Northvolt AB v Feline Pty Ltd

[2024] ATMO 36

TRADE MARKS ACT 1995

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

Re:Opposition by Northvolt AB to registration of trade mark application number 2190750 (class 9) - southvolt - in the name of FELINE Pty Ltd.

Delegate:

Nicole Worth

Representation:

Opponent: Davies Collison Cave Pty Ltd

Applicant: Self-represented

Decision:

2024 ATMO 36

Trade Marks Act 1995 (Cth) – opposition under section 52 – grounds of opposition under ss 42(b) 60 of the Trade Marks Act 1995 (Cth) and reg 4.15A of the Trade Marks Regulations 1995 (Cth) pursued – reg 4.15A considered - conceptual similarity of trade marks – trade marks deceptively similar – registration refused

Background

1. On 12 July 2021 FELINE Pty Ltd (‘Applicant’) filed an application to register the following trade mark.

   Trade Mark:  southvolt            (‘Trade Mark’)

   Application No.:              2190750

   Goods:                Class 9: Batteries

2. The application was examined as required by s 31 of the Trade Marks Act 1995 (Cth)[1] and accepted for possible registration. Its acceptance was advertised on 13 December 2021.

   [1] In this decision, all references to a section are references to a section of the Trade Marks Act 1995 (Cth) and all references to a regulation are references to a regulation of the Trade Marks Regulations 1995 (Cth), unless otherwise stated.

3. On 14 February 2022 Northvolt AB (‘Opponent’) filed a Notice of Intention to Oppose registration of the Trade Mark, and on 15 March 2022 it filed a Statement of Grounds and Particulars (‘SGP’), particularising grounds of opposition under ss 42(b) and 60 and reg 4.15A.

4. The Applicant filed a Notice of Intention to Defend the application on 11 May 2022.

5. Thereafter the parties filed their evidence in due course (described in more detail below), and at the end of the evidentiary stage the Applicant requested to be heard by way of written submissions. The Applicant filed its written submissions on 25 January 2024.

6. The matter has now been allocated to me to decide, as a delegate of the Registrar of Trade Marks. I base my decision upon the documents already described, and the evidence detailed below.

Evidence

1. The evidence filed in this opposition consists of the following declarations.

   Evidence in Support

   Declaration by Jessica Murphy, trade mark attorney employed by Davies Collison Cave Pty Ltd, with exhibits JM-1 to JM-7, dated 15 August 2022 (‘Murphy 1’).

   Evidence in Answer

   Declaration by Dr Kymberley Ann Talbot, Executive Director, founder and co-owner of the Applicant, with exhibits KAT-1 to KAT-18,[2] dated 18 November 2022 (‘Talbot’).

   Evidence in Reply

   Declaration by Jessica Murphy with exhibits JM-1 to JM-5, dated 23 January 2023 (‘Murphy 2’).

   [2] Exhibits KAT-6, KAT-18  and paragraphs 23 and 24 of Talbot are marked as confidential.

2. As will be seen, it is not necessary to discuss all facets of the parties’ evidence. However, for the purpose of reinforcing the findings I have made, I note the following.

3. The Opponent is a Swedish battery developer and manufacturer specialising in lithium-ion technology. The Opponent’s LinkedIn page states that Northvolt is ‘on a mission to establish a supply of sustainable batteries in Europe and enable the future of energy’.[3]

   [3] Murphy 1, exhibit JM-1.

4. According to a Wikipedia page about the Opponent,[4] the company was founded in 2015 with the aim to supply the automotive industry with electric vehicle batteries. It changed its name to Northvolt in 2017. It has received significant funding, in the order of billions of dollars, from banks, pension funds and companies including the BMW Group and Volkswagen Group.[5] Construction of a battery factory was commenced in 2019 in Skellefteå, Sweden and (at the time the Wikipedia page was written) a second factory was to be built in Salzgitter, Germany. Also at the time the Wikipedia page was written, commercial production of batteries was to commence at the sites in 2022 and 2023-2024 respectively. The Wikipedia page further states that the opening of the factory in Skellefteå was said to ‘potentially transform subarctic Sweden…’

   [4] Murphy 1, exhibit JM-1.

