Peter Hosking v TK Holdings (WA) Pty Ltd

[2023] ATMO 106

TRADE MARKS ACT 1995

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

Re:Opposition by Peter Hosking to registration of trade mark application 2109949 (35, 37) – AUTOELECOZ AUTO ELECTRICAL SUPPLIES (Figurative) – in the name of TK Holdings (WA) Pty Ltd

Delegate:

Nicholas Smith

Representation:

Opponent: Griffith Hack

Applicant: Baxter Patent Attorneys Pty Ltd

Decision:

2023 ATMO 106

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

Background

1. This decision concerns an opposition brought by Peter Hosking (‘Opponent’) to the registration of the trade mark which is the subject of the application detailed below in the name of TK Holdings (WA) Pty Ltd (‘Applicant’): 

Application Number:

2109949

Filing Date[1]:

7 August 2020

Services:

Class 35: Wholesale and retail sale of vehicle parts including electrical parts and systems, tools and equipment; Wholesale and retail sale of caravan accessories, spare parts, tools and equipment, trailer accessories, spare parts, tools and equipment; Wholesale and retail sale of marine accessories, spare parts, tools and equipment; Wholesale and retail sale of camping goods; Wholesale and retail sale of two-way radios, antennas for radios, portable refrigerators, nonelectric portable coolers, electrical apparatus for lighting; Wholesale and retail sale of lighting, spotlights, electric batteries, battery chargers, electric inverters, electric power supply apparatus, electric power converters, power analyzers, electric brake controllers, electric switches, electric connectors, electric cables, electric wire, photovoltaic solar panels; Wholesale and retail sale of parts and accessories for the aforementioned goods; Wholesale and retail sale and fitting of all vehicle lighting, battery systems, fridges & 4WD accessories for the aforementioned goods.
Class 37: Air conditioning systems installation and repair; burglar alarm installation and repair; car maintenance; electric appliance installation and repair; machinery installation, maintenance and repair; repair information; motor vehicle maintenance and repair; vehicle service station; vehicle repair; vehicle cleaning; vehicle lubricating (greasing); vehicle alternators installation, repair and maintenance; anti-theft device installation, repair and maintenance; immobilisers installation and repair; vehicle generators installation, repair and maintenance; vehicle fuel injection systems installation, repair, and maintenance; and installation and repair of all vehicle electrical system and parts

(‘Applicant’s Services’)

Trade Mark:

(‘Trade Mark’)

Endorsements

It is a condition of registration that, in use, the cross device contained within the trade mark will be rendered in colours other than red on a white or silver background, or white or silver on a red background.

[1] Also known in this decision as the ‘relevant date’.

2.  Unless otherwise indicated, any references to sections or regulations in this decision are references to sections or regulations of the Trade Marks Act 1995 (Cth) (‘Act’) or the Trade Marks Regulations 1995 (Cth) (‘Regulations’), respectively.

3.  Following the advertisement of the application’s acceptance for possible registration, the Opponent filed a Notice of Intention to Oppose the registration followed by a Statement of Grounds and Particulars on 17 May 2021 (‘SGP’).  The SGP raised grounds of opposition under ss 42(b), 44 and 60.  The Applicant filed a Notice of Intention to Defend on 2 July 2021. 

Evidence

1. The Opponent filed the following evidence in support of its opposition:

   ·Declaration made on 10 October 2021 by Peter Hosking, the Opponent, with Annexures 1 to 5 (‘Hosking 1’).

2. The Applicant filed the following evidence in answer:

   ·Declaration made on 13 January 2022 by Timothy Vernon Wright, the Director of the Applicant, with Exhibits TW-1 to TW-7 (‘Wright declaration’).

3. The Opponent filed the following evidence in reply:

   ·Declaration made on 12 March 2022 by Peter Hosking (‘Hosking 2’).

4. The entirety of the evidence filed the Applicant (and much of the evidence filed by the Opponent), including publicly available information such as the public use of the Trade Mark is claimed to be confidential.  I adopt the approach of the Delegate in Source Homeloans Pty Ltd v Coles Group Ltd, who when in receipt of a similar claim (albeit in respect of the opponent in that case) stated:

   The confidentiality claim obviously extends to the whole of the evidence led in support of the opposition. It is not clear to me how I could decide this matter without discussing the evidence the opponent has served and filed in support of its opposition. The onus in these proceedings is on the opponent to establish its grounds of opposition, at least to my satisfaction. Seemingly barred from any discussion of the opponent’s statements and exhibits and the weight that I attach to them if I were to lend credence to the claim, my hands would appear to have been effectively tied. Prima facie, the easiest way out of the dilemma would be to accede to the opponent’s wishes and find that it has not established its opposition. Thus, if I were to take Mr Peter’s request (made within several declarations) at face value, that would be the end of these matters.

