fittings of metal
   Class 7
   Refrigeration compressors
   Class 11
   Commercial refrigeration units; Refrigerating machines for use in industrial refrigeration; Refrigeration cabinets for alcoholic beverages; Refrigeration cabinets for non-alcoholic beverages; Refrigeration in the form of benches; Refrigeration installations; Refrigeration units; Extractor hoods for kitchens; Kitchen ranges (ovens); Kitchen stoves
   Class 20
   Kitchen cabinets; Kitchen display units; Kitchen furniture; Kitchen tables; Kitchen units; Shop fixtures (furniture); Trays being parts of shop display furniture
   Class 37
   Installation of catering equipment; Maintenance of domestic refrigeration; Installation of kitchen appliances; Installation of kitchen equipment; Kitchen equipment installation; Renovation of kitchens; Repair of kitchen appliances

2. Following examination the Trade Mark was accepted for possible registration and advertised as such in the Australian Official Journal of Trade Marks.  Nikon Corporation (‘the opponent’) has opposed registration as allowed by section 52 of the Act. In support of its opposition the opponent is relying on a declaration dated 16 December 2013 by Daniel Wilson, a trade marks attorney in the employ of Spruson & Ferguson, the opponent’s legal representative, with exhibits DJW-1 to 23.

3. The applicant did not file evidence in answer to the opposition.

4. The parties were given an opportunity to request a hearing.  The opponent asked for a hearing on the written record and filed written submissions to support its evidence.  The applicant did not respond. 

5. I am a delegate of the Registrar of Trade Marks and I am to decide the opposition as required by section 55 which provides that, 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.

Relevant date & onus

1. The rights of the parties are to be determined as at the date of application[1] which is generally, but not always, the filing date.[2] The opponent bears the onus of establishing the grounds of opposition.[3]  The standard of proof is the balance of probabilities.[4] 

   [1] Southern Cross Refrigerating Co v Toowoomba Foundry Pty Ltd (1954) 91 CLR 592.

   [2] See sections 6, 12 and 72 of the Act

   [3] Food Channel Network Pty Ltd v Television Food Network GP (2010) 185 FCR 9 at [32]

   [4] Pfizer Products Inc v Karam (2006) 70 IPR 599 per Gyles J at [6] to [26]. See also Chocolaterie Guylian N.V. v Registrar of Trade Marks (2009) 82 IPR 13 per Sundberg J at [22] to [27] and Fry Consulting Pty Ltd v Sports Warehouse Inc (No 2) (2012) 94 IPR 551 per Dodds-Streeton J at [13].

Grounds of opposition

1. The grounds nominated by the opponent in its statement of grounds and particulars (‘the statement’) are those pursuant to sections 42, 44, 60 and 62A of the Act. Of those the opponent has only made submissions in relation to the section 44 and 60 grounds although it states that it does not abandon the remaining grounds. On my estimation its evidence does not support either of the section 42 or 62A grounds and I find that they have not been established.

2. The opponent has also made submissions about the ground of opposition pursuant to section 59 but it did not nominate that ground in its statement.  Accordingly it is not entitled to rely on it and I have not considered it in coming to my decision.

3. Before I consider the section 44 and 60 grounds, I will address the following submissions made by the opponent in relation to oppositions, such as the present proceeding, which have not been contested by the applicant.

   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).

1. I agree with the first submission.  It is not the Registrar’s role to act as an advocate for either party.  However the second submission is no longer correct.  As indicated by Hearing Officer Nicole Worth in Nikon Corporation v Andrew Lovric[5] under the current legislation the onus is firmly on the opponent to make out its opposition on the balance of probabilities and if there is any doubt that it has done so, registration must proceed.

Section 44 ground – trade mark identical with or deceptively similar to trade mark of earlier application or registration

[5] [2014] ATMO 48 at [15]

1. Section 44 relevantly provides:

   (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[6] for the registration of the applicant’s trade mark in respect of the applicant’s goods is not earlier than the priority date for the registration of the other trade mark in respect of the similar goods or closely related services.