   [5] Murphy 1, exhibit JM-2, see Sam Shead ‘European Tesla rival Northvolt raises $2.75 billion from Goldman, VW and others’ (9 June 2021) CNBC.

5. The Opponent is the registered holder of Australian protected international trade mark number 1880967, being the trade mark NorthVolt (‘Opponent’s Trade Mark’) in respect of, inter alia, batteries and their development and design.[6] That registration has a priority date of 31 January 2017, based upon the registration of the Opponent’s Trade Mark in the European Union (number 016306276). The Opponent’s registration in the European Union was the basis of two oppositions there involving the trade marks SOUTHVOLT and WESTVOLT (in the name of a third party). In those matters, the European Union Intellectual Property Office (‘EUIPO’) refused to register the trade marks SOUTHVOLT and WESTVOLT for goods relating to batteries, battery component materials and related services, on account of the similarities between the parties’ trade marks. Copies of the EUIPO decisions are adduced.[7]

   [6] The full list of the goods and services of the Opponent’s Trade Mark is at Appendix A of this decision.

   [7] Murphy 1, exhibit JM-7; Murphy 2, exhibit JM-3.

6. The Applicant is based in Queensland and is also focused on battery development and production: it ‘is the only Australian business that produces its own lithium-ion battery cell’.[8] Its Executive Directors, founders and co-owners are Dr Kymberley Ann Talbot and Professor Peter Talbot. Dr Talbot has a doctorate in chemistry and is a registered Patent and Trade Marks Attorney. Professor Talbot has a doctorate in materials science and is an Adjunct Professor at the Queensland University of Technology.  Professor Talbot ‘has an extensive background in batteries’ and has authored or co-authored a large number of journal articles and papers on the subject.[9]

   [8] Talbot, [21].

   [9] Talbot, [8], exhibit KAT-1 lists thirty-six of Professor Talbot’s journal articles and papers.

7. One of the Applicant’s focusses is addressing the safety issues, battery life and battery performance of lithium-ion batteries for larger vehicles and marine vessels (current lithium-ion batteries overheat when using the high currents required for those applications). To that end the Applicant intends to design and develop a battery which may be safely used for these applications, and to manufacture them in Queensland.[10]

   [10] This information is taken from Talbot, confidential exhibit KAT-6, however the information does not appear to be confidential as the web page comprising the exhibit is publicly available. In any event I have discussed the Applicant’s focus in general terms only.

8. Of the Trade Mark, it is declared that ‘The name Southvolt was devised to reflect the specialty/business focus of the Applicant (development and manufacture of batteries) and the location of the Applicant (south-east Queensland/the Southern Hemisphere)’.[11] It is further declared that the Applicant has a minimal advertising budget due to the nature of the Applicant’s work and its collaboration with governments, government agencies and investors. Some alleged promotion of the trade mark is shown by way of an email signature block which includes the by-line ‘makers of southvolt lithium batteries’; a business card which states ‘Feline are makers of southvolt batteries’; and a photograph of a sign displaying the Trade Mark. There is no statement relating to how many emails may have been sent with the signature block or how long it has been in use, or to how many business cards may have been distributed, or where the sign is displayed. Also adduced is a confidential invoice for materials which is addressed to ‘Southvolt’ at an address in Queensland. The invoice is dated 2022.

   [11] Talbot, [33].

Grounds of opposition, Onus and Standard of Proof

1. As indicated above, in the SGP the Opponent nominated grounds of opposition under ss 42(b) and 60 and reg 4.15A. To successfully oppose registration of the Trade Mark the Opponent need only establish one ground of opposition. The onus of proof in an opposition rests with the Opponent,[12] and is based on the ordinary civil standard of the balance of probabilities.[13] The date at which the rights of the parties are to be determined is 12 July 2021, being the filing date of the application.[14] This date is also the priority date for the purposes of reg 4.15A and s 60.

   [12] Food Channel Network Pty Ltd v Television Food Network GP [2010] FCAFC 58, [32] (Keane CJ, Stone and Jagot JJ).

