Onkyo Kabushiki Kaisha Doing Business as Onkyo Corporation v Dynaudio Holdings A/S

[2018] ATMO 120

TRADE MARKS ACT 1995

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

Re:Opposition by Dynaudio Holdings A/S to registration of trade mark application 1766497 (9) – DYNAMIC AUDIO AMPLIFICATION and device - in the name of Onkyo Kabushiki Kaisha doing business as Onkyo Corporation

Delegate:

Nicholas Smith

Decision on the Written Record

Decision:

2018 ATMO 120

Trade Marks Act 1995 (Cth) - Section 52 opposition: ss 41, 42, 43, 44, 58, and 60 considered – none established – trade mark to proceed to registration

Background

1.  This decision concerns an opposition brought by Dynaudio Holdings A/S (‘Opponent’) pursuant to s 52 of the Trade Marks Act 1995 (Cth) (‘Act’) to the registration of the trade mark which is the subject of the application detailed below in the name of Onkyo Kabushiki Kaisha doing business as Onkyo Corporation (‘Applicant’): 

Application Number:

1766497

Filing Date:

22 April 2016

Priority Date:

27 October 2015 (Convention, but see endorsement)

Goods:

Class 9: Telecommunication devices and apparatus; video frequency devices and apparatus; audio frequency devices and apparatus; personal stereos; stereo amplifiers; stereo receivers; radio tuners; stereo tuners; digital broadcasting receiving tuners; television receivers; audio and video receivers; digital audio and video network receivers; digital audio and video network players; players and recorders for optical discs featuring sound and images; audio cassette players; audio cassette recorders; video cassette players; video cassette recorders; portable digital audio and video players; cases for portable digital audio and video players; stands for portable audio and video players; apparatus for reproduction and recording of audio and video memory cards; record players; phono equalizers; car stereos; video recorders, video players, audio recorders, and audio players with built-in hard disk drives; video projectors; video projector screens; video display apparatus; audio and video signal analog-to-digital converters; audio and video signal digital-to analog converters; loudspeakers; megaphones; audio speakers; cabinets for loudspeakers; speaker mounting brackets; speaker mounting stands; headphones; wireless headphones; earphones; horns for loudspeakers; speaker systems; microphones; audio and video signal processing apparatus; portable radio communication machines and apparatus; portable telephones; smartphones; sound and video recording carriers; personal digital assistants; blank data media (magnetic and optical); blank magnetic cards, discs, tapes and data medias; cabinets adapted for audio and video apparatus and computers; remote control apparatus; remote controllers and remote control apparatus for use with audio and video apparatus and computers; digital radio transceivers; computers and computer peripheral devices; portable computers; tablet computers; laptop computers; interfaces for computers; computer keyboards; computer mouse; monitors for computers; sound circuit boards for computers; video circuit boards for computers; speakers for computers; radio tuners for computers; optical disk drives; hard disk drives; semi-conductor memories units; USB (universal serial bus) memories; flash memory cards; digital audio and video network servers; computer software; computer software for recording, transmission, reproduction, receiving, downloading, storage and/or editing of sound or images; computer software for transmitting and receiving e-mails and other information; computer software, recorded; routers for telecommunication and computer network; communication hubs and computer network hubs; printers; phonograph records; downloadable music files; sound or video recorded magnetic cards, sheets, tapes, and optical discs; downloadable video files; recorded video discs and video tapes; power supply devices; battery for computers; cables for use with audio and video apparatus and computers; loudspeakers with built-in amplifiers; karaoke machines; power distribution or control machines and apparatus; rotary converters; phase modifiers; batteries, dry cells, and wet cells; solar batteries; AC/DC converters; computer application software for personal digital assistants, smartphones and tablet computers; electronic publications; electronic devices and apparatus and their parts

(‘Applicant’s Goods’)

Trade Mark:

(‘Trade Mark’)

Endorsements

See Annex 1.

2.  Following the advertisement on 16 June 2016 in the Australian Official Journal of Trade Marks of the application’s acceptance for possible registration, the Opponent filed a Notice of Intention to Oppose on 9 August 2016.  The Opponent then filed a Statement of Grounds and Particulars (‘SGP’) on 9 September 2016. The SGP raised grounds of opposition under ss 41, 42, 43, 44, 58, and 60 of the Act. The Applicant filed a Notice of Intention to Defend on 13 October 2016.

Evidence

3.  The Opponent filed Evidence in Support of its opposition (‘EIS’) on 23 January 2017.  This evidence consists of a declaration made on 20 January 2017 by Claus P. Rasmussen, the Chief Commercial Officer of the Opponent, with exhibits 1 to 7 and 9-13 (‘Rasmussen Declaration’).

4.  The Opponent omitted to include Exhibit 8 to the Rasmussen Declaration in its EIS (‘Exhibit 8’).  Following communication from the Applicant raising this omission the Opponent filed evidence being Exhibit 8 on 12 April 2017 as well as submissions supporting consideration of Exhibit 8 despite it being filed after the deadline for EIS.

5.  The Applicant filed Evidence in Answer (‘EIA’) on 27 April 2017.  This evidence consists of a declaration made on 20 April 2017 by Peter Amos, the managing director of Amber Technology Ltd, the exclusive Australian distributor of the Applicant, with Exhibits 1 to 4 and Confidential Exhibit 5 (‘Amos Declaration’) and a declaration made on 21 April 2017 by Carole Raabe, an associate employed by Spruson & Ferguson, the Applicant’s representative, with Exhibits CR1-CR2 (‘Raabe Declaration’).  The Opponent did not file any evidence in reply.

6.  Once the time allowed for filing evidence had ended the parties were given an opportunity to request a hearing or to file written submissions.  Neither party chose to avail themselves of these opportunities at that time.  By letter issuing from IP Australia on 22 August 2017 the parties were notified that as neither party had requested a hearing the matter would be given to a delegate of the Registrar for a decision based on the written record.  The letter indicated that the parties had one month from the date of the letter to file any written submissions they wished to reply upon.  On 22 September 2017 the Applicant filed its submissions (‘Applicant’s Submissions’).  The Opponent did not file any submissions.

7. I am a delegate of the Registrar of Trade Marks and I am to decide the opposition as required by s 55 of the Act which provides that, unless the proceedings are discontinued, dismissed, or have lapsed under s 54A 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.  In doing so I take account of the written record comprised of the materials mentioned in the preceding paragraphs.

Admission of Late Filed Evidence

8. Exhibit 8 was filed after the deadline for filing the EIS. The Opponent has sought that its additional evidence be considered by the Delegate under the provisions of s 66 of the Act and/or Regulations 9.18, 21.15 and 21.19 of the Trade Marks Regulations1995 (Cth).

9.  I accept the Opponent’s submissions that Exhibit 8 was intended to be filed with the remainder of the EIS in January 2017 but was omitted due to a clerical error.  The material was clearly printed out on 12 January 2017 and is referred to in the Rasmussen Declaration.  Exhibit 8 consists of various print-outs of marketing and display material referring to the Opponent and is thus prima facie relevant to demonstrating the reputation that the Opponent may have in its trade mark.  It was filed on 12 April 2017, two weeks before the Applicant filed its EIA.