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

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

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

   (ii)a trade mark whose registration in respect of similar services or closely related goods is being sought by another person; and

   (b)the priority date for the registration of the applicant’s trade mark in respect of the applicant’s services is not earlier than the priority date for the registration of the other trade mark in respect of the similar services or closely related goods.

   [6] The priority date is defined in section 12 of the Act as the ‘date of registration’. In most cases it is the same as the date on which the application for registration was filed. See section 72 for a detailed explanation of ‘date of registration’.

2. In order to establish section 44 the opponent needs to show that there is an earlier trade mark application or trade mark registration in the name of another person for similar or closely related goods or similar or closely related services, where the trade mark is substantially identical with, or deceptively similar to, the Trade Mark.

3. The statement nominates the following of the opponent’s trade marks in relation to this ground:

No.	Trade Mark	Class	Priority date
906783	7, 9, 10	28/09/2001
1104788	7, 9, 11, 37, 40	01/04/2004
1459971	1, 5, 7, 9, 10, 11, 14, 16, 18, 21, 24, 25, 28, 30, 37, 41, 42	15/11/2011
1488103	Nikon	1, 9, 10, 11, 14, 16, 21, 25, 28, 40, 41, 42	27/04/2012

1. All the cited trade marks have earlier priority dates than that of the Trade Mark.

2. Similar goods and similar services are defined in section 14 of the Act as follows:

   (1) For the purposes of this Act, goods are similar to other goods:

   (a) if they are the same as the other goods; or

   (b) if they are of the same description as that of the other goods.

   (2) For the purposes of this Act, services are similar to other services:

   (a) if they are the same as the other services; or

   (b) if they are of the same description as that of the other services.

3. The opponent submits that the applicant’s goods and services ‘are the same or closely related’ to the following goods and services of cited trade marks 1459971:

   Machines and machine tools; motors and engines (except for land vehicles) in class 7

   Apparatus for lighting, heating, steam generating, cooking, refrigerating, drying, ventilating, water supply and sanitary purposes; electric coffee makers; humidifiers; LED flashlights; electric toasters in class 11

   Building construction; repair; installation services; repair or maintenance of electronic machines and apparatus in class 37

and 1104788:

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; repair or maintenance of electronic machines and apparatus and their parts; machinery installation; construction; repair or maintenance of freezing machines and apparatus; repair or maintenance of machines and apparatus for processing foods or beverages; repair or maintenance of cooking apparatus for industrial purposes; repair or maintenance of industrial washing machines; repair or maintenance of water purifying apparatus, repair or maintenance of waste compacting machines and apparatus, repair or maintenance of waste crushing machines and apparatus; repair or maintenance of gas water heaters; repair or maintenance of non-electric cooking heaters; repair or maintenance of electric cooking heaters; repair or maintenance of cooking pots and pans in class 37

1. It is immediately obvious that the following of the applicant’s goods and services are the same as some of those nominated by the opponent:

   Class 7

   The applicant’s goods are a type of machine.

   Class 11

   All the applicant’s goods are apparatus for cooking, refrigerating and ventilating.

   Class 37

   The applicant’s services ‘repair of kitchen appliances’ are the same as the opponent’s ‘Repair or maintenance of consumer electric appliances; repair or maintenance of freezing machines and apparatus; repair or maintenance of machines and apparatus for processing foods or beverages; repair or maintenance of non-electric cooking heaters; repair or maintenance of electric cooking heaters; repair or maintenance of cooking pots and pans’.

2. It is not immediately obvious why any of the applicant’s goods and services are closely related to the goods and services nominated by the opponent. Before I give this issue more detailed consideration, it is convenient to turn to the respective trade marks and the matter of whether they are, as the opponent submits, deceptively similar. If I find that they are not, the section 44 ground fails and it will not be necessary for me to consider the goods and services any further.