   [13] Telstra Corporation Limited v Phone Directories Company Ltd [2015] FCAFC 156, [132]-[133] (Besanko, Jagot and Edelman JJ).

   [14] Southern Cross Refrigerating Co v Toowoomba Foundry Pty Ltd [1954] HCA 82, [2] (Kitto J).

2. I have found it necessary to address only reg 4.15A, the ground under which the opposition succeeds.

Regulation 4.15A

1. Regulation 4.15A relevantly provides:

   4.15A  Grounds for rejection—trade mark identical etc to trade mark protected under Madrid Protocol

   (1) For section 189A of the Act, and subject to subregulations (3) and (5), 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 protected international trade mark; or
   (ii) a trade mark in respect of which the Registrar has received notification of an IRDA;
   held by another person in respect of similar goods or closely related services; 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 other trade mark in respect of the similar goods or closely related services.

   …

   (3) If, in a case mentioned in subregulation (1) or (2), the Registrar 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.

   …

   (4) 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.

   (5) If, in a case mentioned in subregulation (1) or (2), the Registrar is satisfied that the applicant, or the applicant and the predecessor in title of the applicant, have continuously used the applicant’s trade mark for a period:

   (a) beginning before the priority date for the other trade mark in respect of:

   (i) the similar goods or closely related services; or
   (ii) the similar services or closely related goods; and

   (b) ending on the priority date for the registration of the applicant’s trade mark;

   the Registrar must not reject the application because of the existence of the other trade mark.

2. The Opponent relies upon the Opponent’s Trade Mark in order to establish this ground of opposition. To succeed, I must first be satisfied that the Opponent’s Trade Mark has a priority date earlier than that of the Trade Mark; that the Opponent’s Trade Mark is in respect of similar goods or closely related services; and that the Trade Mark is at least deceptively similar to the Opponent’s Trade Mark. I must also be satisfied that none of the provisions of regs 4.15A(3) to 4.15A(5) apply.

3. It is not in dispute that the Opponent’s Trade Mark has an earlier priority date than the Trade Mark and that the Opponent’s Trade Mark is in respect of similar goods and closely related services to the goods of the Trade Mark. I confirm that I am satisfied these limbs are established. The core issue is whether the parties’ trade marks are at least deceptively similar.

4. Section 10 provides that ‘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’. The assessment of deceptive similarity was considered in Shell Company of Australia Ltd v Esso Standard Oil (Australia) Ltd by Windeyer J who said:

   The marks are not now to be looked at side by side. The issue is not abstract similarity, but deceptive similarity. Therefore the comparison is the familiar one of trade mark law. It is between, on the one hand, the impression based on recollection of the plaintiff's mark that persons of ordinary intelligence and memory would have; and, on the other hand, the impressions that such persons would get from the defendant's [mark].[15]

   [15] [1963] HCA 66, [13],

5. The assessment of deceptive similarity involves not only the consideration of whether one trade mark might be mistaken for the other (owing to imperfect recollection[16]) but also a consideration of what is commonly referred to as ‘contextual confusion’. Contextual confusion occurs where trade marks might readily be distinguished from one another but still lead potential consumers to wonder whether they come from the same source.[17] John Fitton & Co Ltd’s Application, for example, states:

   With reference to the nature of the confusion alleged the evidence furnished on behalf of the Opponents by their trade declarants is directed not so much towards showing that the two marks “Jests” and “Easyjests” might themselves be confused either visually or orally, as towards establishing that confusion would result, owing to the presence of the common element “Jest” in each mark, in traders and the public being induced to believe that the two sets of goods sold under the marks emanated from one and the same trade source.[18]

   [16] Rysta Limited’s Application (1943) 60 RPC 87, 108 (Luxmore LJ).

