Nissan Jidosha Kabushiki Kaisha v Woolworths Limited

[1999] ATMO 66

TRADE MARKS ACT 1995

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

Re:Opposition by Nissan Jidosha Kabushiki Kaisha to the registration of an application by Woolworths Limited for trade mark number 674119 - infiniti

Trade mark application number 674119 was filed by Woolworths Limited, of 540 George Street, Sydney, on 3 October 1995. The trade mark is the word infiniti.  Registration is sought in respect of clocks and watches.  The application was duly examined and, on 12 June 1997, the Registrar advertised that trade mark number 674119 was accepted for registration in respect of all of the goods claimed.  I shall refer to the applicant as Woolworths.

In accordance with the provisions of Part 5 of the Trade Marks Act1995, the application was then open for opposition and, on 11 September 1997, opposition was filed by Nissan Jidosha Kabushiki Kaisha, a company whose principal place of business is Yokohama-shi, Kanagawa-ken, Japan.  I shall refer to this company as Nissan Jidosha.

Details of the hearing

Evidence was served and filed by both parties and, on completion, the agents for the parties asked that the opposition be set down for a hearing. A hearing time was appointed for 20 May 1999 and took place, in Canberra, before me.  The opponent, Nissan Jidosha, was  represented by Mr Ben Fitzpatrick of Davies Collision Cave, patent and trade mark attorneys of Melbourne. The applicant, Woolworths, was represented by Ms Kate Johnston of Spruson & Ferguson, patent and trade mark attorneys of Sydney.

Details of the opposition

The notice of opposition cites grounds under sections 27, 41, 42, 43, 44, 58 and 60 of the Act.  It is supported by two declarations.  The first is from Brett Lewis; Mr Lewis is a member of the firm of Davies Collision Cave.  The second declaration comes from Masahiro Suwa.  Mr Suwa is General Manager of Nissan Jidosha’s Intellectual Property Department.  Woolworths’ evidence in answer consists of a single declaration made by Paul Halton Handby.  He is Woolworths’ National Operations Manager.  The evidence filed by Nissan Jidosha in reply to Mr Handby’s declaration is also a single declaration.  It is made by Fiona Symons. Ms Symons is a solicitor employed by Davies Collison Cave.  

Background

The evidence of the Suwa declaration sets out the history of the opponent, Nissan Jidosha.  The company was established in 1933 and, since that time, has manufactured and sold automobiles using a variety of trade marks including datsun, cedric, primera, pulsar, march, patrol, maxima, sunny and terrano.  It has manufactured and sold cars worldwide. Global turnover since 1979 is in evidence and shows annual achievements of multi-millions of dollars. 

In 1987 Nissan Jidosha created and adopted the word infiniti as a trade mark for a range of new luxury motor vehicles. It is now a registered trade mark, number 468389. This mark covers a broad range of class 12 goods including automobiles.  I mention this only as background since Nissan Jidosha places no reliance of the fact of that registration. 

Nissan Jidosha launched the trade mark infiniti in Japanese in November 1989.  Since then its market territory has expanded and Nissan Jidosha now has infiniti registered in many countries[1].  Use began in Australia in 1993[2] and, according to Mr Suwa, infiniti has, ever since, been in use to identify Nissan Jidosha’s top of the range, high performance, luxury, automobiles. The promotional material typically reads along the following lines[3]:

[1] Exhibit “A”

[2] Exhibits “C”  “D”  “F” and  “K”

[3] Exhibit “I”

Imagine a vehicle whose every aspect reflects a passion for excellence and total attention to detail.  …A prestige sedan with a heritage that springs from traditional values of the world’s finest cars, yet one whose allegiance is to the absolute synthesis of form and function as only the Japanese can provide.  A vehicle that promises to redefine the experience of ownership.  … We anticipated your demands for performance, comfort, control, safety and security and created what is acclaimed as one of the finest prestige performance saloons in the world.

The unit price of these prestige performance saloons lies between $141,865 and $146,865 and the average numbers of infiniti cars sold in each of the five years between 1993 and 1997 is slightly above 26.  This is acknowledged as modest but, Mr Suwa says, luxury cars are not expected to sell in the same numbers as popular inexpensive models.

Nissan Jidosha, as might be expected, has embarked on activities to promote its infiniti range.  An advertisement from the Business Review Weekly of 20 August 1993 is in evidence.  There is also a video recording[4] of (and souvenirs from) a gala launch which took place in Melbourne at the Victoria Arts Centre on 15 August 1993. At this launch Nissan Motor Co. (Australia) Pty Ltd  (Nissan Jidosha’s Australian subsidiary) released the infiniti range to a large audience of invited guests who were then treated to a recital by Dame Kiri Te Kanawa, the internationally renowned diva.  As the video shows, this launch was a spectacular and glamorous event, and was presented to a full house.