   This position, obviously, is extreme, since the opponent has filed this evidence in support of its opposition and must expect the evidence to be discussed and weighed. It will be sufficient for me to say, in setting out my reasons for my decision, that there are arguably commercially sensitive matters in the evidence that I do not need to discuss in detail (and, if I do, my consolation lies in the fact that the opponent in not being specific in its request has brought the problem upon itself). None the less, the evidence of the parties as a whole satisfies me of various things, which I will set out under the appropriate headings below.[2]

   [2] [2008] ATMO 17, [5]-[6] (Hearing Officer Thompson).

5. I note that, if a party considers a piece of information to be commercially sensitive it must identify that information with specificity.  If in my summary of the evidence, I have disclosed information that is sensitive, then this is an issue that has arisen by that party not specifically identifying that information as sensitive.

6. Once the time allowed for filing evidence had ended the parties were given an opportunity to request a hearing in this matter or a decision without hearing.  On 28 March 2022 the Opponent requested a hearing by written submissions.  The matter was set down for a hearing and the matter was allocated to me.  In line with usual practice, a notice was sent to the parties on 14 November 2022 which contained a schedule for the provision of written summaries of submissions to be filed prior to the hearing.  The Opponent filed written submissions on 2 December 2022 (Opponent’s Submissions’).  The Applicant filed written submissions on 9 December 2022 (‘Applicant’s Submissions’). 

7. I am a delegate of the Registrar of Trade Marks and I am to decide the opposition as required by s 55 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.

   The Opponent

8. The Opponent is an Australian individual who is the owner of the company Tools.com Pty Ltd (‘Tools.com’).  Tools.com operates an online business selling automotive parts, tools and accessories.  

9. Tools.com is the owner of the trade marks listed below (‘Opponent’s Trade Marks’).  The goods and services for which the Opponent’s Trade Marks are registered are collectively referred to as the ‘Opponent’s Goods and Services’. 

Number	Trade Mark	Priority Date	Goods or Services
1113483	AUTOLEC SALES (‘Word Mark’)	15 May 2006	Class 9: Apparatus for testing in the automotive industry; automatic electric batteries; automotive electrical components; automotive performance testing apparatus; distributors being automotive electrical components; batteries; circuit protectors; starter motors, solenoids; switches; terminals and connectors; generators, including windings and housings; apparatus for recording, transmission or reproduction of sound or images; audio and visual recordings; magnetic data carriers, recording discs; fire-extinguishing apparatus; spectacles, spectacle frames, spectacle cases, sunglasses; electronic games; software; CD ROMs; audio, video and televisual apparatus and equipment including audio players, compact disc players, DVD players, video players, audio recorders, video recorders, television monitors, audio and video tapes, cartridges and cassettes, DVDs, compact discs, computer game software, computer hardware including computers, computer monitors, computer consoles, electronic game machines in this class, computer peripherals including mouses, controllers for game machines including joysticks, entertainment systems, navigation systems, communication systems, including such products for in-vehicle use Class 12: Vehicles, including land motor vehicles, vehicle transporters, trailers, parts and accessories for all of the foregoing including vehicle seat covers, structural parts and engines Class 35: Wholesale and retail services associated with the sale of motor vehicle parts and accessories, including the provision of parts, including replacement parts, and accessories for motor vehicles; advertising and promotion relating to motor vehicles, motor vehicle parts and motor vehicle accessories
2023558	(‘Device Mark’)	31 July 2019	Class 35: Retailing of goods (by any means)

1. The relevant claims/statements in Hosking 1 and 2 can be summarised as follows:

   ·     Tools.com acquired its business selling automotive parts, tools and accessories from its original owner in 2020, but the business dates back to 1972.  It was originally known as Bairnsdale Electrics but on or around 2010 the business transitioned to the AutoElec name, initially with an eBay store called Autoelecau in 2010 and from 2012, using the domain name <autoelec.com.au>.  