1. Deceptively similar trade marks are defined by section 10 of the Act as follows:

   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. According to the opponent:

   The relevant principles to apply in considering deceptive similarity were set out in Australian Woollen Mills Ltd v FS Walton and Co Ltd (1937) 58 CLR 641:

   ...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 … for which the protection … is sought. The impression or recollection which is carried away or 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…

   With the above principles in mind, it is submitted that the Applicant’s Trade Mark NISON and a number the Opponent’s prior marks for NIKON are deceptively similar to each other because:

   ·     The stylisation of the Applicant’s Trade Mark is trifling and it is clear that a consumer would see the Applicant’s Trade Mark as the word ‘NISON’.

   ·     The trade marks have identical prefixes.

   ·     The trade marks share the same number of letters.

   ·     The trade marks have identical suffixes.

   ·     Consequently and taking into account the doctrine of imperfect recollection, the chances of confusion between the two marks are high. In other words, there is a ‘real and tangible danger’ that the average Australian consumer seeing or hearing the competing marks may be confused or deceived into the impression or recollection that the trade marks NISON and NIKON are the same or at least related, particularly taking into account the doctrine of imperfect recollection (refer Re JWC (INT) Ltd (2009) 82 IPR 583 and Registrar of Trade Marks v Woolworths Ltd (1999) 93 FCR 365 at 382).

   ·     There is a long list of relevant case law where trade marks sharing all of the above similarities have been found to be deceptively similar (refer Wyndella Pty Ltd v C Sparks-Carroll, C Baffsky (2007) ATMO 70 (HEALTHEWAY and HEALTHWAY); Greenpeace Australia Pacific Ltd v Taylor (2004) 62 IPR 617 (GREENPIECE and GREENPEACE); Sanfoi-Synthelabo v Lohman Animal Health GmbH & Co KG (2003) ATMO 68 (AVIPRO and AVAPRO); Sartek Pty Ltd’s Application (1991) 22 IPR 317 (SARTEK and SASTEK); Sportscraft Consolidated Pty Ltd v General Sportscraft Co Ltd (1993) 27 IPR 74 (SPORTCRAFT and SPORTSCRAFT); Mulford Plastics Pty Ltd v # V Partecipazioni Industriali SpA (1995) 32 IPR 557 (POLIVIC and POLYVIC); and Canon Kabushiki Kaisha v Brook (1996) 36 IPR 88 (CANNON and CANON).

3. The opponent has made no submissions in relation to the ‘course of business and the way in which the particular class of goods are sold’.  As previously noted, I am satisfied that all the applicant’s goods in classes 7 and 11 are the same as those of cited trade mark 1104788 and that some of its services in class 37 are the same as those of cited trade mark 1459971.

4. None of the applicant’s goods in classes 7 and 11 are purchased without a great deal of thought from the consumer who will have most likely compared the products of competing manufacturers and be well aware of what is on the marketplace.  This is not a case of a shopper in the supermarket aisle giving a perfunctory glance at a product before purchase.[7]

   [7] Stuart Alexander & Co (Interstate) Pty Ltd v Blenders Pty Ltd (1981) 37 ALR 161

5. The word in the Trade Mark and the word comprising cited trade mark 1459971 are invented words of no meaning which differ only in their middle letter.  However the differing middle letters do not look or sound the same.  Moreover in the Trade Mark the word is enclosed within a two-tone rectangle which is represented in a manner that gives it a three-dimensional appearance. 

6. I am not satisfied on the balance of probabilities that there is a real tangible danger of consumers being deceived when the Trade Mark is displayed on the applicant’s goods in classes 7 and 11 and confusing it with the cited trade mark.  Nor am I satisfied that they are likely to be caused to wonder whether it indicates goods from the same trade source as those displaying the cited trade mark.  I find that the Trade Mark and cited trade mark 1459971 are not deceptively similar.