[4] Exhibit “J”

Subsequently, television advertisements went to air in 1994.  They are recorded on a second video[5].   The evidence is silent, however, on the length of the promotion campaign, on how often the advertisements were aired and on how many channels they were carried.  A third video[6] records a segment from Today, a program which runs on the Nine Network.  This is a short review of a road test of Nissan Jidosha’s infiniti vehicles and it went to air in 1993.

[5] Exhibit “K

[6] Exhibit “L”

Various of the Suwa attachments show that the infiniti cars are equipped with a clock. It is mounted on the instrument panel.  Exhibit “D” shows an example. Beside this picture a caption reads:

Like the rest of the instrument panel the burnished gold clock complements the elegance of the interior design.

These clocks are clearly labelled with the trade mark infiniti and, apparently they have been a standard feature since 1993.  Also, says Mr Suwa, since 1993, these clocks have been available as spare parts.  He does not, however supply any evidence to corroborate this statement.  He includes no price lists and no catalogues. And there is no evidence that sales of any spare parts have ever taken place.

Mr Handby gives an account of how Woolworths’ adopted and used infiniti as a trade mark for clocks and watches.  That mark was developed and determined in September 1995 and Woolworths filed its application on 3 October 1995.  infiniti is an adaptation of the word infinity or infinitum and is intended to suggest a watch or clock that will work for a long time.  Woolworths began using this trade mark on wrist watches in February 1996.  Advertising material exhibited by Mr Handby includes promotional material dated June, November and December 1996, and May, November and December 1997. In some instances the reproduction of the trade mark is unclear, but this material is uncontroverted and establishes Woolworths’ use of infiniti,  as a trade mark, in respect of watches. 

The watches bearing the Woolworths’ infiniti trade mark sell at $10 or $20 apiece, though, at times, the price is discounted to $7.  They are marketed  through a chain of Woolworths’ discount retail outlets called Crazy Prices.  These inexpensive watches are, apparently, popular. Thousands of them have been sold and between 1996 and 1997 turnover approximates half a million dollars. 

The section 58 ground

Section 58 reads:

1. The registration of a trade mark may be opposed on the ground that the applicant is not the owner of the trade mark.

The acquisition of proprietorship, or ownership, particularly as it relates to the facts of this case, is largely dealt with in Seteff SpA v Riv-Oland Marble Co (Vic) Pty Ltd[7] and The Shell Company of Australia Limited v Rhom and Haas and Another[8].  The basic principles are that the person who, in Australia,  either first used the trade mark for the purposes of trade, or first applied for registration, is the person entitled to claim proprietorship of that mark.  In a line of cases deriving from Hick’s Trade Mark[9], the proprietorship claim established through the making of a trade mark application, can only be supplanted by earlier use if the mark, on which the opponent’s claim rests, is substantially identical with the application trade mark; and the opponent has used that mark for goods which are, in essence, and per the directives of Holroyd J, the same kind of thing as the goods specified in the application. 

[7] (1987) 10 IPR 402 at 413

[8] (1949) 78 CLR 601

[9] (1897) 22 VLR 636

Mr Fitzpatrick points to the Suwa declaration.  This evidence, in summary, shows Nissan Jidosha began to use its infiniti trade mark in 1987 and commenced use in Australia with the August 1993 gala launch and concert.  It used infiniti in respect of luxury vehicles, and continued this use through 1997.  As a standard fixture a clock is mounted on the dashboard of these cars and clearly displayed, on the face of these clocks, is the trade mark infiniti. 

Woolworths filed its application in October 1995, almost two years after the gala launch.  Its use started no earlier than 1996, and that use was confined to watches.

On this evidence, says Mr Fitzpatrick, I should find that Nissan Jidosha’s use took place before Woolworths filed the present application and before it commenced any use of its infiniti mark.  He then asserts that the clocks in the infiniti cars are the same kind of thing as the clocks and watches in Woolworths’ trade mark application.

Ms Johnston submits that the section 58 ground cannot be made out because, she says, the use made by Nissan Jidosha is use in respect of motor vehicles. She says that the Suwa declaration is plainly evidence of a trade in motor vehicles, and that at no time, either before or after Woolworths’ application date, has Nissan Jidosha used its trade mark in relation to any goods which could conceivably be classed as the same kind of thing as the clocks or watches nominated in the Woolworths’ application. 

I agree with Mr Fitzpatrick that the Nissan Jidosha use demonstrated by Mr Suwa satisfies two of the three criteria necessary to upset the Woolworths’ claim. 

• It has used the word infiniti as a trade mark and this word is identical to the trade mark which Woolworths here seek to register.

• The use that Nissan Jidosha relies on took place some two years before Woolworths filed its application; and three years before Woolworths began to use infiniti as a trade mark.

