Opposition by Zero Motorcycles Inc to registration of trade mark application number 2056360 (Class 12) – BENZINA ZERO figurative - in the name of Benzina Zero Pty Ltd.

[2021] ATMO 156

TRADE MARKS ACT 1995

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

Re:Opposition by Zero Motorcycles Inc to registration of trade mark application number 2056360 (Class 12) – BENZINA ZERO figurative - in the name of Benzina Zero Pty Ltd.

Delegate:	Blake Knowles
Representation:	Opponent: Cooper Mills Lawyers Pty Ltd. Applicant: Y Intellectual Property.
Decision:	2021 ATMO 156 Trade Marks Act 1995 (Cth) – opposition under section 52 – grounds of opposition under Reg 4.15A pressed and established for some goods – application amended – trade mark to proceed to registration.

Background

1. This is a decision on the opposition by Zero Motorcycles Inc (‘Opponent’) to registration of trade mark number 2056360 (‘Application’) filed by Benzina Zero Pty Ltd (‘Applicant’).

2. The Application was filed on 10 December 2019 (‘Relevant Date’) for the following trade mark and goods:

   (‘Trade Mark’)

   Class 12: Motor scooters; motor vehicles; vehicles utilising electric motors; push scooters (vehicles); mopeds; motorbikes; motorcycles; electric bicycles; motorised bicycles; electric vehicles; none of the aforementioned being autonomous cars

   (‘Goods’)

3. The Trade Mark was examined, accepted for registration, and advertised for opposition purposes. The Opponent filed notice of its intention to oppose registration on 10 July 2020, and a statement of grounds and particulars (‘SGP’) on 10 August 2020. The Applicant subsequently filed a notice of intention to defend the Trade Mark from opposition on 18 September 2020.

4. The parties had the opportunity to file evidence in accordance with the timetable set out in reg 5.14.[1] Neither party chose to file evidence.    

   [1] Unless otherwise stated, each reference to a section or regulation in these reasons is a reference to a section of the Trade Marks Act 1995 (Cth) or regulation of the Trade Marks Regulations 1995 (Cth).

5. The parties were given an opportunity to request an oral hearing or file written submissions. Both parties chose to file written submissions only. I have decided the matter based on the particulars detailed in the SGP and the submissions of the parties.

   Grounds and onus

6. The SGP nominated grounds of opposition under ss 42(b), 44, 58, and 60. However, the Opponent in submissions pressed only grounds under s 44.

7. I note that two of the trade marks relied on by the Opponent under the s 44 ground in the SGP are protected international trade marks (‘PITMs’). Section 44 is not the applicable ground for rejecting a trade mark based on similarity with PITMs. However, reg 4.15A performs the same function as s 44 when a trade mark is being considered for rejection based on similarity to PITMs. I consider the nomination of s 44 and the reliance on the PITMs as particularised in the SGP as together being sufficient to constitute effective nomination of reg 4.15A as a ground of opposition.

8. The Opponent carries the burden of establishing the ground of opposition on the balance of probabilities.[2] The rights of the parties are assessed as at the Relevant Date.[3]

   Discussion

   [2] Pfizer Products Inc v Karam [2006] FCA 1663, 22 (Gyles J); Telstra Corporation Limited v Phone Directories Company Pty Ltd [2015] FCAFC 156, 133 (Besanko, Jagot and Edelman JJ).

   [3] Southern Cross Refrigerating Co v Toowoomba Foundry Pty Ltd (1954) 91 CLR 592, 595 (Kitto J).

   Reg 4.15A

9. To establish grounds of opposition under reg 4.15A(1), the Opponent must rely on at least one protected international trade mark that has a priority date earlier than the Application, and which is in the name of a person other than the Applicant. The earlier mark must be substantially identical or deceptively similar to the Trade Mark. Further, the earlier mark must be filed or protected in respect of either goods that are similar to the Goods of the Application or services that are closely related to the Goods of the Application.

10. The Opponent in the SGP initially relied on six trade marks as the basis for this ground, namely trade mark numbers 877458, 877460, 991944, 1275243, 1321210, and 1322078. However, the Opponent in submissions only argues deceptive similarity of the Trade Mark with two PITMs held by the Opponent, both of which essentially cover the same goods. The most relevant of those two PITMs is below:

    Trade Mark Number:         1321210 (International Registration number 1010496)

    Trade Mark:  ZERO MOTORCYCLES

    (‘Opponent’s Mark’)

    Goods:Class 12: Electric vehicles, namely motorcycles excluding tyres, rims and parts and fittings for tyres, brakes, covers rotors, drums and loaded callipers.

    (‘Opponent’s Goods’)

    Priority Date:  30 July 2009

11. The Opponent’s Mark has a priority date of 30 July 2009, which is earlier than the priority date of the Application (10 December 2019). As such, I must determine whether the Trade Mark is deceptively similar to the Opponent’s Mark.