   ·     The Autoelec business operates Australia’s leading website for acquiring automotive electrical products such as wiring looms and batteries.  It has used the Opponent’s Trade Marks and the trade marks AUTOELEC and AUTOELEC.COM.AU (collectively the ‘AutoElec marks’) continuously since 2010 on a variety of automotive electrical components and other automotive tools.

   ·     Tools.com and its predecessor in title has promoted its retail services under the AutoElec marks through its website, on vouchers and invoices, in advertisements and social media, and on signage and clothing.  Its products are offered for sale via its website and through third party online stores such as Kogan, Ebay Catch and Amazon.   

   ·     The Declarant has been made aware, since 2019 of instances of consumer and supplier confusion regarding the source of the services offered by the Applicant under the Trade Mark, due to the similarity of that mark and the AutoElec marks.

   14.     The annexures to the Hosking 1 display various marketing material that use the AutoElec marks both on its own website and on third party websites and on social media.  I note that there is some use of the Device Mark on the autoelec.com.au website and some use of a device mark that is substantially identical to the Device Mark on the Tools.com Facebook page but the primary trade marks used by Tools.com are AUTOELEC and AUTOELEC.COM.AU.   There is no documentary evidence of any use of the Word Mark.  Hosking 1 also contains confidential annual sales figures of goods sold as a result of Tools.com’s retail services as well as advertising expenses.  Since 2013, those figures have been significant; as is Tools.com’s market share of the online automotive electrical business.

   The Applicant

2. The relevant claims/statements in the Wright declaration can be summarised as follows:

   ·     The Declarant is the owner of an auto electrical services company (Autospark Osborne Park) which has operated since 2003.  The Applicant provides goods and services to this company as well as other retail and wholesale clients.   

   ·     In 2018 the Declarant decided to expand the services offered by Autospark by launching an online store for selling auto electrical equipment.  He chose the combination wording of Auto and Elec as it was an accurate description of the goods being offered for sale and added Oz because this meant that the business and domain name that reflected the name were available for registration.

   ·     The Applicant commenced using the Trade Mark from its online store at in June 2019

   ·     The Wright declaration provides a table showing a list of trade marks that contain the terms Auto and Elec that have been registered with IP Australia and provides examples of the use of the terms in the Australian market more generally.

3. The exhibits to the Wright Declaration provide evidence of the use of the Trade Mark by the Applicant.

   Grounds of Opposition, Onus and Standard of Proof

4. As indicated above, in the SGP the Opponent nominated grounds of opposition under ss 42(b), 44 and 60.  To successfully oppose the application the Opponent needs to establish one of the nominated grounds.

5. The onus of proof in an opposition rests upon the Opponent.[3]  The relevant standard of proof is the ordinary civil standard based on the balance of probabilities.[4]  The date at which the rights of the parties are to be determined is the relevant date, which is also the priority date for the purposes of ss 44 and 60.[5]

   [3] Food Channel Network Pty Ltd v Television Food Network GP [2010] FCAFC 58, [32] (Keane CJ, Stone and Jagot JJ).

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

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

   Discussion

   Section 44

6. The relevant provisions of s 44 are reproduced below:

   Section 44 - Identical etc. trade marks

   (1)…

   (2)Subject to subsections (3) and (4), an application for the registration of a trade mark (applicant's trade mark) in respect of services (applicant's services) 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 services or closely related goods; or

   (ii)             a trade mark whose registration in respect of similar services or closely related goods 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 services is not earlier than the priority date for the registration of the other trade mark in respect of the similar services or closely related goods.

   Note 1: For deceptively similar see section 10.

   Note 2: For similar services see subsection 14(2).

   Note 3: For priority date see section 12.

   Note 4: The regulations may provide that an application must also be rejected if the trade mark is substantially identical with, or deceptively similar to, a protected international trade mark or a trade mark for which there is a request to extend international registration to Australia: see Part 17A. …

   (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.

7. To successfully oppose the application pursuant to s 44 the Opponent must establish the requirements of s 44(2), i.e. that at least one of the trade marks upon which it relies, being a trade mark registered by a person other than the Applicant:

   ·     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 services, and/or goods which are closely related to, the Applicant’s Services (‘the third requirement’).