7. I turn now to the use of the Trade Mark in relation to the services ‘repair of kitchen appliances’.  In Registrar of Trade Marks v Woolworths Ltd[8] it was noted that when trade marks are not displayed on goods the impression formed of them in verbal use might be more important than the impression based on their appearance and I consider that to be the case here. 

   [8] (1999) 45 IPR 411 at 421

8. The Trade Mark and cited trade mark 1104788 are what is known as composite trade marks, each containing a graphical element as well as a word.  It is generally accepted that when referring to a composite trade mark verbally consumers will use the word(s) appearing in the trade mark[9] although in some cases an attempt may also be made to describe the graphical element.[10]  In the present matter I consider that consumers will refer to the Trade Mark using the word NISON and that they will refer to the cited trade mark using the word NIKON as those words are the prominent and essential features of each trade mark.

   [9] Australian Law of Trade Marks and Passing Off at [30.1540] Copyright © 2013 Thomson Reuters (Professional) Australia Limited

   [10] See, for example, Crazy Ron’s Communications Pty Ltd v Mobileworld Communications Pty Ltd (2004) 61 IPR 212 at [98]

9. In London Lubricants (1920) Ltd’s Appn Sargant LJ noted:[11]

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

The first syllables of NISON and NIKON commence with the same letters but their different final letters means they do not sound alike.  S is a soft sibilant while K is a hard plosive.  As a result I consider that in verbal use the Trade Mark and cited trade mark 1104788 do not sound sufficiently alike such that there is a real likelihood of deception or confusion occurring. 

[11] London Lubricants (1920) Ltd’s Appn (1925) 42 RPC 264 at 279 (CA UK):

1. The Trade Mark is not deceptively similar to either of the cited trade marks. The opponent has thus failed to establish the section 44 ground.

Section 60 ground – use of trade mark likely to deceive or cause confusion because of the reputation of another trade mark in Australia

1. Section 60 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. The date at which the opponent has to establish that another trade mark had acquired a reputation in Australia is 12 December 2012.  The opponent must establish the reputation of that trade mark as a matter of fact.[12]  Reputation can, for example, be demonstrated through direct evidence of consumer appreciation or it can be inferred from sales and advertising figures.[13]  The reputation must be reputation as a trade mark.[14]

   [12] ConAgra Inc v McCain Foods (Aust) Pty Ltd (1992) 23 IPR 193 at 234

   [13] McCormick & Co Inc v McCormick (2000) 51 IPR 102 at 127

   [14] Fry Consulting Pty Ltd v Sports Warehouse Inc (No 2) (2012) 94 IPR 551 at [131]; Subafilms Ltd v Tenancy Management Pty Ltd (2006) 68 IPR 196

1. The opponent is relying on the reputation of its NIKON trade mark which it submits is established by the information contained in the declaration by Daniel Wilson.  I note that the reputation of this trade mark as at 17 April 2012 was considered by Hearing Officer Worth in Nikon Corporation v Andrew Lovric.[15]  She was satisfied ‘that the NIKON trade mark had acquired a reputation in Australia in respect of cameras and associated lenses’ by that date.  I am satisfied by the Wilson declaration that the reputation also encompasses camera parts and accessories including flashlights.

   [15] [2014] ATMO 48 at [15]

2. Given this reputation, if the Trade Mark were to be used in relation to cameras and camera parts and accessories including camera lenses and flashlights, consumers may mistake it for the opponent’s trade mark as they have been conditioned to expect the latter to appear on those goods.  However none of the applicant’s goods fall into that category, or even into the general category of photographic goods.

3. The opponent submits:

   [W]e refer to the judgement in Twentieth Century Fox Film Corp v South Australian Brewery Co Ltd ((1996) 34 IPR 225), where Fox Films was able to show that part of its reputation resided in its extensive and consistent brand extension. Similarly, the Opponent has demonstrated that it too has engaged in brand extension and has done so for many years, across many, diverse industries.

