Opposition by Opel Automobile GmbH to registration of trade mark application 1774969 (class 12) - ADAMAS with diamond device - in the name of Wanli Tire Corporation Limited.
[2019] ATMO 66
•1 May 2019
TRADE MARKS ACT 1995
DECISION OF A DELEGATE OF THE REGISTRAR OF TRADE MARKS WITH REASONS
Re:Opposition by Opel Automobile GmbH to registration of trade mark application 1774969 (class 12) - ADAMAS with diamond device - in the name of Wanli Tire Corporation Limited.
| Delegate: | Nicholas Barbey |
| Representation: | Opponent: written submissions prepared by Anne Makrigiorgos, Griffith Hack Applicant: no written submissions filed |
| Decision: | 2019 ATMO 66 Trade Marks Act 1995 (Cth) – Section 52 opposition: ss 44, 60 and 62A considered – none established – trade mark may proceed to registration |
Background
This matter concerns an opposition brought by Opel Automobile GmbH (‘the 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 Wanli Tire Corporation Limited (‘the Applicant’):
Trade Mark: (‘the Trade Mark’)
Application Number: 1774969
Filing Date: 3 June 2016
Goods:Class 12: Vehicle wheel tires (tyres); Automobile tires (tyres); Tires for vehicle wheels; Tires, solid, for vehicle wheels; Casings for pneumatic tires (tyres); Inner tubes for pneumatic tires (tyres); Repair outfits for inner tubes; Upholstery for vehicles; Cars; Automobiles; Automobile wheels; Hubs for vehicle wheels; Wheel hubs for vehicles (‘the Applicant’s Goods’).
The application to register the Trade Mark was examined as required by s 31 of the Act and its acceptance was advertised in the Australian Official Journal of Trade Marks on 20 October 2016.
The Opponent filed a Notice of Intention to Oppose registration on 21 November 2016 and a Statement of Grounds and Particulars (‘SGP’) on 21 December 2016. Collectively, these documents constitute the Opponent’s Notice of Opposition.
The Notice of Opposition was originally filed in the name of Adam Opel Aktiengesellschaft. During proceedings the Registrar was notified that the right and interest upon which Adam Opel Aktiengesellschaft relied to file the Notice of Opposition had subsequently been vested in Opel Automobile GmbH. The opposition has accordingly proceeded as if the Notice of Opposition had been filed by Opel Automobile GmbH.[1]
[1] Section 53 of the Act.
After obtaining an extension of time to file a Notice of Intention to Defend, the Applicant filed same on 27 March 2017.
The Opponent filed Evidence in Support (‘EIS’) of its opposition and the Applicant did not file any evidence in answer.
Subsequently, both parties were advised of their right to request a hearing or to make written submissions. The Opponent did not request an oral hearing and instead filed written submissions (‘the Opponent’s Submissions’) prepared by Anne Makrigiorgos of Griffith Hack. The Applicant did not file written submissions or request a hearing.
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. In doing so I take account of the material comprised of the written record. This record consists of the material described above.
Evidence
The Opponent filed its EIS on 19 July 2017. This evidence comprised a declaration by Christopher Hanf, the legal counsel of the Opponent, dated 17 July 2017 together with Annexures CH-1 to CH-3 and Confidential Annexure CH-4 (‘Hanf Declaration’).
10. The Hanf Declaration declares the Opponent is an automobile manufacturer that was founded in 1862. It states that the trade marks ADAM, ADAM X, ADAM S and ADAM ROCKS have been used on a global scale since 2013 in respect of vehicles, vehicle parts and accessories.
11. The following evidence was provided to substantiate the Opponent’s reputation:
· Screenshots of the Opponent’s website (Annexure CH-1);
· Extracts from the Australian Trade Marks Register of registered trade mark numbers 1772823 and 1772824 (Annexure CH-2);
· A certificate of company name change (Annexure CH-3); and
· Sales and advertising figures broken down by country and dates of first use (Confidential Annexure CH-4).
Grounds of Opposition, Onus and Standard of Proof
12. The SGP nominated grounds of opposition under ss 44, 60 and 62A of the Act. The Opponent needs to establish at least one of these grounds to be successful in this opposition.
13. The Opponent bears the onus of establishing the ground of opposition.[2] The relevant standard of proof is the ordinary civil standard based on the balance of probabilities.[3] The date at which the rights of the parties are to be determined is 3 June 2016, being the filing date of the application[4] which here is the same as the ‘priority date’ stipulated in ss 44 and 60.
Discussion
[2] Food Channel Network Pty Ltd v Television Food Network GP [2010] FCAFC 58, [32].
[3] Telstra Corporation Limited v Phone Directories Company Pty Ltd [2015] FCAFC 156, [133].