10.     Regulation 21.19 provides:

21.19Registrar may use information available

(1)If:

(a)information that is available to the Registrar is relevant to proceedings before the Registrar; and

(b)the Registrar has reason to believe that the information is not known to a party to the proceedings; and

(c)the Registrar proposes to take the information into account in making a decision in the proceedings;

before making the decision the Registrar must:

(d)provide the information to the party; and

(e)give the party a reasonable opportunity to make representations about the information.

(2)For the purposes of paragraph (1)(e), the representations may be made in writing or at a hearing or by such other means as the Registrar reasonably allows.

11.     The delegate of the Registrar in Federation Square Pty Ltd v Federation IP Pty Ltd (‘Federation Square’) provided a useful summary of Regulation 21.19:

Historically, regulation 21.19 has been utilised by delegates of the Registrar to take into account information provided at examination that was not served for opposition purposes,[1] or for material arising from notices to produce[2] and other information the delegate became aware of that was pertinent to the proceedings.[3] In essence, the applicability of regulation 21.19 is not limited in the type of material it may allow into proceedings. Neither is the regulation limited to a particular point at which it may be considered, although it has ordinarily been applied by the delegate at around the time the substantive opposition matter is heard and after the other party has had an opportunity to respond.[4]

[1] Laboratoires La Prairie v Wendy Stockden-Brock [2005] ATMO 80.

[2] Lodestar Anstalt v Austin, Nichols & Co Inc [2009] ATMO 38; (2009) 82 IPR 308.

[3] Davide Campari-Milano SpA v Perfection Fresh Australia Pty Ltd [2008] ATMO 53.

[4] Federation Square Pty Ltd v Federation IP Pty Ltd [2015] ATMO 42, [36].

12.     The delegate in Federation Square also noted that as there are;

·     no longer any ‘further evidence provisions’ in relation to matters commenced after April 2013;

·     that there is a reduced evidence in reply stage, and

·     that there are more rigorous requirements for extensions of time,

it was anticipated by the legislature that Regulation 21.19 may play a different role in trade mark oppositions than it had in the past.[5] The delegate referred to the following from the Explanatory Statement to the ‘Raising the Bar’ amendments:

Current regulation 21.19 provides a general discretionary power to the Registrar to inform herself of any information available to the Registrar by reference to any document available in the Trade Marks Office. Following the restructuring of the Trade Marks Regulations by item 11, the Registrar will still have the discretion to consider whether the information is relevant and whether it should be taken into account. However, it is not intended that the provisions of current regulation 21.19 be used as a substitute for the repealed further evidence provisions.[6]

[5] Ibid [38].

[6] Explanatory Statement to the Intellectual Property Legislation Amendment (Raising the Bar) Regulation 2013 (No.1) p 29 (emphasis added).

13.     The delegate also stated:

The clear intention is that Regulation 21.19 should not [be] interpreted as a substitute for the repealed further evidence provisions. The fact that prior to the ‘Raising the Bar’ amendments Regulation 21.19 existed concurrently with the further evidence provisions affirms that the original intent of the regulation was to stand apart from the regular evidence stages of the opposition. Parties should not assume an entitlement to the application of Regulation 21.19 and the presence of an evidence stage appropriate for that material will not assist the party applying.[7]

However:

[T]he intent of the ‘Raising the Bar’ amendments cannot be to entirely shut out [of] oppositions where there is a serious issue to be heard, the evidence is of high probative value, submitted shortly after the due date and is immediately available to the Registrar and the other side.[8]

[7] Federation Square, [40].

[8] Ibid [52].

14.     The delegate of the Registrar in TWG Tea Company Pte Ltd v Tsit Wing International Company Limited stated her view that:

[A] serious opposition should be able to be decided on the merits of the case, with all relevant information available to the delegate of the Registrar for the making of that decision. This principle remains undiminished and is a potent factor to be weighed into the balance whenever a Registrar’s delegate exercises discretion under legislation that has the potential to exclude evidence crucial to an opposition outcome.[9]

[9] [2015] ATMO 64, [45].

15.     There must be a compelling case for the Registrar to take information into account that is not part of properly filed evidence.  The decision of a delegate to take into account information under Regulation 21.19 requires consideration of a number of factors which include: the public interest and that of the parties in matters being decided in a timely and predictable manner; the public interest that the delegate of the Registrar have before them all material relevant to a decision; the requirement that principles of procedural fairness be adhered to; and the relative inconvenience to the parties.  There can be significant tensions between these factors and the Registrar must weigh up each factor in making her decision.

16.     In the present case I am satisfied that Exhibit 8 is relevant and probative and the Opponent’s failure to file this exhibit along with the rest of the EIS was an unintended omission.  There is a public interest that the delegate have such material before him/her and the inconvenience to the Applicant by reason of the delay is not substantial; the Applicant has had time to file evidence and submissions in response to Exhibit 8.  While I acknowledge the inconvenience the Applicant may have as a result of this late filed evidence, it is not in the public interest for this case to be decided on the basis of what I accept is a straightforward clerical error resulting in the failure to file one of a number of exhibits in the Rasmussen Declaration.  As such I will consider the evidence in Exhibit 8 in this proceeding.

The Opponent

17.     The Opponent is a company, founded in Denmark in 1977. 

18.     The Opponent is the registered owner of the trade mark set out below (‘Opponent’s Trade Mark’). 

Number	Trade Mark	Priority Date	Goods
345164	DYNAUDIO	18 Apr 1980	Class 9: Photographic, cinematographic and optical apparatus; wireless receiving sets, television apparatus, stereo sound reproducing apparatus, radio phonographs, sound recording apparatus, record players, sound generators, electrical amplifiers, loud speakers, pickups; parts for all the above mentioned goods being goods included in class 9

19.     The Rasmussen Declaration contains the following claims/statements:

·     The Opponent first commenced use of the Opponent’s Trade Mark in 1977 in Denmark in relation to audio equipment and accessories.  It has built up a significant global reputation in its audio products since then.  Its loudspeakers are installed in more than 10,000 recording studios worldwide and have been the recipient of significant awards.

·     The Opponent’s Trade Mark is a portmanteau invented word being a combination of the words ‘dynamic’ and ‘audio’.

·     The Opponent sells its audio goods to Australia and other export markets from its website at The Opponent has also distributed its goods in Australia since the early 1980s.  The Opponent’s revenue from the sale of its audio goods in Australia from 2013 to 2015 is significant.

·     The Opponent has exhibited its audio goods under the Opponent’s Trade Mark at a number of trade shows and exhibitions in Australia, such as the Australian National Hi Fi Show and the Sydney Home Show.

The Applicant

20.     The Applicant is a Japanese consumer electronics manufacturer that specialises in home cinema and audio equipment.

21.     The Amos Declaration contains the following claims/statements:

·     The Trade Mark has been used by the Applicant in approximately 50 countries since as early as 2016.  This includes Australia, where audio and video receivers bearing the Trade Mark have been sold through a variety of distribution channels since 2016.

·     To the Deponent’s knowledge, there has never been any confusion between the Trade Mark and the Opponent’s Trade Mark.

22.     The Raabe Declaration contains the following claims/statements:

·     There are currently 206 registered trade marks for goods in class 9 in Australia that contain the element ‘audio’.

·     There are currently 198 registered trade marks for goods in class 9 in Australia that contain the element ‘dyn’.

Grounds of Opposition, Onus and Standard of Proof

23. As indicated above in the SGP the Opponent nominated grounds of opposition under ss 41, 42, 43, 44, 58 and 60 of the Act. To successfully oppose the application the Opponent needs to establish at least one of those grounds.