   We note that the Opponent has advertised its NIKON trade marks through various sporting and cultural events. There is, therefore, an acceptance on the part of the Australian consumer that it may be exposed to the NIKON trade mark in many areas and in relation to a large number of diverse industries.

   The reputation enjoyed by the Opponent has extended well beyond the goods for which the NIKON trade mark was originally used in Australian in 1959. There is, due to the extensive brand extension already undertaken by the Opponent, an expectation amongst Australian consumers for this brand extension to continue further.

   In light of the Opponent’s significant reputation, history for brand extension and the similarity between the Applicant’s Trade Mark and the NIKON trade mark(s), it is likely that the use of the Applicant’s Trade Mark will lead to deception or confusion amongst Australian consumers.

4. According to Mr Wilson, in addition to cameras the opponent has used its NIKON trade mark ‘in relation to various goods and services including optical products such as imaging related products, binoculars, ophthalmic lenses, and industrial precision machines such as semiconductor exposure systems, liquid crystal exposure systems, microscopes, measuring instruments and services associated with these goods.’  He declares that the opponent operates globally in seven major areas namely:

   ·     Precision Equipment Business, producing, amongst other things, IC and LCD steppers and scanners;

   ·     Imaging Products Business, producing, amongst other things, cameras, lenses, accessories, software, binoculars and range finders;

   ·     Instruments Business, producing, amongst other things, microscopes, surveying systems, inspection equipment and measuring instruments;

   ·     Customised Products Business, producing, amongst other things, customised optical equipment and accessories;

   ·     Glass Business, producing, amongst other things, silica glass and substrates for LCD;

   ·     Encoder Business, producing, amongst other things, encoders, micrometre systems and rotary encoders; and

   ·     Ophthalmic Lens Business, producing, amongst other things, lenses and hearing aids.

5. Exhibit JRW-3 to his declaration substantiates use of the trade mark in Australia in relation to binoculars, telescopes, range finders, film scanners, software for use in photography and training courses in photography, in addition to its core business of ‘cameras and photographic lenses’.  Exhibit JRW-7 shows use of the trade mark in relation to support services offered to full-time professional photographers who use NIKON equipment.

6. I agree with the opponent that Australian consumers are likely to expect the opponent to expand the range of goods on which it uses its trade mark and not limit its use to those for which the trade mark has a reputation.  However, in my view the reputation will only carry over when the trade mark is used on goods relevant to the areas of business identified by Mr Wilson at paragraph 35 of these reasons.  Consumers are likely to expect the opponent to extend use of its brand to optical and ophthalmic products, as well as precision measuring equipment, and to services associated with such goods.  They will not, in my estimation, expect the opponent to be offering kitchen and catering equipment and machines.  The opponent has a tenuous link to the cooking and catering industry through its sponsorship of the television series ‘MasterChef’ in 2011.  However, that sponsorship was as ‘the official camera of Masterchef’ and not as a manufacturer or repairer of kitchen equipment.

7. I find that consumers are not likely to expect the opponent to use its well-known trade mark in connection with the goods and services of the present application. Taken together with the differences in the respective trade marks, I am not satisfied there is a real, tangible danger of deception or confusion occurring through the applicant’s use of the Trade Mark. The opponent has failed to establish the section 60 ground.

Decision

1. As the opponent has failed to establish a ground of opposition, I direct that trade mark no. 1530953 may proceed to registration after one month from the date of this decision has expired.  If the Registrar is served with a notice of appeal before registration occurs, I direct that registration may not proceed until the appeal is discontinued or, in the event of a decision by the court, if registration is contrary to any court order. 

Costs

1. The opponent has asked for an award of costs in its favour.  The general rule is that costs follow the event.  As the opponent has not succeeded with its opposition, I decline its request.

Deirdre O'Brien
Hearing Officer
Trade Marks Hearings
2 October 2014