[4] Southern Cross Refrigerating Co v Toowoomba Foundry Pty Ltd [1954] HCA 82, [4].
Section 44
14. Section 44 of the Act relevantly provides:
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.
15. To establish this ground of opposition, the Opponent must identify at least one trade mark which satisfies the following requirements:
it has a priority date which is earlier than that of the Trade Mark;
it is substantially identical with or deceptively similar to the Trade Mark; and
it is in respect of similar goods, and/or services which are closely related to, the Applicant’s Goods.
16. The following trade marks were identified in the SGP as supporting this ground of opposition:
Trade Mark: ADAM
Registration Number: 1772823
Priority Date: 25 May 2016
Goods:Class 12: motor vehicles, not being motorized cycles; motor vehicle parts and accessories, not relating to cycles or motorized cycles
Trade Mark: ADAM X
Registration Number: 1772824
Priority Date: 25 May 2016
Goods:Class 12: motor vehicles, not being motorized cycles; motor vehicle parts and accessories, not relating to cycles or motorized cycles
(collectively ‘the Adam Registrations’).
17. It is clear to me that the Adam Registrations have earlier priority dates to the Trade Mark. Likewise, they both contain Class 12 claims for goods similar to the Applicant’s Goods. For example, the Applicant’s Goods contain a broad claim for ‘automobiles’ which would include goods such as ‘motor vehicles, not being motorized cycles’ in the context of notional use.[5] Similarly, ‘motor vehicle parts and accessories, not relating to cycles or motorized cycles’ specified in the Adam Registrations would include the various tyres specified in the Applicant’s Goods. It follows that the requirements (i) and (iii) of s 44 have been satisfied.
[5] Berlei Hestia Industries Ltd v The Bali Company Inc [1973] HCA 43, [11] (Mason J).
18. The Opponent did not contend the Trade Mark was substantially identical to either of the Adam Registrations. I agree. In accordance with the well-established test as set out in Shell Co of Australia Ltd v Esso Standard Oil (Australia) Ltd, (‘Shell’)[6] a side-by-side comparison reveals notable differences between the respective trade marks. These include the presence of a diamond device in the Trade Mark and the additional two letters, ‘AS’, at the termination of the word element of the Trade Mark. These differences would preclude a finding of substantial identity.
[6] [1963] HCA 66, [12].
19. This ground of opposition therefore turns on whether the Trade Mark is deceptively similar to either of the Adam Registrations. The term ‘deceptively similar’ is defined in s 10 of the Act:
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.
20. The assessment of deceptive similarity was considered by Windeyer J in Shell who observed:
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 [mark].[7]
[7] Ibid [13].
21. In Millennium & Copthorne International Limited v Kingsgate Hotel Group Pty Ltd, Jacobson J summarised the principles of deceptive similarity with reference to the authorities as follows:[8]
[8] [2012] FCA 1022, [37]-[46].
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[9] at [49]; Australian Woollen Mills[10] 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[11] 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[12] 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].
[9] Registrar of Trade Marks v Woolworths Ltd [1999] FCAFC 1020.
[10] Australian Woollen Mills Ltd v FS Walton & Co Ltd [1937] HCA 51.
[11] Crazy Ron’s Communications Pty Ltd v Mobileworld Pty Ltd [2004] FCAFC 196; (2004) 209 ALR 1.
[12] Southern Cross Refrigerating Co v Toowoomba Foundry Pty Ltd (1954) 91 CLR 592.
22. Unquestionably, the prefix ‘ADAM’ is common to each trade mark. However, this in itself is not sufficient to conclude that the parties’ trade marks are deceptively similar. This is because the trade marks must be considered in their entirety[13] and it is the general effect of the trade marks as wholes that must be compared.[14]
[13] Food Channel Network Pty Ltd v Television Food Network GP [2010] FCAFC 58, [92].
[14] Clark v Sharp (1898) 15 RPC 141, 146.
23. For convenience, I will address the Adam Registrations separately in comparison to the Trade Mark.
Trade mark number 1772823 (‘ADAM Mark’)
24. The trade marks differ visually. The Trade Mark contains a prominent diamond device above the word ADAMAS, whereas the ADAM Mark is devoid of a comparable diamond device. Meanwhile, the word element in the Trade Mark, ADAMAS, contains two extra letters when compared to the ADAM Mark. This elongation of the word, in the context of four letters, creates a pronounced visual dissimilarity between the trade marks.
25. The trade marks are also conceptually different. I consider it is likely that ADAMAS will be perceived and recalled as an invented or foreign word. The prefix of ‘ADAM’ and its identity is subsumed within the Trade Mark as a whole. Tellingly, there is no natural break within ADAMAS to conclude that the ordinary consumer would seize upon the prefix “ADAM” and proceed to imperfectly recollect the Trade Mark as “ADAM - AS” or “ADAM – A – S”.