24.     The onus of proof in an opposition rests upon the Opponent.[10]  The relevant standard of proof is the ordinary civil standard based on the balance of probabilities.[11]  The date at which the rights of the parties are to be determined is 27 October 2015 (‘relevant date’), being the convention priority date of the application in Australia[12], with the exception of the s 41 ground of opposition, where the filing date is the appropriate date.[13]

Discussion

[10] Food Channel Network Pty Ltd v Television Food Network GP [2010] FCAFC 58, [32].

[11] Following Pfizer Products Inc v Karam (2006) 70 IPR 599, [6]-[26], and Telstra Corporation Limited v Phone Directories Company Pty Ltd [2015] FCAFC 156, [133].

[12] Southern Cross Refrigerating Co v Toowoomba Foundry Pty Ltd (1954) 91 CLR 592, 595, see also s 29(1) Trade Marks Act 1995 (Cth).

[13] Unilever Aust Ltd v Karounos [2001] FCA 1132; 113 FCR 322, [13] and [55].

Section 41

25. Section 41 of the Act is set out below:

41 – Trade Mark not distinguishing applicant’s goods or services

(1)An application for the registration of a trade mark must be rejected if the trade mark is not capable of distinguishing the applicant’s goods or services in respect of which the trade mark is sought to be registered (the designated goods or services) from the goods or services of other persons.

Note:       For goods of a person and services of a person see section 6.

(2)A trade mark is taken not to be capable of distinguishing the designated goods or services from the goods or services of other persons only if either subsection (3) or (4) applies to the trade mark.

(3)This subsection applies to a trade mark if:

(a)the trade mark is not to any extent inherently adapted to distinguish the designated goods or services from the goods or services of other persons; and

(b)the applicant has not used the trade mark before the filing date in respect of the application to such an extent that the trade mark does in fact distinguish the designated goods or services as being those of the applicant.

(4)This subsection applies to a trade mark if:

(a)the trade mark is, to some extent, but not sufficiently, inherently adapted to distinguish the designated goods or services from the goods or services of other persons; and

(b)the trade mark does not and will not distinguish the designated goods or services as being those of the applicant having regard to the combined effect of the following:

(i)the extent to which the trade mark is inherently adapted to distinguish the goods or services from the goods or services of other persons;

(ii)the use, or intended use, of the trade mark by the applicant;

(iii)any other circumstances.

Note 1:Trade marks that are not inherently adapted to distinguish goods or services are mostly trade marks that consist wholly of a sign that is ordinarily used to indicate:

(a)the kind, quality, quantity, intended purpose, value, geographical origin, or some other characteristic, of goods or services; or

(b)the time of production of goods or of the rendering of services.

Note 2: For goods of a person and services of a person see section 6.

Note 3: Use of a trade mark by a predecessor in title of an applicant and an authorised use of a trade mark by another person are each taken to be use of the trade mark by the applicant (see subsections (5) and 7(3) and section 8).

(5)For the purposes of this section, the use of a trade mark by a predecessor in title of an applicant for the registration of the trade mark is taken to be a use of the trade mark by the applicant.

Note 1: For applicant and predecessor in title see section 6.

Note 2: If a predecessor in title had authorised another person to use the trade mark, any authorised use of the trade mark by the other person is taken to be a use of the trade mark by the

26. With respect to s 41 it is appropriate to discuss the ‘presumption of registrability’. As was explained by the Hearing Officer in Unilever plc v Beiersdorf AG:

Section 33 of the Act states that the Registrar must accept an application unless satisfied that it has not been made in accordance with the Act, (which is not relevant here), or that there are grounds under the Act for rejecting it. In this regard s 33 embodies what is often referred to as a ‘presumption of registrability.’ As was explained in Blount Inc v Registrar of Trade Marks[14] (‘Oregon’), however, prior to the [Intellectual Property Laws Amendment (Raising the Bar) Act 2012 (“the Amending Act”)] ss 41(5) and (6) as they then were, (which essentially correspond to current ss 41(4) and (3) respectively), effectively shifted the onus onto an applicant. Section 41 was thus amended to address that inconsistency, with the Explanatory Memorandum to the Intellectual Property Laws Amendment (Raising the Bar) Bill 2011 (‘the EM’) stating at page 146:

[14] (1998) 40 IPR 498, 505.

The changes are intended to clarify that the presumption of registrability, as provided for in section 33, does apply to section 41. … The intention is that, if the Registrar is equally unsure of whether the mark is or is not capable of distinguishing, that doubt should be resolved in the applicant’s favour.

The Amending Act was not however intended to alter the relevant standard for registrability. In this regard the EM goes on to state (also at page 146):

Note that while the amendment [to s 41] ensures that the onus rests with the Registrar during examination, it is not intended to require that the trade mark should clearly not be registered. Rather, as with other grounds it is intended that the delegate need only be satisfied that a ground exists on the balance of probabilities.

The amendments are not meant to alter the key concepts of “inherently adapted to distinguish”, “capable of distinguishing” and “does or will distinguish”.  The judicial tests for these terms are settled and the amendments are not intended to change the legal concept of a trade mark distinguishing the applicant’s goods or services from others.

Branson J’s analysis at 504 in Oregon of the operation of s 41 as it stood prior to the Amending Act, as paraphrased below, also remains apt in relation to the amended section:

Having taken [the extent of inherent adaptation] into account, it is theoretically open to [me] to conclude:

(a) that the [Trade Mark] is inherently adapted to distinguish the [Applicant’s Services] from the goods or services of other persons and capable, on that basis alone, of so distinguishing the [Applicant’s Services]; [that is, neither s 41(3) nor s 41(4) applies] or

(b) that the [Trade Mark] is not to any extent inherently adapted to distinguish the [Applicant’s Services] from the goods or services of other persons; [that is, s 41(3) applies] or

(c) that the [Trade Mark] is to some extent inherently adapted to distinguish the [Claimed Goods] from the goods or services of other persons, but there is uncertainty, on that basis alone, that the trade mark is actually capable of so distinguishing the [Applicant’s Services]. [that is, s 41(4) applies][15]

[15] [2017] ATMO 25, [38]-[40].

27. I note for completeness that the presumption of registrability also applies at the opposition stage and in an appeal under s 56 of the Act[16].

[16] Sports Warehouse, Inc v Fry Consulting Pty Ltd (2010) 87 IPR 300, [27], quoting Pfizer Products Inc v Karam (2006) 70 IPR 59, 602.

28.     Paraphrasing what the same Hearing Officer said in Pacific Magazines Pty Ltd v Bauer Consumer Media Ltd[17]:

As mentioned in paragraph [13] above the Opponent bears the onus of establishing its s 41 ground of opposition. However, its onus is effectively limited to satisfying me that the [Trade] Mark is not sufficiently adapted to distinguish the Applicant’s Goods and Services as to qualify for registration on that basis alone, being the issue addressed in particular by s 41(3) [as it stood prior to the Amending Act.][18] 

[17] [2015] ATMO 69 at [16]. I have in the main also retained the Hearing Officer’s original footnotes.

[18] See Sports Warehouse, Inc v Fry Consulting Pty Ltd (2010) 87 IPR 300, [26]-[29], [40] for a full discussion on this point.