12. The test for whether trade marks are deceptively similar requires that one trade mark so nearly resemble another so that it is likely to deceive or cause confusion.[4] In determining deceptive similarity, the following must be taken into account:

    -There must be a real, tangible danger of confusion, not just a mere possibility.5F[5] Likelihood of confusion can be established if a number of consumers would be caused to wonder whether the applicant’s goods or services come from some other source. It is enough if the ordinary person entertains a reasonable doubt.6F[6]

    -The impression of the respective marks as a whole must be considered, including the size and prominence of word and device elements and their relationship to each other.7F[7] However, deceptive similarity can also be found where one mark uses an essential feature of the other.8F[8]

    -Consumers may retain an imperfect recollection of a mark or its essential features.9F[9]

    -It may be relevant that an element of the trade marks under consideration is descriptive. However, descriptiveness does not preclude a finding of deceptive similarity.10F[10]

    -The impression of the mark on ordinary consumers is relevant, not the impression on those who are particularly perceptive or cautious, or those who are exceptionally careless or stupid.11F[11]

    -It must be considered how the goods or services are ordinarily sold or provided.12F[12]

    [4] Trade Marks Act 1995 (Cth) s 10.

    [5] Southern Cross Refrigerating v Toowoomba Foundry (1954) 91 CLR 592, 595 (Kitto J).

    [6] Coca‑Cola Co v All‑Fect Distributors Ltd [1999] FCA 1721, [39] (Black CJ, Sundberg and Finkelstein JJ); Southern Cross Refrigerating Co v Toowoomba Foundry Pty Ltd (1954) 91 CLR 592, 595 (Kitto J).

    [7] Optical 88 Ltd v Optical 88 Pty Ltd (No 2) [2010] FCA 1380, [100] (Yates J); Crazy Ron's Communications Pty Ltd v Mobileworld Communications Pty Ltd [2004] FCAFC 196, [91]-[103] (Moore, Sackville, and Emmett JJ).

    [8] Saville Perfumery Ltd v June Perfect Ltd (1941) 58 RPC 147, 174-5 (Viscount Maugham); De Cordova v Vick Chemical Co (1951) 68 RPC 103, 105-6 (Lord Radcliffe).

    [9] Crazy Ron’s Communications Pty Ltd v Mobileworld Communications Pty Ltd [2004] FCAFC 196, [79] (Moore, Sackville, and Emmett JJ).

    [10] Lift Shop P/L v Easy Living Home Elevators P/L [2014] FCAFC 75, [64] (Besanko, Yates, and Mortimer JJ).

    [11] Australian Woollen Mills Ltd v FS Walton & Co Ltd (1937) 58 CLR 641, 658 (Dixon and McTiernan J).

    [12] Ibid.

13. The Applicant cites several authorities, including Conde Naste Publications Pty Ltd v Taylor where Burchett J held the trade marks VOGUE and EUROVOGUE (with device) were not deceptively similar and said that a court should be careful not to shut out inappropriately other traders from the fair use of language in ways that will not in reality deceive or confuse.[13] The Applicant also refers to several decisions of the Registrar in which it was held the following respective marks JOCKEY and THROTTLE JOCKEY,[14] REBELLION and SOUL REBELLION,[15] and BIGWORLD: CITIZEN ZERO and CITIZEN[16] were not deceptively similar, based on the different meanings of the trade marks under comparison.

    [13] [1998] FCA 864 (Burchett J).

    [14] Jockey International, Inc. v Darren Wilkinson [2010] ATMO 22 (Hearing Officer Spence).

    [15] Chris Kingsley v David Scott [2011] ATMO 20 (Hearing Officer Wilson).

    [16] Citizen Tokei Kabushiki Kaisha v Micro Forte Pty Limited (Hearing Officer Murray).

14. Turning to the present comparison, the Trade Mark consists of two words BENZINA ZERO within a disc. I consider that the word ZERO is an essential feature of the Trade Mark. Although I acknowledge it is both the second and the less distinctive word in the Trade Mark, it is equally prominent in size as the word BENZINA. In comparison, the Opponent’s Mark consists of two words ZERO MOTORCYCLES. The essential distinguishing feature of the Opponent’s Mark is the word ZERO. The second word MOTORCYCLE is purely descriptive of the goods.

15. The Applicant submits that the word BENZINA means ‘petrol’ in Italian, and that as a whole, the trade mark alludes to the nature of the Goods as being petrol free vehicles (e.g. petrol zero or perhaps even zero emissions). In this context, the Applicant submits that ZERO is a ‘qualifying’ term. The Applicant also refers to the fact that it has obtained registration of the plain word mark BENZINA ZERO (trade mark number 2115265) for a similar range of goods, and I should take this into account in determining deceptive similarity.

16. I do not accept the Applicant’s submission that ZERO is merely a qualifying term for BENZINA, in the sense that it would be perceived as alluding to the Goods being petrol free. I could perhaps give more weight to this argument if the mark was PETROL ZERO. However, given that most Australians do not speak Italian (and therefore would likely consider the word BENZINA to have no meaning), it is unlikely that many people would perceive ZERO as alluding to the Goods being electrically powered. There is also no evidence that the term ZERO is commonly used to describe goods that are electrically powered. While I accept that the combination of the word ZERO with another word may create a composite whole that alters the meaning of ZERO, this is not the case when it is combined with BENZINA.

