NovAtel

[2012] ATMO 42

TRADE MARKS ACT 1995

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

Re:International Registrations Designating Australia 1347273(9) and 1347282(9) – OEMSTAR & OEM6 – (International Registration Nos 1028335 and 1028385) in the name of NovAtel Inc.

Delegate:

Iain Thompson

Representation:

Holder: Carmen Champion of Counsel instructed by FB Rice

Decision:

2012 ATMO 42

Regulation 17A.24: section 44 – whether trade marks deceptively similar – trade marks accepted for possible protection in Australia

Decision

1. NovAtel Inc, of Calgary, Canada, (‘the holder’) applied under the Trade Marks Act 1995 for protection of two International Registrations Designating Australia (‘IRDAs’) current details of which appear below:

Application No: 1347273

IR No:  1028335

Filing Date:  19 January 2010

Goods:Class 9: Global positioning receivers

Trade Mark:  OEMStar

Application No: 1347282

IR No:  1028385

Filing Date:  11 January 2010

Goods:Class 9: Components for use in global positioning and navigation systems and devices, namely, receivers; software for use in global positioning and navigation systems and devices; global positioning and navigation system receivers

Trade Mark:  OEM6

1. I will refer to the above trade marks as ‘the Trade Marks’.

2. The examiner issued provisional refusals (‘the refusals’) under Part 17A.16 of the Trade Mark Regulations 1995 (‘the regulations’ or ‘regulation’ as appropriate) on each of the holder’s IRDAs and, when the refusals were not overcome by argument, the holder requested to be heard.

3. The refusals arose through the operation of regulation 17A.28 and section 44 of the Act based on the trade mark registration which appears below:

Registration No:              1086993

IR No:  866963

Filing Date:  15 October 2004

Goods/Services:              Class 9: Scientific apparatus and instruments and equipment for aircraft cockpits, for monitoring and managing the flight outcome of aircraft, fuel monitoring apparatus and instruments, namely gauges, level gauges, air conditioning, pressurization, oxygen, automatic pilot, aircraft engine gauges; rescue apparatus and instruments; mechanical apparatus and instruments namely probes, connectors, viewing instruments, displays, instrument panels, calculators, racks or cases for electronic cards, printers; electric apparatus and instruments namely switches, circuit breakers, uninterruptable power supplies, transformers, generators, clippers, electrical distribution apparatus; photographic, cinematographic and optical apparatus and instruments namely cameras, screens, viewfinders; electronic apparatus and instruments components, electronic cards, calculators, buses; electronic apparatus and instruments for testing and simulation purposes; apparatus for recording, transmitting and reproducing sound and images namely earphones, telephones, game consoles, monitors, television sets; magnetic data carriers, recording discs; automatic vending machines and mechanisms for coin-operated apparatus, cash registers, calculating machines; data processing and computer equipment

Class 37: Maintenance services for aircraft equipment

Trade Mark:  

(‘the cited trade mark’)

1. As a delegate of the Registrar of Trade Marks, I heard the arguments of the holder presented by Carmen Champion of Counsel, instructed by FB Rice, in Sydney on 19 April 2012.

The Legislation

1. The regulations relevantly provide:

17A.16Examination of IRDA — report to holder

(1)If, in the course of an examination of an IRDA, the Registrar reasonably believes that:

(a)the IRDA is not in accordance with this Division; or

(b)there are grounds under Subdivision 2 for rejecting it in whole or in part;

the Registrar must send a report in accordance with rule 17 of the Common Regulations to the holder through the intermediary of the International Bureau.

(2)Such a report is a provisional refusal for the purposes of the Protocol.

(3)The report must include:

(a)notice of the date by which the Registrar must notify his or her final decision on examination to the International Bureau; and

(b)notice that the Registrar is not required to consider any response by the holder to the report unless the holder has notified the Registrar, in writing, of the holder’s address for service in Australia.

Note   Under the Protocol, protection must be extended in Australia to a trade mark that is the subject of an IRDA at the end of 18 months after the International Bureau notifies the Trade Marks Office of the IRDA unless, before then, the International Bureau receives:

(a)notification of a provisional or final refusal from the Trade Marks Office; or

(b)notification of the possibility that oppositions may be filed after the 18‑month period.

17A.28Grounds for rejecting IRDA

(1)The grounds for rejecting an IRDA are the grounds set out in sections 39 to 44 of the Act, as affected by subregulation (2).