   [17] See for example John Fitton & Co Ltd’s Application (1949) 66 RPC 110 (JESTS and EASYJEST); Tonka Corporation v Chong (1994) 29 IPR 253 (MONOPOLY and MUSICOPOLY); Telstra Corporation Ltd v Yellownet Corporation (1999) 44 IPR 415 (YELLOW PAGES and YELLOWNET); Caterpillar Inc v Amco (Vic) Pty Ltd (2000) 49 IPR 407 (CAT and LANDCAT); Polo Textile Industries Pty Ltd v Domestic Textile Corporation Pty Ltd [1993] FCA 203 (POLO and POLO CLUB) and Pfizer Products Inc v Karam [2006] FCA 1663 (VIAGRA and HERBAGRA); all cited in Vivo International Corporation Pty Ltd v Tivo Inc [2012] FCAFC 159 at [145]- [146] (Nicholas J).

   [18] John Fitton & Co Ltd’s Application (1949) 66 RPC 110, (113) (Assistant-Comptroller Chisholm).

6. The Trade Mark is comprised of two words conjoined, one being the cardinal compass direction ‘South’ and the other being ‘volt’, referring to the standard unit for electrical current. The Opponent’s Trade Mark is also comprised of the combination of a cardinal compass direction, ‘North’, and the word ‘volt’.

7. ‘Volt’ carries with it less distinctive character owing to its descriptive meaning and common use in respect of batteries. Batteries generate voltage and are often categorised and sold by the number of volts they produce. The presence of ‘volt’ in the parties’ trade marks is therefore likely to be discounted to a degree by the notional consumer. For the purposes of comparison, ‘volt’ is also an identical suffix in each trade mark and so is not a factor which differentiates the parties’ trade marks.

8. ‘North’ and ‘South’ are primarily the distinctive elements in each trade mark. They share a small degree of  visual and aural similarity owing to the ending digraph ‘th’ in both trade marks, but overall are visually and aurally distinct. The similarity of the trade marks relies rather upon a conceptual nexus between the words ‘North’ and ‘South’ and their identical conjunction with the suffix ‘volt’.

9. As already stated, both ‘North’ and ‘South’ are cardinal compass directions whose relationship is enhanced by virtue of being opposite directions to each other. Their placement as prefixes to the identical suffix ‘volt’ in each of the trade marks creates a conceptual nexus. There is a likelihood that the potential consumer will view the Trade Mark as being a variant of the Opponent’s Trade Mark, either abstractly or as a tangible geographical reference (for example that southvolt batteries are produced in or for Australia, being in the southern hemisphere, and Northvolt batteries are produced in or for Europe, being in the northern hemisphere).

10. The specified goods of the parties are the same and the specified services of the Opponent are closely related to the goods of the Applicant. The evidence further demonstrates that both parties are specifically focused on lithium-ion batteries, although I bear in mind that it is the notional scope of the goods which is relevant. The relatively specialist market for batteries heightens the prospect of confusion. Given the relatively small number of traders (compared to, for example, the market for software or beverages), the unusual combination of a cardinal compass direction with the suffix ‘volt’ is likely to lead a reasonable number of potential consumers to be confused as to whether the trade marks are associated in some way.

11. I note that the same conclusion was reached by the EUIPO wherein separate oppositions found both SOUTHVOLT and WESTVOLT to be similar to the Opponent’s NorthVolt trade mark. Decisions of the EUIPO are not binding however they may provide useful guidance, particularly where the trade marks involved are identical and the goods are substantially the same. The decision in respect of SOUTHVOLT states:

    Although the difference in the signs’ first components, ‘NORTH’ and ‘SOUTH’, will not go unnoticed by consumers (albeit they only visually differ in two letters), the fact that both words refer to cardinal points of the compass juxtaposed to the word ‘VOLT’ is memorable and striking for the relevant English-speaking public. Therefore, given the overall degree of similarity between the marks, it is likely that the relevant public, even when displaying a high degree of attention, will at least associate the contested sign with the earlier mark. Indeed, it is highly conceivable that consumers may legitimately believe that the contested trade mark is a new version or a brand variation of the opponent’s mark (23/10/2002, T-104/01, Fifties, EU:T:2002:262, § 49). In other words, consumers may confuse the origin of the goods and services at issue, assuming that they come from the same undertaking or from economically linked undertakings.[19]

    [19] Murphy 1, exhibit JM-7.

