Osram GmbH v Genda International Pty Ltd

[2009] ATMO 96

TRADE MARKS ACT 1995

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

Re:Opposition by Osram GmbH to registration of trade mark application 1194347(11) - ILUX - filed in the name of Genda International Pty Ltd.

Delegate:

Jock McDonagh

Representation:

Opponent: Christian Schieber of Watermark Patent & Trade Mark Attorneys

Applicant: not represented, no appearance

Decision:

2009 ATMO 96

Section 52 opposition – ss 44, 57, 58, 58A, 60 & 62A grounds not established – costs awarded against opponent

Background

1. Genda International Pty Ltd (‘the opponent’) is the registered owner of a trade mark, current details of which appear below:

Trade mark number:     1194347

Registered from:  21 August 2007

Specifications:  Class 11: Lamps - energy saving

Trade mark:

1. The trade mark was accepted for possible registration, under the provisions of the Trade Marks Act 1995 (“the Act”), and advertised for opposition purposes. Osram GmbH (”the opponent”) filed a Notice of Opposition under section 52 of the Act, objecting to the registration of the trade mark. The opponent served and filed evidence in accordance with the Trade Marks Regulations 1995 after which the matter was set down before me, a delegate of the Registrar of Trade Marks, for a hearing on 21 August 2009, in Canberra. 

Evidence

1. The following evidence was filed and served pursuant to the Act:

Declarant	Status	Date	Exhibits
Ludwig Johan Wildmoser	Deputy Secretary Trade Mark Department of opponent	30.09.08	LJW-1 to LJW-6
Peter Portelli	Director – Strategic Development OSRAM Australia Pty Ltd	14.11.08	PP-1 to PP-4

The Hearing

1. The applicant did not appear at the hearing nor did it provide written submissions. The opponent was represented by Christian Schieber and Leanne Oitmaa of Watermark Patent and Trade Marks Attorneys, by telephone.

2. The Notice of Opposition cited sections 57, 58, 58A, 60 and 62A as grounds of opposition under the Act; however, in his submissions Mr Schieber, for the opponent, only relied upon the grounds of opposition under sections 44 and 60. For the sake of completeness, I find that the grounds not relied upon at the hearing have not been established.

Discussion

Section 44

1. Section 44 states:

Identical etc. trade marks

44.(1) Subject to subsections (3) and (4), an application for the registration of a trade mark (applicant's trade mark) in respect of goods (applicant's goods) must be rejected if:

(a) the applicant's trade mark is substantially identical with, or deceptively similar to:

(i) a trade mark registered by another person in respect of similar goods or closely related services; or
(ii) a trade mark whose registration in respect of similar goods or closely related services is being sought by another person; and

(b) the priority date for the registration of the applicant's trade mark in respect of the applicant's goods is not earlier than the priority date for the registration of the other trade mark in respect of the similar goods or closely related services.

1. Deceptive similarity is defined in section 10 of the Act as follows:

Definition of deceptively similar

10. 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.

1. To establish the section 44 ground, the opponent must establish all of the following:

• at the priority date

• there was a substantially identical or deceptively similar trade mark application or registration

• in respect of similar goods or closely related services

• in the name of a person other than the applicant.

1. The opponent nominated its registration 477153 - BILUX - for this ground.  This registration has an earlier priority date than the applicant's trade mark, namely 21 February 2003. This registration nominates the following goods in Class 11:

   Installations and apparatus included in class 11, all for lighting; electric lamps; and parts and fittings included in class 11 for all the aforesaid goods

2. It is obvious that the opponent’s goods are similar to those of the applicant, with both covering “lamps”.

3. Therefore, the real issue under this ground is whether or not the competing trade marks are deceptively similar or substantially identical. The opponent’s representative conceded that the trade marks were not substantially identical and I accept that concession.

4. Mr Schieber cited the relevant authorities, including Jafferjee v Scarlett (1937) 57 CLR 115, De Cordova v Vick Chemical Co. (1951) RPC 271, Southern Cross Refrigerating Co. v Toowoomba Foundry Pty Ltd (1954) 91 CLR 592, Shell Co of Australia Limited v Esso Standard Oil (Australia) Limited (1963) 109 CLR 407 and Registrar of Trade Marks v Woolworths Ltd (1999) 45 IPR 411.

5. In particular, Mr Schieber submitted that the potential conflict between two trade marks is a question of fact to be determined in the circumstances of the particular case. I was invited to consider, bearing in mind imperfect recollection of consumers when effecting the assessment:

• appearance, sound and connotation of the trade marks;

• nature of the goods and the kind of customer; and

• all surrounding circumstances.