(2)Sections 39 to 44 apply in relation to an IRDA as if:

(a)a reference in those sections:

(i)to an application for the registration of a trade mark were a reference to the IRDA; and

(ii)to an applicant were a reference to the holder of the IRDA; and

(b)the reference in paragraph 41 (6) (a) to the filing date in respect of an application were a reference to the date of international registration or the date of recording, as applicable, in respect of the IRDA; and

(c)each reference in subparagraphs 44 (1) (a) (i) and (2) (a) (i) to a trade mark registered by another person included a protected international trade mark held by another person;

1. Section 44 of the Act, under which the examiner has issued the refusals, 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.

1. The priority date of the cited trade mark is earlier than that of the Trade Marks, the goods are similar and the trade marks are not substantially identical.  Therefore in terms of section 44 there is a single issue to be decided: that is, whether the Trade Marks are deceptively similar to the cited trade mark.  If the trade marks are not deceptively similar, protection may be extended to the holder’s trade marks.

Submissions

1. The nub of Mrs Champion’s submissions is that the shared feature OEM in the cited trade mark and the Trade Marks lacks inherent distinctiveness and should not be regarded as a distinguishing feature for the purposes of section 44.  Mrs Champion drew my attention to the Wikipedia entry for the abbreviation OEM which (with references omitted) states:

   An original equipment manufacturer, or OEM, manufactures products or components that are purchased by a company and retailed under that purchasing company’s brand name. OEM refers to the company that originally manufactured the product. When referring to automotive parts, OEM designates a replacement part made by the manufacturer of the original part. In this usage, OEM means “original equipment from manufacturer”.

2. The Wikipedia entry explains that the term OEM may be confusing and even contradictory:

   OEM may refer to a company that purchases for use in its own products a component made by a second company. Under this definition, if Apple purchases optical drives from Toshiba to put in its computers, Apple is the OEM, and Toshiba would classify the transaction as an “OEM sale”.

   Contradictory usage

   An even more confusing, contradictory definition is a company that sells the product of a second company under its own brand name.

   Alternatives to contradictory or confusing use

   Instead of OEM, companies may label themselves resellers.

   Companies who buy parts and then resell those parts with some amount of additional value added along the way (such as assembly, customer support, or continued maintenance) may be better termed value-added resellers (VARs) or resellers.

3. Within the context of these considerations I accept that the abbreviation OEM carries meaning within the relevant market for the goods in question.  I further accept that, while the meaning of the abbreviation might vary, this variation occurs between (and not within) markets.

Discussion

1. In these considerations under section 44 I am in the same position as an examiner of trade marks: the assessment of deceptive similarity is pre-acceptance and not of an adversarial nature.  The character of these considerations is therefore a preliminary assessment: Registrar of Trade Marks v Woolworths [1999] FCAFC 1020; (1999) 93 FCR 365; (1999) 45 IPR 411; [1999] AIPC 91-499 (‘Woolworths’) per French J at [47]:

   The decision to reject an application regularly made must now be based upon positive satisfaction that a ground for rejecting it is made out. This may have implications for the Registrar’s administrative practice. There will no doubt be cases in which the requisite state of satisfaction can be reached by consideration of the visual and aural features of the marks in question against the description of the goods and/or services to which they relate. But there will also be cases in which such materials will be of themselves inadequate to support a proper judgment. In some circumstances market or survey evidence might be necessary to form a concluded view. Unless the Registrar is to undertake inquiries of that kind going beyond the content of the application and the existing Register and prior applications, then the application will have to be accepted and determination of such questions as deceptive similarity left to opposition or expungment proceedings. Given the preliminary character of the acceptance decision and the availability of the later adversarial processes, it may be consistent with the policy of the 1995 Act that only in clear cases of deceptive similarity will the Registrar reject upon that ground.

2. The expression ‘deceptively similar’ is defined by section 10 of the Act:

   10Definition of deceptively similar

   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.