29.     In Accor Australia & New Zealand Hospitality Pty Ltd v Liv Pty Ltd, the Full Court summarised the principles in respect of s 41 as follows:

(1) In deciding whether or not a trade mark is capable of distinguishing the designated services from the service of others, the first question is the extent to which the trade mark is inherently adapted to distinguish the designated services from those of others: s 41(2) and (3).

(2) In determining whether a trade mark is inherently adapted to distinguish the services of a trader, the answer largely depends upon whether other traders are likely, in the ordinary course of their businesses and without any improper motive, to desire to use the same mark, or some mark nearly resembling it, upon or in connection with their goods: Clark Equipment Co v Registrar of Trade Marks (“Clark Equipment”) [1964] HCA 55; (1964) 111 CLR 511 per Kitto J at 514.

(3) The question of whether a trade mark is adapted to distinguish the services of the applicant is to be tested by reference to the likelihood that other persons, trading in goods of the relevant kind and being actuated only by proper motives (in the exercise of the common right of the public to make honest use of words forming part of the common heritage for the sake of the signification which the words ordinarily possess) will think of the word and want to use it in connection with similar goods in any manner which would infringe the trade mark once registered: Clark Equipment at 514.

(4) Directly descriptive words, like geographical names, are not prima facie suitable for the grant of a monopoly conferred by registration of a trade mark because use of them, as trade marks, will “rarely eclipse” their “primary” (that is, their ordinary) signification. Such words (or a word) are unlikely to be inherently, that is to say, “in [their] own nature”, adapted to distinguish the applicant’s goods. Traders may legitimately want to use such words in connection with their goods or services “because of the reference they are ‘inherently adapted to make’ to those goods”: Cantarella Bros Pty Limited v Modena Trading Pty Limited (“Cantarella”) [2014] HCA 48; (2014) 254 CLR 337 at [57] per French CJ, Hayne, Crennan and Kiefel JJ.

(5) The principles derived from the observations of Kitto J in Clark Equipment apply with as much force to directly descriptive words as they do to words which are, according to their ordinary signification, geographical names: Cantarella at [57].

(6) In determining whether a word is (or words are) inherently adapted to distinguish the goods or services of an applicant, the question is to be examined from the point of view of the “possible impairment” of the rights of “honest traders” and from the “point of view of the public”: Cantarella at [59].

(7) In determining whether a word contains (or words contain) a “direct reference” to the relevant goods or services (and thus prima facie not registrable as a trade mark) or whether the word (or words) makes a “covert and skilful allusion” to the relevant goods or services (and thus prima facie registrable as a trade mark), the “ordinary signification” of the word or words to persons who will purchase, consume or trade in the goods or services, must be considered: Cantarella at [59].

(8) Where the question is whether there are other traders who may legitimately want to use or apply a word or words in connection with their goods or services (other than a geographical name or a surname), the test refers to the “legitimate desire of other traders to use a word which is directly descriptive in respect of the same or similar goods”: Cantarella at [59].

(9) Consistent with the proposition at (7), the test described at (8) does not encompass the desire of other traders to use a word or words which in relation to the goods or services are “allusive or metaphorical”: Cantarella at [59].

(10) In determining whether a trade mark is inherently adapted to distinguish the designated goods or services for the purposes of s 41(3), the ordinary signification of the word or words are to be considered from the perspective of “any person in Australia concerned with the goods or services to which the trade mark is to be applied”: Cantarella at [70].

(11) Consideration of the “ordinary signification” of any word or words said to constitute a trade mark is “crucial”: Cantarella at [71]. That is so whether the word (or words) is said not to be registrable because: it is not an invented word and has direct reference to the character or quality of the goods or services; or, the word is laudatory; or, the word is a geographical name; or, the word has either lost its distinctiveness or it never had the requisite distinctiveness from the outset: Cantarella at [71].

(12) The process of reasoning in addressing s 41(3) of the Act involves first identifying the “ordinary signification” of the word in question and then undertaking an enquiry into whether other traders might legitimately need to use the word in respect of their goods: Cantarella at [71]. If a word contains an allusive reference to goods or services it is, prima facie, qualified for the grant of a monopoly as a trade mark under the Act. If, on the other hand, the word is understood, by the target audience, as having a directly descriptive meaning in relation to relevant goods or services then, prima facie, the proprietor is not entitled to a monopoly in respect of the word. As a general proposition, a word or words which are prima facie entitled to a monopoly secured by registration as a trade mark under the Act, according to this method, are inherently adapted to distinguish: Cantarella at [71].[19]

[19] [2017] FCAFC 56 at [236]

30. The ground based on s 41 of the Act is particularised in the SGP as follows:

1)   Other traders need to use the Opposed Mark in the ordinary course of trade in respect of similar goods/services because the expression DYNAMIC AUDIO AMPLIFICATION is descriptive in relation the purpose of the goods, with the device elements being insufficient to render the mark distinctive.

2)   It is likely a significant number of traders will need to use the words DYNAMIC AUDIO AMPLIFICATION to describe their similar goods and services.

3)   The Opposed Mark is not inherently adapted to distinguish the designated goods from the goods and services of other traders.

31.     As noted above, the onus is on the Opponent to establish that the Trade Mark is not sufficiently adapted to distinguish the Applicant’s Goods so as to qualify for registration on that basis alone.  Accordingly, the first step is to determine whether the Trade Mark is inherently adapted to distinguish the Applicant’s Goods from the goods or services of other persons,.  There are two particular problems facing the Opponent in this case.  I have been provided with no evidence or submissions explaining the ordinary signification of the Trade Mark, a relevant factor when determining whether the mark is inherently adapted to distinguish, nor have I been provided with any evidence of its existing use by traders other than the Applicant (or a basis to assume that other traders will need to use the Trade Mark in the future).  

32. While each of the individual words that are elements of the Trade Mark are descriptive words, and the phrase ‘audio amplification’ is directly descriptive of a subset of the Applicant’s Goods, even after reviewing the Applicant’s advertising material exhibited to the EIS, there is no evidence before me that the Trade Mark, when considered as a whole (including the device element), lacks any inherent adaptation to distinguish, or that other traders could have a legitimate need to use the Trade Mark, being the words ‘dynamic audio amplification’ in combination with that device. I find that the Trade Mark is inherently adapted to distinguish the Applicant’s Goods from the goods or services of other persons. I find that the Opponent has failed to discharge the onus it bears in establishing the ground of opposition under s 41.

Section 44

33. The relevant provisions of the Act with respect to the ground of opposition pursuant to s 44 are reproduced below:

Section 44 - Identical 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)it 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).

(2)…

(3)If the Registrar in either case is satisfied:

(a)that there has been honest concurrent use of the 2 trade marks; or

(b)that, because of other circumstances, it is proper to do so;

the Registrar may accept the application for the registration of the applicant's trade mark subject to any conditions or limitations that the Registrar thinks fit to impose. If the applicant's trade mark has been used only in a particular area, the limitations may include that the use of the trade mark is to be restricted to that particular area. 

Note:  For limitations see section 6.

(4)If the Registrar in either case 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 registration of 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 may not reject the application because of the existence of the other trade mark.

Note 1: An authorised use of the trade mark by a person is taken to be a use of the trade mark by the owner of the trade mark (see subsection 7(3)).

Note 2: For predecessor in title see section 6.

Note 3: For priority date see section 12.

Section 10 - Definition 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.