17. I also do not give much weight to the fact that the Applicant has registered the word mark BENZINA ZERO. This trademark was filed after the Relevant Date and was not opposed (possibly because the Opponent was not aware of its existence). As such, the BENZINA ZERO word mark has not been subject to the same scrutiny as the present Application. Had the BENZINA ZERO word mark been registered prior to the Opponent’s Mark, it likely would have been a more compelling factor in support of the Applicant’s case.  

18. Considering all relevant factors, particularly the fact that ZERO is a prominent essential feature of both the Trade Mark and the Opponent’s Mark, and given that ZERO in the context it is used has no obvious relationship to the Goods, I am satisfied that a significant number of consumers may be caused to wonder whether Goods sold under the Trade Mark originated from the Opponent, or were connected with the Opponent in some way. I therefore consider the Trade Mark to be deceptively similar to the Opponent’s Mark.  

19. I must now consider whether the Goods are either the same or are ‘of the same description’ as the Opponent’s Goods. The test for determining whether goods and services are of the same description is a practical judgement formed by looking at a number of factors, falling within the categories of the nature of the goods, their respective uses, and the trade channels through which they are sold, with no single factor being determinative.[17]

    [17] Re Jellinek’s Application (1946) 63 RPC 59, 70.

20. I consider that the claims for motor scooters, motor vehicles, vehicles utilising electric motors, mopeds, motorbikes, motorcycles, electric bicycles, motorised bicycles, and electric vehicles in the Goods are all either the same or of the same description as the electric vehicles, namely motorcycles claimed in the Opponent’s Goods. All of the aforesaid Goods are, or include, electric powered two wheeled personal cycle transport and as such are either the same as, or similar in nature and purpose to, electric vehicles, namely motorcycles. As such, I consider that motor scooters, motor vehicles, vehicles utilising electric motors, mopeds, motorbikes, motorcycles, electric bicycles, motorised bicycles, and electric vehicles are goods that are the same or of the same description as electric vehicles, namely motorcycles.

21. However, I do not consider that push scooters (vehicles) claimed in the Goods are the same or of the same description as electric vehicles, namely motorcycles. A push scooter is an unpowered form of personal transport operated by a standing rider who propels the vehicle using the push of one leg. Push scooters are clearly of a different nature to electric vehicles, namely motorcycles, and are sold through different trade channels.

22. For the reasons given above, I am satisfied that a ground of opposition is established under reg 4.15A in relation to:  motor scooters, motor vehicles, vehicles utilising electric motors, mopeds, motorbikes, motorcycles, electric bicycles, motorised bicycles, and electric vehicles.

23. As I consider that a ground of opposition has been established based on the Opponent’s second trade mark number 1321210, there is no reason to consider the other trade mark relied on by the Opponent, namely trade number 1322078 (ZERO S). Given that the goods covered by trade mark number 1321210 and 1322078 are effectively the same, a finding of deceptive similarity with trade mark number 1322078 would not advance the Opponent’s case any further.

    Resolution of opposition

24. In Apple Inc. v Registrar of Trade Marks, Yates J stated that:

    My finding that the application for registration of APP STORE for the designated services in Class 35 must be rejected determines the fate of the application as a whole. This is because there are no separate applications for registration of the mark for the designated services Classes 38 and 42. There is but one application covering registration of the mark for all the services that have been specified. If the application fails in one respect, it fails as a whole. In these circumstances, is not necessary for me to proceed to determine the registrability of APP STORE for the designated services in Class 38 or Class 42.[18]

    [18] [2014] FCA 1304, [232].

25. In circumstances where an opposition has been established in respect of some, but not all, of the Goods, the Registrar may proceed to reject the application in its entirety, under the principles outlined above. However, the Registrar also has a discretion to offer an amendment allowing an applicant to amend the application to remove goods for which a ground of opposition has been established.

26. Given the opposition was made out in relation to all of the Goods except push scooters (vehicles), on 15 November 2021, I offered the Applicant the opportunity to amend the specification to remove: motor scooters; motor vehicles; vehicles utilising electric motors; mopeds; motorbikes; motorcycles; electric bicycles; motorised bicycles; electric vehicles; none of the aforementioned being autonomous cars.

27. The Applicant agreed and the amendment has now been made. As such, I find that the opposition has not been established for the remaining goods, being push scooters (vehicles).

    Decision and costs

28. Following the amendment referred to above, I find that the Opponent has failed to establish the ground of opposition pressed under reg 4.15A in relation to push scooters (vehicles). The Trade Mark may proceed to registration for push scooters (vehicles) not less than one month from the date of this decision.

29. If the Registrar is served with a notice of appeal, 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.

30. Both parties requested an award of costs. The usual rule is that costs follow the event. As the Opponent was for the most part successful, I award costs against the Applicant.

    Blake Knowles
    Hearing Officer
    16 December 2021