3. The expression has also received considerable judicial consideration.  In Shell Company of Australia Ltd v Esso Standard Oil (Australia) Ltd [1963] HCA 66; (1963) 109 CLR 407 at [13] Windeyer J said:

   On the question of deceptive similarity a different comparison must be made from that which is necessary when substantial identity is in question. 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 television exhibitions. To quote Lord Radcliffe again: “The likelihood of confusion or deception in such cases is not disproved by placing the two marks side by side and demonstrating how small is the chance of error in any customer who places his order for goods with both the marks clearly before him . . . . It is more useful to observe that in most persons the eye is not an accurate recorder of visual detail, and that marks are remembered rather by general impressions or by some significant detail than by any photographic recollection of the whole”: de Cordova v. Vick Chemical Co (1951) 68 RPC, at p 106. And in Australian Woollen Mills Ltd v. F.S. Walton & Co. Ltd. (1937) 58 CLR 641 Dixon and McTiernan JJ. said: “In deciding this question, 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 or device for which the protection of an injunction is sought. The impression or recollection which is carried away and retained is necessarily the basis of any mistaken belief that the challenged mark or device is the same” (1937) 58 CLR, at p 658.

4. The comparison is to take place within the context of the goods and the marketplace in which they are traded: In Re Application by the Pianotist Co Ltd 1A IPR 379 at 380; 23 RPC 774 at 777, where Parker J said:

   You must take the two words. You must judge of them, both by their look and by their sound. You must consider the goods to which they are to be applied. You must consider the nature and kind of customer who would be likely to buy those goods. In fact, you must consider all the surrounding circumstances; and you must further consider what is likely to happen if each of those trade marks is used in a normal way as a trade mark for the goods of the respective owners of the marks.

5. The nature of the trade marks themselves must be considered: Cooper Engineering Co Pty Ltd v Sigmund Pumps Ltd [1952] HCA 15; (1952) 86 CLR 536 (RAINMASTER v RAIN KING); “Frigiking” Trade Mark [1973] RPC 739 (THERMO-KING v FRIGIKING);[1] Conde Nast Publications Pty Ltd v Virginia Taylor [1998] FCA 864; (1998) 41 IPR 505 (VOGUE v EUROVOGUE & Device); Miss World (Jersey) Limited & Anor v Mrs of the World Pageants, Inc. [1988] FCA 12; (1988) AIPC 90-460 (MISS WORLD v MRS WORLD); Health World Ltd v Shin-Sun Australia Pty Ltd [2008] FCA 100 (2008) 75 IPR 478 (INNER HEALTH PLUS v HealthPlus); Coca-Cola Co (Canada) Ltd v Pepsi- Cola Co (Canada) Ltd (1942) 59 RPC 127 (COCA COLA v PEPSI COLA); Sports Cafe Ltd v Registrar of Trade Marks [1998] FCA 1614; (1998) 42 IPR 552.

   [1] Per Whitford J “necessarily [the Court’s deliberations] involve some enquiry as to the inherent distinctiveness of a part which is common to both marks under consideration”.

6. And the evaluative process is moderated by the considerations referred to in Woolworths at [50]:

   In Southern Cross Refrigerating Co v Toowoomba Foundry Pty Ltd (1954) 91 CLR 592 at 594-5, which concerned the 1905 Act, Kitto J set out a number of propositions which have frequently been quoted and applied to the 1955 Act. The essential elements of those propositions continue to apply to the issue of deceptive similarity under the 1995 Act. Applied also to service marks and absent the imposition of an onus upon the applicant they may be restated as follows:

   (i) To show that a trade mark is deceptively similar to another it is necessary to show a real tangible danger of deception or confusion occurring. A mere possibility is not sufficient.

   (ii) A trade mark is likely to cause confusion if the result of its use will be that a number of persons are caused to wonder whether it might not be the case that the two products or closely related products and services come from the same source. It is enough if the ordinary person entertains a reasonable doubt.

   It may be interpolated that this is another way of expressing the proposition that the trade mark is likely to cause confusion if there is a real likelihood that some people will wonder or be left in doubt about whether the two sets of products or the products and services in question come from the same source.

   (iii) In considering whether there is a likelihood of deception or confusion all surrounding circumstances have to be taken into consideration. These include the circumstances in which the marks will be used, the circumstances in which the goods or services will be bought and sold and the character of the probable acquirers of the goods and services.

   (iv) The rights of the parties are to be determined as at the date of the application.

   (v) The question of deceptive similarity must be considered in respect of all goods or services coming within the specification in the application and in respect of which registration is desired, not only in respect of those goods or services on which it is proposed to immediately use the mark. The question is not limited to whether a particular use will give rise to deception or confusion. It must be based upon what the applicant can do if registration is obtained.