8. In the event that each of these requirements is satisfied by the Opponent it may still be possible for the Registrar to accept the application (or allow it to proceed to registration) if the Registrar is satisfied, pursuant to ss 44(3) and 44(4), that there has been honest concurrent use of the Trade Mark, other circumstances 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. 

9. The Opponent has particularised the ground of opposition in the SGP by reference to the Opponent’s Trade Marks.  Each of the Opponent’s Trade Marks has a priority date that is earlier than the priority date of the Trade Mark.  Furthermore, each of the Opponent’s Trade Marks are registered for, broadly, retail services in class 35, which wholly incorporate the Applicant’s class 35 services.  The third requirement is satisfied for at least a subset of the Applicant’s Services.  It is therefore necessary to consider the second requirement.

   Substantially identical and/or deceptively similar

10. I will now consider whether the Trade Mark is substantially identical to the Opponent’s Trade Marks.  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.[6]

    [6] [1963] HCA 66, [12].

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

    AUTOLEC SALES      

1. On a side-by-side comparison there are clear differences which mean that a total impression of dissimilarity emerges from a comparison of each of the Opponent’s Trade Marks and the Applicant’s Trade Mark. Indeed the only common element is the shared use of the word AutoElec (with the Device Mark) and the shared use of Auto (with the Word Mark) though in each case in quite different font and format.  I move then to consider whether the Trade Mark and Opponent’s Trade Marks are deceptively similar.

2. 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].[7]

   [7] Ibid [13].

3. 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[8] at [49]; Australian Woollen Mills[9] 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[10] 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[11] 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].[12]

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

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

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

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

   [12] [2012] FCA 1022, [37]-[46].

4. In the recent High Court case of Self Care IP Holdings Pty Ltd v Allergan Australia Pty Ltd, the Court noted the following[13]:

   In considering the likelihood of confusion or deception, "the court is not looking to the totality of the conduct of the defendant in the same way as in a passing off suit"[14]. In addition to the degree of similarity between the marks, the assessment takes account of the effect of that similarity considered in relation to the alleged infringer's actual use of the mark[15], as well as the circumstances of the goods, the character of the likely customers, and the market covered by the monopoly attached to the registered trade mark[16]. Consideration of the context of those surrounding circumstances does not "open the door" for examination of the actual use of the registered mark, or, as will be explained, any consideration of the reputation associated with the mark[17]

   [13] Self Care IP Holdings Pty Ltd v Allergan Australia Pty Ltd [2023] HCA 8, [33] (Kiefel CJ, Gageler, Gordon, Edelman and Gleeson JJ).

   [14] New South Wales Dairy Corporation v Murray-Goulburn Co‑operative Co Ltd [1989] FCA 124; (1989) 86 ALR 549 at 589 (emphasis added), approved in Henschke (2000) 52 IPR 42 at 62 [44], Hashtag Burgers [2020] FCAFC 235; (2020) 385 ALR 514 at 532 [64], Combe International Ltd v Dr August Wolff GmbH & Co KG Arzneimittel [2021] FCAFC 8; (2021) 157 IPR 230 at 238 [27], PDP Capital Pty Ltd v Grasshopper Ventures Pty Ltd (2021) 285 FCR 598 at 622 [97] (see also 626 [111]) and Swancom (2022) 168 IPR 42 at 56 [73].

   [15] TM Act, s68

   [16] New South Wales Dairy [1989] FCA 124; (1989) 86 ALR 549 at 589.

   [17] Swancom (2022) 168 IPR 42 at 59 [89]. See also Henschke (2000) 52 IPR 42 at 62 [44].

5. As stated above, for the purposes of considering deceptive similarity, the reputation of the Opponent’s Trade Mark is not a relevant factor.[18]

   [18] See Swancom Pty Ltd v The Jazz Corner Hotel Pty Ltd [2022] FCAFC 157, [93] (Yates, Abraham and Rofe JJ) and, albeit in the s120(1) context Self Care IP Holdings Pty Ltd v Allergan Australia Pty Ltd [2023] HCA 8, [49] (Kiefel CJ, Gageler, Gordon, Edelman and Gleeson JJ).