26. Conversely, ADAM is a word that ordinary consumers would be readily familiar with given it is a common Australian male first name. It will clearly be perceived and remembered on this basis. As such, the trade marks are conceptually distinct - the Trade Mark conveys the impression of an invented or foreign word, whereas the ADAM Mark refers to a male person.
27. Further, an aural comparison of the trade marks reveals notable differences. The word element of the Trade Mark is three syllables long and likely to be pronounced by the ordinary consumer as “A – DA - MAS”. In contrast, the ADAM Mark is comprised of two syllables and would generally be pronounced as “A - DAM”. Thus, the trade marks are aurally dissimilar.
28. In terms of the goods to be compared, consideration must also be given to the surrounding circumstances. This includes the inherent nature of the conflicting goods and the degree of care that an ordinary consumer would exercise in purchasing same. It is generally accepted that the more expensive the goods or services are, the more likely a purchaser will exercise a greater degree of attention and care in selecting same.[15]
[15] Re Application by Pianotist Company Ltd (1906) 23 RPC 774, 777.
29. Broadly speaking, the conflicting goods are automobiles and automobile parts. Such goods are often expensive by nature and do not lend themselves to being impulsively purchased. Prospective consumers will generally inform themselves of the different automobile makes, models and parts compatibility to an extent not to be expected of a purchaser of less expensive goods. It follows that the trade marks are likely to be subject to a closer scrutiny and consideration. Consequently, the higher degree of care likely to be exercised by prospective consumers would further mitigate the potential for deception or confusion between the relevant trade marks.
30. I am satisfied the Trade Mark is not deceptively similar to the ADAM Mark.
Trade mark number 1772824 (‘ADAM X Mark’)
31. The considerations discussed in respect of the ADAM Mark are equally applicable to the ADAM X Mark. This is unsurprising given the ADAM X Mark incorporates one additional element – namely the letter ‘X’.
32. The addition of the letter ‘X’ as a separate element within the ADAM X Mark renders it more dissimilar to the Trade Mark than the ADAM Mark. This is because it adds another point of visual dissimilarity between the trade marks and does not materially alter the concept conveyed. The ADAM X Mark is still likely to be perceived as referring to a male person, albeit accompanied by the letter ‘X’.
33. In respect of the aural comparison, the letter ‘X’ is an unusual single letter that, in my view, would be difficult to slur in isolation. Relevantly, in the context of the automobile industry which often uses letters to denote series models or iterations, it also has the potential of being discerned as representing a Roman numeral and being articulated as the number 10. As such, the letter ‘X’ is unlikely to be slurred or merged with the preceding word ADAM. Nevertheless, even allowing for imperfect elocution, the potential for increased aural similarity between the trade marks would not be sufficient to overwhelm the considerable visual and conceptual dissimilarities that exist between the respective trade marks as wholes. This is particularly so given the nature of the goods where visual inspection of the trade marks is highly likely given the costs associated with, and the typical emblazoned nature of, such goods.
34. Bearing the above in mind, I am satisfied that the Trade Mark is not deceptively similar to either of the Adam Registrations. I consider there are significant visual, conceptual and aural dissimilarities between the respective trade marks such that, when considered as wholes, there is no real tangible danger of deception or confusion occurring.
35. Accordingly, the s 44 ground of opposition has not been established.
Section 60
36. Section 60 of the Act relevantly provides:
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.
37. To establish this ground of opposition, the Opponent must demonstrate the existence of another trade mark which had acquired a reputation in Australia before 3 June 2016. The Opponent must then show that because of this reputation use of the Trade Mark would be likely to deceive or cause confusion.
The meaning of reputation was considered by Kenny J in McCormick & Co Inc v McCormick as referring to ‘the recognition of the [trade mark] by the public generally’.[16] Her Honour quoted with approval the following statement of Lockhart J in Re ConAgra Inc v McCain Foods (Aust) Pty Ltd, (‘ConAgra’):[17]
[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 ...
[16] [2000] FCA 1335, [81].
[17] [1992] FCA 159, [118].
39. The reputation in the other trade mark must be amongst a ‘significant’ or ‘substantial’ number of Australian consumers[18] but this is tempered by the nature of the relevant market. The reputation must also be established as a matter of fact by the Opponent.[19]
[18] See Renaud Cointreau & Cie v Cordon Bleu International Ltee [2001] FCA 1170; ConAgra.
[19] ConAgra, [77].
40. The Adam Registrations were identified in the SGP as supporting this ground of opposition. The Opponent’s Submissions further relied on the existence of the ADAM S and ADAM ROCKS trade marks. Neither of these trade marks were particularised in the SGP and I have not been given much detail about their use. I have therefore chosen to give these trade marks little weight. However, this decision does not have any direct consequence on the determination of this ground of opposition.