However I am with Ms Johnston on the question of whether this use is on goods that may be regarded as the same kind of thing as clocks and/or watches.

Shanahan D.R[10], at pp158 and 159 addresses the question of how broad a range the expression the same kind of thing will cover when the goods the opponent relies on, are not the same goods as those nominated in the trade mark application.  Mr Shannahan is here referring to the Trade Marks Act 1955 where the relevant section was section 40.  He points to a degree of inconsistency in the Registrar’s approach to the question and he goes on to say:

… the High Court has not as yet upheld a claim of prior use under s 40 when the parties were claiming rights of use for different products, and there would seem to be adequate authority for the view that an opposition based on prior use for significantly different products must be based on s. 28.  [Trade Marks Act 1955]

The case Mr Shanahan points to as an instance where the Registrar varied his approach is Rolewa Rentals Pty Ltd v Champagne Moet et Chandon[11].   Here the delegate contemplated an interpretation which allied the term the same kind of thing with the term goods of the same description.  This approach has not been adhered to in subsequent decisions. In line with Mr Shanahan’s view, I think a departure of that kind is not supported by the Hicks directive.  Further, again as Mr Shanahan notes, there is nothing in the subsequent case law that would require the Registrar to substitute Holroyd J’s directive with the broader test. 

In the present case, in order to make out the third criterion, Nissan Jidosha needs to show then, that the use it made of the infiniti trade mark, prior to 3 October 1995, was on goods which are the same kind of thing as clocks and watches. Nissan Jidosha relies on its trade in luxury motor vehicles.  Luxury motor vehicles are patently not the same kind of thing as clocks and watches.  As Mr Fitzpatrick points out, however, these luxury vehicles include clocks and those clocks bear the infiniti mark.  He contends these clocks are the same kind of thing as any other clocks. Clocks mounted in a vehicle, he says, are the very same thing as any other clock, and so too are those clocks which Nissan Jidosha sells as spare parts. 

I cannot accept Mr Fitzpatrick’s argument.  Nissan Jidosha is a car manufacturer and all the evidence points to the fact that it has used its trade mark in respect of products directly associated with that industry. It is not in the clock or the watch industry, and none of its sales indicate that it has ever put itself about as party to whom one could turn should one wish to purchase either a clock or a watch.  Its trade mark promotion for its infiniti products all points to its performance as a motor vehicle manufacturer.

Certainly, Nissan Jidosha has attached the mark infiniti to clocks in the infiniti cars.     The clock, however, is merely a component of large and expensive vehicles and in the context of a $145,000 motor car it must be regarded as a exceedingly minor component. I am not therefore, prepared to treat the transaction of selling and promoting those vehicles, as equivalent to selling and promoting clocks.  To find otherwise would be tantamount to finding that vehicle sales could upset other traders’ claims in respect of items as disparate as cigarette lighters, air-conditioning units, vanity mirrors and sun shades. All of these may be ancillary features in any kind of vehicle, but all have quite separate and distinct lives away and apart from the automotive industry.  And so do clocks and watches. Plainly Nissan Jidosha has sold cars, and one very minor component part of those cars is a clock. It is also alleged to have sold spare parts. I reject, however, the submission that this motor vehicle trade allows Nissan Jidosha to claim that it is in the business of selling clocks, and I reject the assertion that this use of the infiniti trade mark is in respect of any goods that are the same kind of thing as clocks. 

There no evidence that Nissan Jidosha ever been used infiniti in respect of watches.

I find that Nissan Jidosha has failed to establish that, pre-October 1995, it used its trade mark infiniti in respect of any goods that can be deemed to be the same kind of thing as the clocks and watches nominated in Woolworths’ application. I therefore dismiss the ground that relies on section 58 of the Trade Marks Act 1995

[10] Shanahan D.R., Australian Law on Trade Marks and Passing Off, The Law Book Company Limited, Sydney, 1990, 2^nd edition

[11] Rolewa Rentals  Pty Ltd v Champagne Moet et Chandon  (1985) AIPC 90-238

The section 60 ground

Section 60 reads:

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

   (a)it is substantially identical or deceptively similar to a trade mark that, before the priority date for the registration of the first-mentioned trade mark in respect of those goods or services, had 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.

The component parts of this section as they relate to the present case are that:

• the trade marks must be substantially identical or deceptively similar

• the reputation that Nissan Jidosha relies on must have been acquired before the application date  (3 October 1995)

• that reputation must exist in Australia, and

• in the face of that reputation, Nissan Jidosha needs to show that there is likely to be deception and confusion.