6. In the present case the key similarity between all the marks is the element ‘Autoelec’ which is similar to the element ‘Autolec’ in the Word Mark and is incorporated in the Device Mark.  The issue here is that in the context of the services for which the Trade Mark and the Opponent’s Trade Marks are registered/sought to be registered and have in common (being the retail of various electrical components and products for automotive products) the word ‘autoelec’ (being an obvious abbreviation of ‘automotive electrical’) is both descriptive and, given the evidence in the Wright declaration, common to the trade.[19]  In such circumstances the presence of the common element ought to be given less weight in considering whether the respective marks are deceptively similar. 

   [19] See Deckers Outdoor Corporation v B&B McDougal [2006] ATMO 5, [34] (Hearing Officer Thompson).

7. Stephen J observed[20] in Hornsby Building Information Centre Pty Ltd v Sydney Building Information Centre Ltd that:

   There is a price to be paid for the advantages flowing from the possession of an eloquently descriptive trade name. Because it is descriptive it is equally applicable to any business of a like kind, its very descriptiveness ensures that it is not distinctive of any particular business and hence its application to other like businesses will not ordinarily mislead the public. In cases of passing off, where it is the wrongful appropriation of the reputation of another or that of his goods that is in question, a plaintiff which uses descriptive words in its trade name will find that quite small differences in a competitor’s trade name will render the latter immune from action (Office Cleaning Services Ltd. v. Westminster Window and General Cleaners Ltd. (1946) 63 RPC 39, at p 42, per Lord Simonds). As his Lordship said (1946) 63 RPC, at p 43, the possibility of blunders by members of the public will always be present when names consist of descriptive words - “So long as descriptive words are used by two traders as part of their respective trade names, it is possible that some members of the public will be confused whatever the differentiating words may be.” The risk of confusion must be accepted, to do otherwise is to give to one who appropriates to himself descriptive words an unfair monopoly in those words and might even deter others from pursuing the occupation which the words describe.[21]

   [20] Albeit in relation to trade practices.

   [21] 140 CLR 216, 229.

8. There are numerous differences between the respective marks, including the presence of the letters ‘OZ’, the words ‘Auto Electrical Supplies’ and the device elements in the Trade Mark as well as the absence of the ‘e’ in the Word Mark and the addition of the device elements and the ‘.com.au’ in the Device Mark.  While each of these differences is not by themselves particularly significant (noting that, for example, the words ‘Auto Electrical Supplies’ is descriptive of the Applicant’s services), taken collectively they render the respective marks not deceptively similar.  A finding of deceptive similarity in this case would in effect infer that the Opponent has a monopoly on the use of the term ‘AutoElec’ in respect of the retail of automotive electrical products and components and other similar services and closely related goods.  The Opponent does not have such a monopoly.  Any confusion that might occur stems from the use of the descriptive term in the respective marks and not from the deceptive similarity of the parties’ trade marks. 

9. Finally I note in paragraph 14 of the Opponent’s Submissions the Opponent submits that the Trade Mark was created with knowledge of the Opponent.  The Applicant has provided an explanation of its creation of the Trade Mark, and even if the Trade Mark was created with knowledge of the Opponent (which, for completeness I do not find) the only common element is the use of the term AutoElec which, due to its descriptive nature, the Opponent does not have a monopoly in.

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

    Section 60

11. Section 60 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.

12. 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.

13. Some of the relevant principles of s 60 are summarised in the recent case of Ragopika Pty Ltd v Padmasingh Isaac trading as Aachi Spices and Foods as follows:

    The first of these elements calls for a factual inquiry into the extent and nature of the reputation that had been acquired by the existing trade mark – here, the Aachi mark – in Australia. The second element calls for an assessment of the likelihood of deception or confusion arising from use of the new trade mark as a consequence of that reputation.

    The existing trade mark need not even be registered for s 60 to be engaged (Fry Consulting Pty Ltd v Sports Warehouse Inc [2012] FCA 81; 201 FCR 565 (Fry Consulting) at [121] (Dodds-Streeton J); Qantas Airways Ltd v Edwards [2016] FCA 729 (Qantas Airways) at [144] (Yates J)). The classes of goods and/or services in respect of which the existing trade mark has been used, and those in which the new trade mark is intended to be used, may be very relevant to the likelihood of confusion (see Qantas Airways at [143] and GAIN Capital UK Limited v Citigroup Inc (No 4) [2017] FCA 519 at [148] (Markovic J)), but the fact that the classes are not the same cannot be determinative. The reputation of the existing trade mark need not relate specifically to the goods or services that are the subject of the proposed application (Qantas Airways at [143]; Rodney Jane Racing Pty Ltd v Monster Energy Company [2019] FCA 923 (Rodney Jane Racing) at [87] (O’Bryan J)). The question is simply whether the reputation of the existing trade mark in Australia is such that the use of the new trade mark is “likely” to be deceptive or cause confusion.[22]