34. To successfully oppose the application pursuant to s 44 of the Act the Opponent must establish the requirements of s 44(1), i.e. that at least one of the trade marks upon which it relies:

·     has a priority date which is earlier than that of the Trade Mark (‘the first requirement’);

·     is substantially identical with or deceptively similar to the Trade Mark (‘the second requirement’); and

·     is in respect of similar goods, and/or services which are closely related to, the Applicant’s Goods (‘the third requirement’).

35. In the event that each of these requirements are satisfied by the Opponent it may be possible for the Registrar to accept the application if the Registrar is satisfied that there has been honest concurrent use of the Trade Mark, other circumstances exist which would make registration of the Trade Mark proper, or that the Applicant has continuously used the Trade Mark beginning before the priority date of the Opponent’s relied upon mark, pursuant to ss 44(3) and 44(4) of the Act.

36.     The Opponent has particularised the ground of opposition in the SGP by reference to the Opponent’s Trade Mark, which is registered for goods including loud speakers, electrical amplifiers, sound recording apparatus and television apparatus.  The Opponent’s Trade Mark has a priority date that is earlier than the priority date of the Trade Mark.  Furthermore I consider that the goods for which the Opponent’s Trade Mark is registered are goods of the same description as the Applicant’s Goods, which include television apparatus such as television receivers, audio apparatus such as equalizers, stereos, loudspeakers and related parts.  The first and third requirements are satisfied. 

Substantially identical or deceptively similar

37.       I will now consider whether the Trade Mark is substantially identical to the Opponent’s Trade Mark.  When considering ‘substantial identity’ in Shell Co of Australia Ltd v Esso Standard Oil (Australia) Ltd Windeyer J said:

In considering whether marks are substantially identical they should, I think, be compared side by side, their similarities and differences noted and the importance of these assessed having regard to the essential features of the registered mark and the total impression of resemblance or dissimilarity that emerges from the comparison.[20]

[20] (1963) 109 CLR 407, [12].

38.     The Trade Mark and the Opponent’s Trade Mark are set out below:

DYNAUDIO

39.     On a side by side comparison there is a clear difference between the respective trade marks, including the different words and the presence of the device in the Trade Mark.  Indeed, none of the elements of the respective marks are identical.  The differences between the respective trade marks are sufficient for me to conclude that the respective trade marks are not substantially identical.  I move then to consider whether the Trade Mark and Opponent’s Trade Mark are deceptively similar.

40.       The principal authority for guidance in determining whether trade marks are deceptively similar also comes from the judgment of Windeyer J in Shell Co (Aust) Ltd v Esso Standard Oil (Aust) Ltd:

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 [trade mark].[21]

[21] Ibid [13].

41.       Jacobson J in Millennium & Copthorne International Limited v Kingsgate Hotel Group Pty Ltd summarised the principles of deceptive similarity with reference to the authorities as follows:

Without seeking to reformulate the various statements of principle stated in the Full Court authorities, it is sufficient for present purposes to identify the critical elements which seem to me to inform the issue of deceptive similarity in the present case. There are nine elements.

First, the judgment of likelihood of deception is a practical one. It requires an assessment of the effect of the challenged mark on the minds of potential customers: Woolworths[22] at [49]; Australian Woollen Mills[23] at 658.

Second, the question of deceptive similarity is not to be decided by a side-by-side comparison. It is to be determined by a comparison of the impression based on recollection of the opponent’s mark that persons of ordinary intelligence and memory would have, and the impression that those persons would get from the opposed trade mark: Crazy Ron’s[24] at [73]; Shell Company of Australia Ltd v Esso Standard Oil (Australia) Ltd [1963] HCA 66; (1963) 109 CLR 407 at 415 per Windeyer J.

Third, allowance must be made for imperfect recollection: Crazy Ron’s at [74].

Fourth, the effect of the spoken description must be considered: Woolworths at [49]; Crazy Ron’s at [75]; Australian Woollen Mills at 658.

Fifth, it is necessary to show a real tangible danger of deception or confusion: Woolworths at [43] and [50]; Crazy Ron’s at [76]; Southern Cross Refrigerating[25] at 594 – 595.

Sixth, 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 the two products come from the same source: Woolworths at [50]; Southern Cross Refrigerating Co at 595. This test sets a lower threshold than that which is required to establish that conduct is likely to mislead or deceive under s 18 of Schedule 2 of the Competition and Consumer Act 2010 (Cth): see McWilliam's Wines Pty Ltd v McDonald's System of Australia Pty Ltd [1980] FCA 159; (1980) 33 ALR 394 at 398 per Smithers J.

Seventh, all surrounding circumstances must be taken into consideration. The circumstances include those in which the marks will be used, and in which the goods or services will be bought and sold, as well as the character of the probable acquirers of the goods and services: Woolworths at [50]; Crazy Ron’s at [86] – [89]; Southern Cross Refrigerating at 595.

Eighth, the question of whether there is a likelihood of confusion is not to be answered by reference to the manner in which a party has used the mark, but by reference to what an applicant can do. That is to say, the use to which it can properly put the mark if registration is obtained: Woolworths at [50]; Berlei Hestia Industries Ltd v The Bali Company Inc [1973] HCA 43; (1973) 129 CLR 353 at 362 per Mason J.

Ninth, if a registered trade mark includes words which can be regarded as an ‘essential feature’ of the mark, another mark that incorporates those words may cause a tangible danger of deception or confusion by reason of consumers retaining an imperfect recollection of those words: Crazy Ron’s at [79]. However, care must be taken to not too readily characterise words in a composite trade mark as an ‘essential feature’ because to do so may effectively convert a composite mark into something different: Crazy Ron’s at [100].[26]

[22] Registrar of Trade Marks v Woolworths Ltd [1999] FCAFC 1020.

[23] Australian Woollen Mills Ltd v FS Walton & Co Ltd [1937] HCA 51; (1937) 58 CLR 641.

[24] Crazy Ron’s Communications Pty Ltd v Mobileworld Pty Ltd [2004] FCAFC 196; (2004) 209 ALR 1.

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

[26] [2012] FCA 1022, [38]-[46].

42.       On balance, while there may be conceptual similarities between the marks, I do not consider the marks to be deceptively similar.  Visually and aurally the marks are very different, one consisting of the words ‘dynamic audio amplification’ and a device element, and the other consisting of the made up word ‘dynaudio’.  To the extent there are any similarities at all, such similarities are mostly (though not entirely, noting the shared sound ‘audio’) at the conceptual level and rely on the consumer recognising the Opponent’s Trade Mark as a portmanteau of the words ‘dynamic audio’.  Even to the extent that this occurs the visual and aural distinctions between the marks are sufficient that when considered as a whole, even allowing for imperfect recollection, it is unlikely that the use of the Trade Mark will deceive or cause confusion because of any similarity it has to the Opponent’s Trade Mark. 

43. I find that the Opponent has failed to establish the ground of opposition under s 44.

Section 58

44. Section 58 of the Act is reproduced below:[27]

[27] In summarising the principles that apply with respect to s 58 of the Act I have paraphrased from Richard Khouzame v Melambada Pty Ltd (Unreported, Australian Trade Marks Office, 6 January 2017), [12].

Section 58. Applicant not owner of trade mark

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

Note:For applicant see section 6.