In determining issues under this section the directives of Kitto J per Southern Cross Refrigerating Co v Toowoomba Foundry Pty Ltd [12] continue as good precedent[13].  His Honour’s famous words are that:

[12] (1954) 91 CLR 592

[13] Blount Inc v Registrar of Trade Marks (1998) 40 IPR 498

registration should be refused if it appears that there is a real risk that “the result of the user of the mark will be that a number of persons will be caused to wonder whether it might not be the case that the two products come from the same source”.

Translating that to the subject opposition, I must refuse the application if I find that the reputation established by Nissan Jidosha through use of its trade mark infiniti between 1993 to October 1995, is of sufficient force to generate a real risk that persons, in the process of considering the purchase of clocks and watches that carry the Woolworths’ infiniti trade mark, will wonder whether it might not be the case that the infiniti vehicles and the infiniti clocks and watches come from the same source.

Mr Fitzpatrick points out that the trade mark Nissan Jidosha relies on is identical to the application mark.  He reminds me of the gala launch that Nissan Jidosha staged to release its infiniti car; of the ensuing promotional activities as per the television and Business Review Weekly evidence; of the cost of the vehicles and of the successful sales conducted prior to October 1995. He also draws my attention to the Lewis declaration and evidence that manufacturers of prestige automobiles offer for sale, personal accessories which include watches.  Mr Lewis’ declaration shows that three prestige vehicle manufacturers ¾  BMW, Porsche and Mercedes-Benz ¾ are all  associated with the sale of watches which bear various of their trade marks.  In these surrounding circumstances, Mr Fitzpatrick argues, there is good reason for people to assume a connection between prestige cars and watches, if they display identical trade marks. Here Mr Fitzpatrick reminded me that I previously found that a section 60 ground can be made out if use of the application trade mark in respect of the application goods or services will cause people to wonder whether there is a connection between the proprietors of the two trade marks in question[14].

[14] Photo Disc Inc v Gibson and Another  (1999) 42 IPR 473

Ms Johnston focused her response on the brevity of Nissan Jidosha’s use and on what she says is the very limited nature of the Nissan Jidosha’s reputation.  She point out that Nissan Jidosha had only used its infiniti trade mark for some  two years prior to Woolworths’ priority date. She points out that in this time, no more than 110 cars were sold . The high point, a mere 57 sales, was achieved in the first 12 months - perhaps in the euphoric after-glow of the spectacular launch.  She also points out that the trend of sales, since 1993, has consistently been downwards.   She disputes the effectiveness of Nissan Jidosha’s promotion campaign and says little can be assumed from Mr Suwa’s exhibit of infiniti television advertisements because of the silence on when and where and how often they were aired.  Only one journal advertisement is in evidence.  And, Ms Johnston ventures, the major part of the promotional expenses, nominated by Mr Suwa at $4.3m, is most likely to have been accounted for by the one gala launch and the one and the same celebrity concert. 

Ms Johnston says, on this evidence, I do not have good reason to hold, that as of 3 October 1995, Nissan Jidosha had established a reputation against which Woolworths’ use of its trade mark was likely to cause any deception or confusion.

I think Ms Johnston is right.  I accept that by the critical date, 3 October 1995, Nissan Jidosha had used it trade mark in respect of an impressive product, and in the course of that use had undertaken one quite spectacular promotional activity.  However, I am not satisfied that either the sales or the promotion brought about a public awareness which, so far as clocks and watches are concerned, was (at 3 October 1995) likely to give rise to confusion or deception.  Sales have clearly been confined to a limited population, probably characterised by an atypically high income level.  The publicity seems to me to have been principally limited to one gala night and, so far as the evidence shows,  the knowledge of that event seems to have been limited to participants and invited guests.  The television promotion is subject to the criticism mentioned variously above, and indeed, despite Mr Suwa’s assertion that television advertising was extensive and national, without corroborative material demonstrating just what that might mean, I can give that evidence little weight.

In sum, I am not satisfied that by 3 October1995, Nissan Jidosha had a reputation in its trade mark infiniti that was likely to give rise to deception and confusion should Woolworths use its infiniti  trade mark in respect of clocks and watches.  In the absence of such a reputation the evidence that other prestige car manufacturers use their trade marks on watches and clocks does not materially help Nissan Jidosha. 

In failing to establish the requisite reputation, Nissan Jidosha fails to establish the fourth of the necessary criteria for its section 60 ground.  This ground must therefore fail, and consequently, I dismiss it.

Decision

I have found that the opposition has not established either its section 58 or section 60 ground. No other ground was supported, either with evidence or submissions. The opposition therefore does not succeed. Subject to notice of any appeal I therefore direct that this trade mark application may proceed to registration.

Costs

On this finding, the applicant is entitled to costs as listed in the official scale.  I award them those costs.  On application, costs will be taxed, certified and allowed by a trade marks officer appointed by the Registrar for that purpose (section 202 and regulation 21.13).

Helen R. Hardie
Deputy Registrar

24  June 1999