12. Whilst the EUIPO oppositions were only partly successful, they failed only where the goods and services were unrelated to batteries and electrical products.

13. Considering all of the above, I am satisfied that the Trade Mark is deceptively similar to the Opponent’s Trade Mark. I turn then to the question of whether any of the provisions of reg 4.15A(3) to 4.15A(5) apply.

14. The Applicant’s evidence of use is sparse. The only use which shows the Trade Mark is upon an email signature block, a business card and a sign. However, there is no information from which to gauge the extent of exposure of these exhibits. The Applicant asserts that the nature of its activities with governments, government bodies and investors is confidential and it is therefore unable to provide certain information. This may be the case, but it then leaves little basis upon which the provisions of regs 4.15A(3) or 4.15A(4) may be applied and I confirm that I have not applied them. I note also that the Trade Mark does not appear to have been devised until 2021, based upon the Applicant’s statement that ‘Shortly after arriving at the brand name, Southvolt, Southvolt (“the Business Name”) was registered as a business name in 2021’.[20] This is well after the priority date of the Opponent’s Trade Mark and as such the provisions of reg 4.15A(5) cannot apply.

    [20] Talbot [34].

Decision and costs

1. Given that I am satisfied the Trade Mark is deceptively similar to the Opponent’s Trade Mark, and that the provisions of regs 4.15A(3) to 4.15A(5) do not apply, the ground of opposition under reg 4.15A succeeds.

1. Accordingly, I refuse to register trade mark application 2190750.

2. The Applicant sought an award of costs in its favour. However, it is the Opponent who has succeeded. There is no apparent reason to depart from the general rule that costs follow the event. I therefore award costs against Applicant under s 221 in accordance with Schedule 8 of the Regulations.

Nicole Worth

Hearing Officer

Delegate of the Registrar of Trade Marks

28 February 2022

APPENDIX A

Goods and Services of the Opponent’s Trade Mark

Class 9: Apparatus, instruments and cables for conducting, switching, transforming, accumulating, regulating or controlling electricity; cables and wires, electric; electric and electronic components; electricity measuring instruments; electric power units; electrical cells and batteries; lithium ion batteries; battery jars; battery boxes; battery boxes; battery leads; chargers for electric batteries; battery packs; battery testers; plates for batteries; battery adapters; battery separators; battery chargers; battery chargers; rechargeable batteries; batteries for vehicles; charging stations for electric vehicles; electric batteries for vehicles; electronic control units; electrical test apparatus; connection boards [electric]; solar panels for the production of electricity; photovoltaic apparatus for electricity generation; photovoltaic apparatus and installations for generating solar electricity; electrical distributors; electrical fuses; monitoring apparatus, electric; electrical circuit boards; scientific, nautical, surveying, photographic, cinematographic, optical, weighing, measuring, signalling, checking (supervision), life-saving and teaching apparatus and instruments; apparatus for recording, transmission or reproduction of sound or images; magnetic data carriers, recording discs; data processing equipment and computers, calculating machines; computer software; wireless controllers for remote monitoring and control of the function and status of electrical, electronic and mechanical devices or systems; software and applications for mobile devices; computer software for monitoring, transforming, accumulating, regulating or controlling electricity, electricity consumption, charging of batteries, batteries and battery chargers.

Class 42: Technological consultation services; technological consultancy relating to batteries, battery chargers, battery characteristics, generation of electricity, electric apparatus and instruments and electric vehicles; research and consultancy relating to research in the field of batteries; scientific and technological services and research and design relating thereto; information technology [IT] consultancy; development of technologies for the protection of electronic networks; development of control programs for electric control and drive modules; development of testing apparatus for electrical wires; industrial analysis and research services; design and development of computer hardware and software; design and development of batteries, battery chargers and apparatus, instruments and cables for conducting, switching, transforming, accumulating, generating, storage, regulating or controlling electricity; research in the field of energy; advisory services relating to the use of energy; programming of energy management software and energy consumption; engineering services relating to energy supply systems; design and development of energy management software; design and development of regenerative energy generation systems; technological analysis relating to energy and power needs of others; consultancy relating to technological services in the field of power and energy supply.