45.       The owner of a trade mark is the person who first uses it in Australia, or first files a trade mark application in Australia, whichever is the earlier.  It is now well established at law that in order to succeed under this ground of opposition the Opponent must establish three factors.  These are:

· that the Trade Mark is identical, or substantially identical, to the trade mark(s) relied upon by the Opponent (‘the first factor’);[28]

· that the Applicant’s Goods are the ‘same kind of thing’ as the goods for which the trade mark(s) relied upon by the Opponent was used (‘the second factor’);[29] and

·     that a person other than the Applicant has the earlier claim to ownership of the Trade Mark based on use of the trade mark(s) relied upon by the Opponent prior to whichever is the earlier of: (a) the application to register; or (b) any actual use of the Trade Mark by the Applicant (‘the third factor’).[30]

[28] Carnival Cruise Lines Inc. v Sitmar Cruises Limited (1994) 31 IPR 375.

[29] Re Hicks’ Trade Mark (1897) 22 VLR 636.

[30] Settef SpA v Riv-Oland Marble Co (Vic) Pty Ltd (1987) 10 IPR 402, 413.

46. The ground based on s 58 of the Act was particularised in the SGP as follows:

1) The Opposed Mark is substantially identical or deceptively similar to the Opponent’s mark DYNAUDIO, which is also the dominant feature of the Opponent’s name having been used from at least as early as 1977 in Denmark and it continues to be used widely in Denmark and also in other countries including in Australia.

2) The Opponent’s mark DYNAUDIO has been registered in Australia under no. 345164 with a filing date of 18 April 1980, which is prior to the priority date of trade mark application 1766497.

3) The Opponent commenced use of the above mark in Australia in the early 1980s.

4) The Opposed Mark is substantively identical or deceptively similar to the Opponent’s mark.

5) The goods covered by the Opposed Mark are of the same kind or same description as goods covered by the Opponent’s Mark.

6) The intended users/customers for the Applicant’s goods and the Opponent’s goods are the same.

47. The threshold question for s 58 is whether the Opponent can point to a trade mark which is identical or at least substantially identical to the Trade Mark. If the Opponent cannot identify such a trade mark, the ground fails at the outset. The Opponent nominates the Opponent’s Trade Mark. As noted above I have found that the Opponent’s Trade Mark is not substantially identical to the Trade Mark.

48. As the Opponent has failed to established the first factor (and must establish all three factors to succeed in the s 58 ground of opposition), I find that the Opponent has failed to establish the ground of opposition pursuant to s 58 of the Act.

Section 60

49. Section 60 of the Act is reproduced below:

Section 60 - Trade mark similar to trade mark that has acquired a reputation in Australia

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.

50. To establish a ground of opposition under s 60 an opponent must demonstrate that as at the relevant date there was another trade mark which had acquired a reputation in Australia amongst a significant or substantial number of persons in the relevant market such that use of the Trade Mark would be likely to deceive or cause confusion.[31]

[31] The present paragraph and the following paragraphs summarizing the requirements under s 60 of the Act are paraphrased from the decision of the Registrar’s Delegate in Australian Boutique Markets Pty Ltd v Rachael Zelensky and Jeffrey Zelensky [2013] ATMO 97.

51.       In McCormick & Co Inc v McCormick, Kenny J considered what is intended by the word ‘reputation’ as used in s 60. Her Honour had consulted the Macquarie Dictionary and on the basis of the definition provided concluded that it was ‘the recognition of the [trade mark] by the public generally’.[32]  Her Honour quoted with approval the following words of Lockhart J in Re ConAgra Inc v McCain Foods (Aust) Pty Ltd:

[R]eputation within the jurisdiction may be proved by a variety of means including advertisements on television or radio, or in magazines and newspapers within the forum. It may be established by showing constant travel of people between other countries and the forum and that people within the forum, (whether residents there or persons simply visiting there from other countries) are exposed to the goods of the overseas owner …[33]

[32] [2000] FCA 1335, [81].

[33] (1992) 33 FCR 302, 343.

52.       On the subject of reputation Kenny J also referred to the Hugo Boss decision, where the Registrar’s delegate observed:

[I]t is true that the assessment of the reputation of a trade mark goes far beyond mere examination of sales or turnover of goods sold under that trade mark and contemplation of the advertising and promotional figures.

As regards a trade mark, its reputation derives both from the quantum of sales under that mark and also its esteem, or image, projected by that trade mark. The quantum of sales, advertising and promotion contributes to the ‘recognition’ component of the trade mark’s reputation. The credit, image and values projected by a trade mark attaches to the ‘esteem’ component of the reputation as do the public events and other trader’s marks with which [the] owner of the trade marks in question chooses to associate the trade marks via sponsorships, cross-promotions, ‘contra deals’ and so forth.

It follows that a trade mark used in relation to goods with comparatively low sales may have a high and strong reputation by virtue of the high credit or esteem in which it is held, or, conversely, that a trade mark which has very high sales may have a strong reputation notwithstanding the lack of esteem that attaches to it. The particular popular images, or sets of values, that attach to the trade mark are also, therefore, important parts of the reputation of the trade mark and may be as strong an associative force in the minds of the public as the association of the trade marks with the goods or services themselves.[34]

[34] Hugo Boss AG v Jackson International Trading Co Kurt D Bruhl Gesellschaft MbH & Co KG (1999) 47 IPR 423, 426.

53. As stated above, in assessing reputation under s 60, what constitutes a significant or substantial number of persons in the relevant market must be considered. The case of Le Cordon Bleu BV v Cordon Bleu International Ltee[35] was decided under s 28(a) of the (now repealed) Trade Marks Act 1955.  That provision did not refer to ‘reputation’ at all, only that use of the impugned trade mark would be ‘likely to deceive or cause confusion’.  Nevertheless the words of Heerey J provide some guidance:

What is ‘significant’ or ‘substantial’ will depend on the nature of the goods or services in question. For some highly specialised products, awareness among a few thousand persons, or even less, might be sufficient … We are here concerned with foodstuffs sold in supermarkets, delicatessens, milk bars and other retail outlets. The relevant market is virtually the entire Australian population from early teenage years onwards.[36]

[35] (2000) 50 IPR 1.

[36] Ibid 20. Heerey J’s decision was overturned on appeal to the Full Federal Court, although not on the point quoted. Indeed the court specifically noted that his approach contained no error; see Renaud Cointreau v Cordon Bleu International Ltee [2001] FCA 1170, [75].

54.       Furthermore, in practice, once the requisite reputation is demonstrated, the likelihood of deception or confusion increases the more closely the trade marks resemble each other.[37]

[37] Mark Davison, Shanahan’s Australian Law of Trade Marks and Passing Off Online Westlaw AU, [50.2415] <

55.       The Opponent has particularised the ground of opposition in the SGP in the manner set out below: 

1)   The Opponent first used the Opponent’s Mark in Australia in the early 1980s.

2)   The Opponent’s Marks had acquired a reputation in Australia before the priority date of the Opposed Mark in respect of loudspeakers for home and professional use and loudspeakers for cars.

3)   Because of the reputation acquired by the Opponent in the Opponent’s mark, the use of the Opposed Trade Mark would be likely to deceive or cause confusion.