    [22] Ragopika Pty Ltd v Padmasingh Isaac trading as Aachi Spices and Foods [2023] FCA 487 [20-21], (Kennett J)

14. In McCormick & Co Inc v McCormick[23], Kenny J considered what is intended by the word ‘reputation’ as used in s 60.  Her Honour 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’.[24]  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 …[25]

    [23] [2000] FCA 1335.

    [24] Ibid, [81].

    [25] (1992) 33 FCR 302, 343.

15. 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.[26]

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

16. 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[27] 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.[28]

    [27] [2000] FCA 1587.

    [28] Ibid [91]. 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] (Moore, Tamberlin and Goldberg JJ).

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

    The opponent had, before the priority date (7 August 2020), acquired a reputation in Australia in the Opponent’s Marks [being the Opponent’s Trade Marks], including in relation to the wholesale and retail sale of vehicle parts and parts and accessories. The use of the similar trade mark by the applicant would be likely to deceive or cause confusion in the market place, including by falsely suggesting that the applicant’s services are those of the opponent or that the applicant or its services are related to the opponent or are sponsored, approved, affiliated or licensed by the opponent

18. The EIS provides evidence of usage of the trade marks AUTOELEC and  AUTOELEC.COM.AU, however the Opponent did not particularise the mark in its SGP, and notwithstanding having extensive opportunity to do so around the time it filed its evidence, has not sought to amend its particulars.  The case the Applicant has to meet is in respect of the Opponent’s Trade Marks.  The Opponent, in the Opponent’s Submissions, does not submit that the Word Mark has a reputation and I accept the Applicant’s submissions that there is no evidence of use of the Word Mark and as such the requirements under s 60(a) are not satisfied.

19. With respect to the Device Mark, I note that the Opponent does not submit that use of the trade mark AUTOELEC.COM.AU or AUTOELEC is use of either of the Device Mark with additions or alterations not substantially affecting its identity.  For completeness I note that I do not consider the Device Mark to be substantially identical to AUTOELEC.COM.AU or AUTOELEC as the Device Mark contains an additional device element that result in the marks not being substanitallyidentical. 

20. In reviewing the evidence of use of the Device Mark as opposed to AUTOELEC.COM.AU or AUTOELEC, I consider that there is some evidence of use of the mark on the autoelec.com.au website and on some third-party sites.  However, even if I was satisfied that the Device Mark had, before the relevant date, reputation in Australia for automotive electrical retail services, sufficient for the requirements under s 60(a) I would not be satisfied that by reason of the reputation of the Device Mark, the use of the Trade Mark would be likely to deceive or cause confusion.  Discussions and decisions on the subjects of deception and confusion are legion and a good number provide relevant comments in relation to a consideration of deception and confusion for the purposes of s 60. In a case concerning infringement and passing off, Australian Woollen Mills Limited v F S Walton and Company Limited, Dixon and McTiernan JJ said the following:

    An attempt should be made to estimate the effect or impression produced on the mind of potential customers by the mark or device for which the protection of an injunction is sought. … The usual manner in which ordinary people behave must be the test of what confusion or deception may be expected.  Potential buyers of goods are not to be credited with any high perception or habitual caution.  On the other hand, exceptional carelessness or stupidity may be disregarded.  The course of business and the way in which the particular class of goods are sold gives, it may be said, the setting, and the habits and observations of men considered in the mass affords the standard.[29]

    [29] (1937) 58 CLR 641, 658.

1. In Registrar of Trade Marks vWoolworths Ltd French J highlighted the following further matters concerning confusion:

   A trade mark is likely to cause confusion if the result of its use will be that a number of persons are caused to wonder whether it might not be the case that the two products or closely related products and services come from the same source. It is enough if the ordinary person entertains a reasonable doubt. It may be interpolated that this is another way of expressing the proposition that the trade mark is likely to cause confusion if there is a real likelihood that some people will wonder or be left in doubt about whether the two sets of products or the products and services in question come from the same source.