41. The evidence provided in Annexure CH-1 is problematic for several reasons. The screenshots are undated and the written content is in German. As such, very little can be gleaned from this other than the Opponent uses a variety trade marks in relation to automobiles and some of these include the words ADAM, ADAM JAM, ADAM SLAM and ADAM BLACK JACK. Further, the screenshots do not indicate a functionality to switch language nor is there any indication that Australian consumers have been specifically targeted.
42. Meanwhile, the evidence provided in Confidential Annexure CH-4 is not sufficiently particularised to derive any meaningful significance. The figures disclosed indicate the Opponent has enjoyed significant revenue, however, this is largely confined to jurisdictions outside of Australia. The wholesale and advertising figures disclosed also suffer similar issues. No attempt has been made to demonstrate what, if any, figures relate to the Australian marketplace. Examples of marketing activities and/or materials demonstrating how the Adam Registrations are used in relation to the goods were not supplied.
43. The Opponent appears to be asserting a reputation in Australia exclusively premised on a spillover reputation[20] from its overseas use of the Adam Registrations. However, the paucity of evidence simply does not provide any cogent basis to sustain this assertion.
[20] Ibid [115].
44. Accordingly, I am not satisfied as a matter of fact that, as at 3 June 2016, the Adam Registrations had acquired a sufficient reputation in Australia amongst a significant or substantial number of Australian consumers. As s 60(a) of the Act has not been satisfied, consideration of s 60(b) is not required.
45. This ground of opposition has not been established.
Section 62A
46. Section 62A of the Act relevantly provides:
Application made in bad faith
The registration of a trade mark may be opposed on the ground that the application was made in bad faith.
47. To establish this ground of opposition, the Opponent must demonstrate that the act of making the application was in bad faith.
48. The concept of bad faith was considered in Fry Consulting Pty Ltd v Sports Warehouse (No 2) and Dodds-Streeton J provided the following insight:
Bad faith, in the context of s 62A, does not, in my opinion, require, although it includes, dishonesty or fraud. It is a wider notion, potentially applicable to diverse species of conduct.
The formulation in United Kingdom authority of bad faith as falling short of the standards of acceptable commercial behaviour observed by reasonable and experienced persons in a particular area is, in my view, an apt touchstone. An overly literal application may, however, tend to negate the relevance attributed to the applicant’s mental state in the combined test preferred in Harrison.
Further, in my view, mere negligence, incompetence or a lack of prudence to reasonable and experienced standards would not, in themselves, suffice, as the concept of bad faith imports conduct which, irrespective of the form it takes, is of an unscrupulous, underhand or unconscientious character.
The proposition advanced by Sports Warehouse, that mere awareness that an overseas company owning the mark is already operating or intending to operate in Australia would amount to bad faith, is unduly absolute. The question is whether, in all the particular circumstances, the applicant’s knowledge was such that his decision to apply for registration at the relevant date would be regarded as in bad faith by persons adopting proper standards …[21]
[21] Fry Consulting Pty Ltd v Sports Warehouse Inc (No 2) [2012] FCA 81, [164] – [167].
49. The SGP alleges that the application has been filed in bad faith because the Adam Registrations are well known and the Applicant allegedly seeks to derive benefit from the Opponent’s reputation. The Opponent’s Submissions provide no compelling reasons or evidence to corroborate this allegation. As such, the Opponent’s allegation amounts to a mere assertion.
50. As noted by Dodds-Streeton J in the abovementioned case, equating mere awareness of the Opponent’s trade mark to amount to bad faith is unduly absolute. In this instance, there is considerable doubt as to whether the Applicant would even be aware of the Adam Registrations given the Opponent’s evidential lack of reputation within the jurisdiction and the fact that the Adam Registrations were only filed 9 days prior to the filing date of the Trade Mark. The Opponent has not provided any information or evidence that would suggest the Applicant’s filing of the Trade Mark was “unscrupulous, underhand or unconscientious”.
51. Given the dissimilarity of the trade marks together with the absence of any probative evidence impugning the Applicant’s conduct in making the application, this ground of opposition must necessarily fail.
52. Accordingly, this ground of opposition has not been established.
Decision
53. Section 55 of the Act relevantly provides:
Decision
(1) Unless subsection (3) applies to the proceedings, 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.
54. The Opponent has not established any of its grounds of opposition.
55. Trade mark application number 1774969 may proceed to registration 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 the appeal has been decided or discontinued and the disposition of the application should be in accordance with the court’s order or direction.
Costs
56. 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 as per Schedule 8 of the Trade Mark Regulations 1995 (Cth).
Nicholas Barbey
Hearing Officer
Oppositions and Hearings
Trade Marks and Designs
1 May 2019
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