56.       The evidence in the Rasmussen Declaration is that the Opponent has traded and hence used the Opponent’s Trade Mark in Australia since the early 1980s.  While the revenue figures provided by the Opponent for 2013-2015 are not insignificant, I note that the Opponent’s products vary in retail price from $500 to $170,000, making it difficult to determine if the Opponent’s revenue derives from a significant number of sales of low-value products or a mere handful of sales of high-value products.  The failure of the Opponent to provide sales figures indicating the actual number of customers instead of revenue figures makes it difficult for me to conclude that the actual number of customers in Australia are particularly significant.  Equally, while the Opponent has traded in Australia since the 1980s, the Opponent’s failure to provide any sales or customer data prior to 2013 does not assist its case. 

57.       While the Opponent has engaged in some level of promotion in Australia, in particular its presence at various trade shows open to the public, it is difficult to estimate the level of market recognition and penetration of the Opponent’s Trade Mark in the loudspeaker market in Australia.  I do note that the Opponent’s products appear to be, in general, high-value products targeted at specialist audiophiles and are held in considerable esteem, a fact reflected in the various reviews and magazine articles exhibited to the Rasmussen Declaration.  However the Opponent does offer loudspeaker products with a retail price of approximately $500 and as such does offer loudspeaker products for general consumer use.  There is likely to be a broad spectrum of potential purchasers of the goods provided by the Opponent and the potential market is likely to be significant.

58.       Overall, while much of the evidence of the use of the Opponent’s Trade Mark in Australia was of limited value, I am prepared to find that, by reason of the Opponent’s ongoing use of the Opponent’s Trade Mark in Australia for almost 40 years and the considerable esteem that the Opponent’s products are held in, that the Opponent’s Trade Mark had, at the relevant date, acquired a limited reputation in Australia in the market for loudspeaker and audio equipment.  

59. I am not satisfied that because of the reputation of the Opponent’s Trade Mark, the use of the Trade Mark would be likely to deceive or cause confusion. As noted above the Opponent’s Trade Mark only had a limited reputation at the relevant date. Furthermore, set out in the discussion under the s44 ground of opposition, the Trade Mark and Opponent’s Trade Mark are visually and aurally distinctive and only share a limited conceptual similarity. Furthermore the goods that would be purchased under the Trade Mark and the Opponent’s Trade Mark are likely to be purchased with some care, a further consideration in determining likelihood of confusion. Given those factors the Opponent has failed to satisfy me that the reputation held by the Opponent in the Opponent’s Trade Mark was such within the public that the Applicant’s use of the Trade Mark on the Applicant’s Goods would be likely to deceive or cause confusion. I find that the Opponent has failed to establish the ground of opposition pursuant to s 60 of the Act.

Section 42

60. Section 42 of the Act is reproduced below:

42 Trade mark scandalous or its use contrary to law

An application for the registration of a trade mark must be rejected if:

(a) the trade mark contains or consists of scandalous matter; or

(b) its use would be contrary to law.

61.       The Opponent pressed this ground of opposition solely on the basis that the use of the Trade Mark would be contrary to law (s 42(b)).  The onus is on the Opponent to establish that use of the Trade Mark by the Applicant would be, rather than could be, contrary to law on the balance of probabilities.[38]  The relevant time for assessing whether an application is contrary to law is at the relevant date but ‘looking forward to prospective conduct after registration’.[39]

[38] Advantage Rent-a-Car Inc v Advantage Car Rental Pty Ltd [2001] FCA 683.

[39] Time Warner Entertainment Co LP v Stepsam Investments Pty Ltd [2004] 59 IPR 343, 353.

62.       The Opponent has particularised the ground of opposition in the SGP as follows: 

1) The use of the Opposed Mark is use, in trade and commerce, which is likely to mislead or deceive consumers in contravention of ss18 and 29 of the Australian Consumer Law which is Schedule 2 to the Competition and Consumer Act 2010 (Cth).

2) The use of the Opposed Mark amounts to actionable passing off by the Applicant.

63. As previously stated the Opponent has failed to establish a ground of opposition under s 60 of the Act. The test for misleading or deceptive conduct under s 18 of the Australian Consumer Law (‘ACL’) is a more stringent one than that for deception or confusion under s 60,[40] and I find that the Opponent has also failed to establish that the Applicant’s use of the Trade Mark would be contrary to s 18 of the ACL.

[40] See, e.g.: Ownit Homes Pty Ltd v Ownit Conveyancing Pty Ltd [2005] ATMO 47, [36]; Parkdale Custom Built Furniture Pty Ltd v Puxu Pty Ltd (1982) 149 CLR 191, 198.

64.       Paraphrasing the statement of the Registrar’s Delegate in A G Professional Hair Care Products Ltd v Geagroup Invest SRL[41], where a trade mark does not run afoul of s 18 of the ACL, neither will it run afoul of s 29 of the ACL nor the tort of passing off. In Pacific Publications Pty Ltd v IPC Media Pty Ltd, Beaumont J considered—in connection with the superseded Trade Practices Act1974 (‘TPA’)—that ‘the Court’s conclusion on s 52 would necessarily carry with it a conclusion on s 53(c) and (d)’.[42] Sections 52 and 53 of the TPA were, respectively, the equivalent provisions to ss 18 and 29 of the ACL. Hill J in Re Equity Access Pty Ltd v Westpac Banking Corporation also addressed the relationship between s 52 of the TPA and passing off. His Honour considered that:

The scope for the operation of s 52 will thus be broader than that involved in the tort of passing off so that in a case such as the present where the claim is for the protection of the reputation in a name against the use of that name by another, failure to succeed under s 52 or s 53 will invariably mean that proceedings for passing off would likewise fail.[43]

[41] [2014] ATMO 65, [50].

[42] [2003] FCA 104, [107].

[43] [1989] FCA 506, [40] (citations omitted).

65. For these reasons I am not satisfied that use of the Trade Mark by the Applicant would be contrary to law. Therefore, the Opponent has failed to establish the ground of opposition under s 42(b).

Section 43

66. Section 43 of the Act is reproduced below:

43 Trade mark likely to deceive or cause confusion

An application for the registration of a trade mark in respect of particular goods or services must be rejected if, because of some connotation that the trade mark or a sign contained in the trade mark has, the use of the trade mark in relation to those goods or services would be likely to deceive or cause confusion.

67. To establish a ground of opposition under s 43 of the Act, there must be an inherent connotation within the trade mark. As Gyles J in Pfizer Products Inc v Karam commented:

‘Connotation’ is a secondary meaning implied by the mark. The likelihood of deception or confusion must flow from the secondary meaning inherent in the mark itself. It is apparent that the underlying purpose of s 43 is a similar purpose to that lying behind ss 52, 53 and 55 of the Trade Practices Act 1974 (Cth). It is to prevent the public being deceived or confused as to the nature of the goods offered by reason of a secondary meaning connoted by the mark in question... [44]

[44] [2006] FCA 1663; (2006) 70 IPR 599, [53].

1. In Winton Shire Council v Lomas Spender J said:

   Section 43 is directed to the mark itself. It is not concerned with any deception or confusion caused by the reputation in Australia of some other trade mark. That aspect of the matter is dealt with under s 60. [45]

2. The ground of opposition pursuant to s 43 of the Act was particularised in the SGP as by reference to the international reputation enjoyed by the Opponent’s Trade Mark. The particulars state:

   …as a result of the constant exposure of the Opponent’s Mark in relation to the Opponent’s goods, the Opponent has built up an association with its Mark and name among Australian members of the general public so that the use and registration of the deceptively similar mark by the Applicant would deceive and cause confusion among Australian consumers that there is a connection between the Applicant’s goods and the Opponent or that the Opponent has granted approval or licence to the Applicant when in fact no such association, approval or licence exists.