1. The opponent noted that the applicant’s trade mark was a device, comprising the word ILUX and what appeared to be a fluorescent tube underlining the word element of the trade mark. Mr Schieber submitted that the word element was the main or sole distinctive feature of the trade mark.

2. Mr Scieber submitted the appearance of the respective trade marks was very similar in that the only difference was the letter “B” at the beginning of the opponent’s cited trade mark.

3. Further, the aural similarities of the marks, he submitted, were highly likely to cause confusion amongst consumers.

4. The opponent has identified the correct issues in this matter and the relevant judicial authorities for assessment of the conflicting trade marks. While the applicant’s fluorescent light element of its device cannot be wholly discounted, it is true that the major comparison is between the words ILUX and BILUX.

5. However, despite the similarities between the trade marks, I am not satisfied that there is a real tangible danger of deception or confusion. In this case, it not simply a case of the applicant’s trade mark being one letter short of the opponent’s trade mark.

6. Both trade marks share a descriptive suffix common among marks in this class of goods - LUX - and include a prefix that tends to add significance to the trademark as a whole. In the case of the applicant’s trade mark, the prefix is “I”, which has gained much currency in the area of home computers and entertainment in recent years. The opponent’s trade mark has the prefix “BI” suggestive of the number two. I consider it likely that in spoken form, the first syllable of each mark would be emphasized, thus reducing the likelihood of confusion.

7. I am not satisfied that the opponent has established this ground of opposition.

Section 60

1. Section 60 of the Act provides:

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

60. 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.

1. To satisfy section 60 the opponent must establish:

• priority

• reputation acquired in australia

• because of that reputation the use of the applicant’s trade mark would be likely to deceive or cause confusion.

1. There is no longer a need to establish substantial identity or deceptive similarity to rely upon this ground of opposition, although such findings could be relevant to determining the issue.

2. The relevant priority date is 21 August 2007. The opponent again relied upon its registered trade mark BILUX mark used in Australia and throughout the world over many decades.

3. Mr Schieber submitted that the test for reputation is that propounded in ConAgra Inc v McCain Foods  (Aust) Pty Ltd (1992) 23 IPR 193 at 234:

   But reputation 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 …

In practice, it is commonplace to infer reputation from a high volume of sales, together with substantial advertising expenditures and other promotions, without any direct evidence of consumer appreciation of the mark as opposed to the product.

1. The opponent relied upon evidence of the BILUX trade mark being used in Germany since 1925 and for over 35 years in Australia. The trade mark has been applied to an automotive headlamp that provides both full beam and dipped beam from a single light source.

2. The evidence demonstrated billions of BILUX lamps being sold world wide, with more than a million dollars worth of BILUX lamps per year being sold in Australia up to and including the priority date.

3. The opponent also provided evidence of advertising material used to promote the opponent’s products in Australia.

4. I am satisfied that the opponent has an established reputation in Australia; however, for reasons that follow, I am not satisfied that this reputation would result in deception or confusion if the applicant’s trade mark were to be registered and used in Australia.

5. The opponent has established its reputation in a very specialized market, that of automotive headlamps. The applicant’s goods (energy saving lamps) bearing its trade mark, which includes the device element of a domestic fluorescent light, are not likely to be offered for sale in the same market as automotive headlamps.

6. Further, the evidence shows that the opponent’s BILUX headlamps and sales packaging are invariably predominantly marked with the OSRAM trade mark. Likewise, promotional material bears the OSRAM mark as the major identifier with BILUX as a secondary identifier.

7. In my opinion, the likely customer for BILUX goods will be looking for OSRAM BILUX goods. Such a customer is not likely to encounter ILUX goods in the automotive electrical goods department of a store. Nor is a customer faced with an ILUX lamp likely to assume that it is an OSRAM lamp.

8. I am not satisfied that the opponent has established this ground of opposition.

Decision

1. Section 55 of the Act provides:

   Unless the proceedings are discontinued or dismissed, 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.

2. I find that neither of the grounds of opposition on which the opponent relied have been established.

3. The trade mark application may therefore 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 discontinued, or in the event of a decision from the Court, that the application be subject to that decision.

Costs

1. The opponent sought its costs. However, I award costs against the opponent pursuant to the official scale.

Jock McDonagh

Hearing Officer

Trade Marks Hearings

27 November 2009