   In considering whether there is a likelihood of deception or confusion all surrounding circumstances have to be taken into consideration. These include the circumstances in which the marks will be used, the circumstances in which the goods or services will be bought and sold and the character of the probable acquirers of the goods and services.[30]

   [30] [1999] FCA 1020, [25]. These considerations by French J are based on principles set out by Kitto J in Southern Cross Refrigerating Co v Toowoomba Foundry Pty Ltd (1954) 91 CLR 592, 594-5.

2. In Pottle Productions Inc v Rute Ithalat Ve Ihracat Anonim Sirketi the delegate observed that:

   The assessment of the likelihood of deception or confusion under section 60 is informed by the strength of the reputation of the Opponent’s trade mark(s), the inherent distinctiveness thereof, the degree of similarity between the trade marks under consideration and the nexus or connection between the goods and/or services of the parties. Each of these is a variable and it is possible that a trade mark’s reputation might be sufficiently strong and the degree of similarity to an opposed trade mark be so great (particularly where the trade marks are inherently distinctive) that confusion or deception will be a likelihood where very little, if any, nexus or connection exists between the goods and/or services under consideration.[31]

   [31] [2012] ATMO 124, [40] (Hearing Officer Thompson).

3. While it is not necessary to show that the marks are deceptively similar for the purposes of an opposition under s 60, as stated in Qantas Airways Limited v Edwards, ‘the degree of similarity between the allegedly conflicting marks will be a relevant consideration to be taken into account when considering the likelihood of confusion resulting from use of the opposed mark.’[32]

   [32] [2016] FCA 729, [142] (Yates J).

4. In the present case, to the extent that the Trade Mark and Device Mark are similar, it is largely due to the presence of the common element ‘AutoElec’ which is descriptive in respect of the Applicant’s Services and the services for which the Device Mark may have a limited reputation.  I refer to the statements made by Stephen J in Hornsby Building Information Centre Pty Limited v Sydney Building Information Centre Limited[33] extracted at paragraph 31 above regarding the risk of confusion that must be accepted as a price to be paid for the advantages of a descriptive trade name.  In the present case I am not satisfied that any confusion that could arise between the Trade Mark and the Device Mark would arise because of any reputation in the Device Mark, as opposed to the shared use of the descriptive term ‘AutoElec’ in respect of automotive electrical retail services.

   [33] (1978) 140 CLR 216, 229.

5. I find that the Opponent has failed to establish the ground of opposition pursuant to s 60.

   Section 42

6. Section 42 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.

7. 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.[34]  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’.[35]

   [34] Advantage Rent-a-Car Inc v Advantage Car Rental Pty Ltd [2001] FCA 683 (Madgwick J).

   [35] Time Warner Entertainment Co LP v Stepsam Investments Pty Ltd [2004] 59 IPR 343, 353 (Wilcox J).

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

   The opponent had, before the priority date (7 August 2020), acquired a reputation in Australia in the Opponent’s Marks [being the Opponent’s Trade Marks], including in relation to the wholesale and retail sale of vehicle parts and parts and accessories. The use of the similar trade mark by the applicant would be likely to amount to conduct that is misleading and deceptive or is likely to mislead or deceive in breach of sections 18 and 29 of the Australian Consumer Law (Schedule 2 of the Competition and Consumer Act 2010), including by falsely suggesting that the applicant’s services are those of the opponent or that the applicant or its services are related to the opponent or are sponsored, approved, affiliated or licensed by the opponent.

9. As previously stated, the Opponent has failed to establish a ground of opposition under s 60. 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,[36] and consequently 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.

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

10. Paraphrasing the statement of the Registrar’s Delegate in A G Professional Hair Care Products Ltd v Geagroup Invest SRL[37], 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. 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)’.[38] Sections 52 and 53 of the TPA were, respectively, the equivalent provisions to ss 18 and 29 of the ACL.

    [37] [2014] ATMO 65, [50] (Hearing Officer Wilson).

    [38] [2003] FCA 104, [107] (Beaumont J).

11. 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).

    Decision and Costs

12. The Opponent has failed to establish any of the grounds of opposition it nominated in the SGP.  Trade mark application no. 2109949 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.

13. 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 s 221 in the relevant amounts under Schedule 8 of the Regulations.

    Nicholas Smith

    Hearing Officer

    Delegate of the Registrar of Trade Marks

    7 August 2023