3. As can be seen in the case law referred to above, the considerations set out in the SGP are not the appropriate considerations as the requisite confusion or deception must arise from a connotation within the Trade Mark itself rather than as a result of the reputation the Opponent may be able to demonstrate in its own trade mark or confusion between the Trade Mark and the Opponent’s Trade Mark. 

   [45] [2002] FCA 288; (2002) 119 FCR 416; (2002) 56 IPR 72, [19].

4. As a consequence, I am not satisfied that if the Trade Mark is used in relation to the Applicant’s Goods, there is an apparent connotation within it which is likely to result in deception or confusion. I find that the ground of opposition under section 43 has not been established.

   Decision

   72.       The Opponent has failed to establish any of the grounds of opposition it nominated in the SGP.  Trade Mark application no. 1766497 may proceed to registration not less than one month from the date of this decision.  If the Registrar has been served with a notice of appeal before that time, I direct that registration shall not occur until either the appeal is withdrawn or discontinued.  Otherwise the disposition of the application should be in accordance with the Court’s order or direction.

   Costs

   73. The Applicant has sought an award of costs in its favour. I see no reason to depart from the general rule that costs follow the event. I accordingly award costs against the Opponent under section 221 of the Act in the relevant amounts under Schedule 8 of the Trade Mark Regulations 1995.

   Nicholas Smith

   Hearing Officer

   Oppositions and Hearings

   1 August 2018

   Annex 1 – Endorsement to Trade Mark

   Convention priority claimed: 27 October 2015, Japan, No. 2015-103575 in respect of TELECOMMUNICATION DEVICES AND APPARATUS; VIDEO FREQUENCY DEVICES AND APPARATUS; AUDIO FREQUENCY DEVICES AND APPARATUS; PERSONAL STEREOS; STEREO AMPLIFIERS; STEREO RECEIVERS; RADIO TUNERS; STEREO TUNERS; DIGITAL BROADCASTING RECEIVING TUNERS; TELEVISION RECEIVERS; AUDIO AND VIDEO RECEIVERS; DIGITAL AUDIO AND VIDEO NETWORK RECEIVERS; DIGITAL AUDIO AND VIDEO NETWORK PLAYERS; PLAYERS AND RECORDERS FOR OPTICAL DISCS FEATURING SOUIND AND IMAGES; AUDIO CASSETTE PLAYERS; AUDIO CASSETTE RECORDERS; VIDEO CASSETTE PLAYERS; VIDEO CASSETTE RECORDERS; PORTABLE DIGITAL AUDIO AND VIDEO PLAYERS; CASES FOR PORTABLE DIGITAL AUDIO AND VIDEO PLAYERS; STANDS FOR PORTABLE AUDIO AND VIDEO PLAYERS; APPARATUS FOR REPRODUCTION AND RECORDING OF AUDIO AND VIDEO MEMORY CARDS; RECORD PLAYERS; PHONO EQUALIZERS; CAR STEREOS; VIDEO

   RECORDERS, VIDEO PLAYERS, AUDIO RECORDERS, AND AUDIO PLAYERS WITH BUILT-IN HARD DISK DRIVES; VIDEO PROJECTORS; VIDEO PROJECTOR SCREENS; VIDEO DISPLAY APPARATUS; AUDIO AND VIDEO SIGNAL ANALOG-TO-DIGITAL CONVERTERS; AUDIO AND VIDEO SIGNAL DIGITAL-TO ANALOG CONVERTERS; LOUDSPEAKERS; MEGAPHONES; AUDIO SPEAKERS; CABINETS FOR LOUDSPEAKERS; SPEAKER MOUNTING BRACKETS; SPEAKER MOUNTING STANDS; HEADPHONES; EARPHONES; HORNS FOR LOUDSPEAKERS; SPEAKER SYSTEMS; MICROPHONES; AUDIO AND VIDEO SIGNAL PROCESSING APPARATUS; PORTABLE RADIO COMMUNICATION MACHINES AND APPARATUS; PORTABLE TELEPHONES; SOUND AND VIDEO RECORDING CARRIERS; PERSONAL DIGITAL ASSISTANTS; BLANK DATA MEDIA (MAGNETIC AND OPTICAL); BLANK MAGNETIC CARDS, DISCS, TAPES AND DATA MEDIAS; CABINETS ADAPTED FOR AUDIO AND VIDEO APPARATUS AND COMPUTERS; REMOTE CONTROL APPARATUS; REMOTE CONTROLLERS AND REMOTE CONTROL APPARATUS FOR USE WITH AUDIO

   AND VIDEO APPARATUS AND COMPUTERS; DIGITAL RADIO TRANSCEIVERS; ELECTRONIC DEVICES AND APPARATUS AND THEIR PARTS; COMPUTERS AND COMPUTER PERIPHERAL DEVICES; PORTABLE COMPUTERS; LAPTOP COMPUTERS; INTERFACES FOR COMPUTERS; COMPUTER KEYBOARDS; COMPUTER MOUSE; MONITORS FOR COMPUTERS; SOUND CIRCUIT BOARDS FOR COMPUTERS; VIDEO CIRCUIT BOARDS FOR COMPUTERS; SPEAKERS FOR COMPUTERS; RADIO TUNERS FOR COMPUTERS; OPTICAL DISK DRIVES; HARD DISK DRIVES; SEMI-CONDUCTOR MEMORIES UNITS; USB (UNIVERSAL SERIAL BUS) MEMORIES; FLASH MEMORY CARDS; DIGITAL AUDIO AND VIDEO NETWORK SERVERS; COMPUTER SOFTWARE; COMPUTER SOFTWARE FOR RECORDING, TRANSMISSION, REPRODUCTION, RECEIVING, DOWNLOADING, STORAGE AND/OR EDITING OF SOUND OR IMAGES; COMPUTER SOFTWARE FOR TRANSMITTING AND RECEIVING E-MAILS AND OTHER INFORMATION; COMPUTER SOFTWARE, RECORDED; ROUTERS FOR TELECOMMUNICATION AND COMPUTER NETWORK; COMMUNICATION

   HUBS AND COMPUTER NETWORK HUBS; PRINTERS; PHONOGRAPH RECORDS; DOWNLOADABLE MUSIC FILES; SOUND OR VIDEO RECORDED MAGNETIC CARDS, SHEETS, TAPES, AND OPTICAL DISCS; DOWNLOADABLE VIDEO FILES; RECORDED VIDEO DISCS AND VIDEO TAPES; POWER SUPPLY DEVICES; BATTERY FOR COMPUTERS; CABLES FOR USE WITH AUDIO AND VIDEO APPARATUS AND COMPUTERS; LOUDSPEAKERS WITH BUILT-IN AMPLIFIERS; KARAOKE MACHINES; POWER DISTRIBUTION OR CONTROL MAHINES AND APPARATUS; ROTARY CONVERTERS; PHASE MODIFIERS; BATTERIES, DRY CELLS, AND WET CELLS; SOLAR BATTERIES; AC/DC CONVERTERS; COMPUTER APPLICATION SOFTWARE FOR PERSONAL DIGITAL ASSISTANTS, SMARTPHONES AND TABLET COMPUTERS; ELECTRONIC PUBLICATIONS in class 9.