   In respect of the last proposition, Mason J observed in Berlei Hestia Industries Ltd v The Bali Company Inc [1973] HCA 43; (1973) 129 CLR 353 at 362:

   “...the question whether there is a likelihood of confusion is to be answered, not by reference to the manner in which the respondent has used its mark in the past, but by reference to the use to which it can properly put the mark. The issue is whether that use would give rise to a real danger of confusion.”

7. I note that the goods in question are generally of some expense and some thought or deliberation goes into their purchase: Stuart Alexander & Co (Interstate) Pty Ltd v Blenders Pty Ltd [1981] FCA 152; (1981) 53 FLR 307; (1981) 37 ALR 161; LANCER - Trade Mark Application [1987] FPC 303 (LANCER versus LANCIA for cars).

8. As Mrs Champion observes, the initial letters OEM which are shared by the trade marks in question have currency as designating the merchandise sold under the trade marks as being Original Equipment Manufacturer goods in terms of the Wikipedia definition, above.  The letters are thus inherently unadapted to distinguish the goods and it is unlikely, in my consideration, that a potential purchaser would regard the letters in themselves as signaling the source in trade of the goods rather than their character.  Further, when this denotation of the letters OEM is considered in the context of the “preliminary character of the acceptance decision and the availability of the later adversarial processes”[2] it is not appropriate to infer rights in the inherently unadapted letters OEM where such rights have not been demonstrated to exist.

   [2] See Woolworths.

9. Additionally, as observed by the Court in Hornsby Building Information Centre Pty Ltd v Sydney Building Information Centre Ltd [1978] HCA 11; (1978) 140 CLR 216; (1978) 18 ALR 639; (1978) 52 ALJR 392; [1978] ATPR 40-067; (1978) 3 TPC 244; [1978] ASC 55-010; (1978) 1B IPR 818; 18 A Crim R 639 (‘Hornsby’) at [22]:

   There is a price to be paid for the advantages flowing from the possession of an eloquently descriptive trade name. Because it is descriptive it is equally applicable to any business of a like kind, its very descriptiveness ensures that it is not distinctive of any particular business and hence its application to other like businesses will not ordinarily mislead the public. In cases of passing off, where it is the wrongful appropriation of the reputation of another or that of his goods that is in question, a plaintiff which uses descriptive words in its trade name will find that quite small differences in a competitor’s trade name will render the latter immune from action (Office Cleaning Services Ltd. v. Westminster Window and General Cleaners Ltd. (1946) 63 RPC 39, at p 42 , per Lord Simonds). As his Lordship said (1946) 63 RPC, at p 43 , the possibility of blunders by members of the public will always be present when names consist of descriptive words - “So long as descriptive words are used by two traders as part of their respective trade names, it is possible that some members of the public will be confused whatever the differentiating words may be.” The risk of confusion must be accepted, to do otherwise is to give to one who appropriates to himself descriptive words an unfair monopoly in those words and might even deter others from pursuing the occupation which the words describe.

1. Although Hornsby was a trade practices matter I am satisfied that a similar principle should work here in relation to the shared (and inherently unadapted) letters OEM, at least on a preliminary assessment prior to acceptance of the applications.  If the owner of the cited trade mark wishes to assert rights in the letters OEM in relation to the goods covered by its trade mark it is appropriate (in view of the Wikipedia definition) that it do so in opposition to protection of the Trade Marks.

2. In a practical sense, once it is accepted that it is likely that the goods sold under the trade marks are Original Equipment Manufacturer merchandise, there is other matter within the trade marks by which they may be distinguished from each other.

3. The cited trade mark is not deceptively similar to the Trade Marks.

Decision

1. Regulation 17A.24 provides:

   17A.24     Final decision on examination

   (1)The Registrar must, after the examination, accept the IRDA unless he or she is satisfied that:

   (a)it is not in accordance with this Division; or

   (b)there are grounds for rejecting it.

   (2)The Registrar may accept the IRDA subject to conditions or limitations.

   (3)The Registrar must reject an IRDA, in whole or in part, if the Registrar is satisfied that:

   (a)it is not in accordance with this Division; or

   (b)there are grounds for rejecting it, in whole or in part.

2. I will accept the Trade Marks for possible protection.

Iain Thompson

Hearing Officer

Trade Marks Hearings

27 April 2012