PT Industri Karet Deli v Qingdao Sentury Tire Co Ltd

[2016] ATMO 27

TRADE MARKS ACT 1995

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

Re:Opposition by PT Industri Karet Deli to registration of trade mark application 1598198 (12) - DELINTE - in the name of Qingdao Sentury Tire Co., Ltd.

Delegate:

Katrina Brown

Representation:

Opponent: Catherine Sedgley & Khajaque Kortian of Spruson & Ferguson

Applicant: Not represented

Decision:

2016 ATMO 27

Section 52 opposition – ss 44, 60, 42 and 62A pursued – no grounds established – Trade Mark to proceed to registration.

Background

1. This decision is in respect of an opposition under s 52 of the Trade Marks Act 1995 (‘the Act’) by PT Industri Karet Deli (‘the Opponent’) to the registration of the following trade mark:

Trade Mark No:	1598198
Trade Mark:	(‘the Trade Mark’)
Applicant:	Qingdao Sentury Tire Co., Ltd (‘the Applicant’)
Filing Date:	20 December 2013
Specification:	Class 12: Vehicle wheel tires (tyres); automobile tires (tyres); inner tubes for pneumatic tires (tyres); tires for bicycles, cycles; casings for pneumatic tires (tyres); treads for retreading tires (tyres); pneumatic tires (tyres); tyres for aircraft; repair outfits for inner tubes; tires

1. The trade mark application was examined as required by s 31 of the Act and was accepted for possible registration. The acceptance was advertised in the Australian Official Journal of Trade Marks on 15 May 2014.

2. The Opponent filed a Notice of Intention to Oppose on 15 July 2014 followed by a Statement of Grounds and Particulars (‘SGP’) on 7 August 2014. The SGP particularised grounds of opposition under ss 44, 60, 42 and 62A of the Act.

3. The Applicant filed a Notice of Intention to Defend on 12 September 2014.

4. The Opponent’s evidence in support consists of the declaration made by Riang Matio on 18 December 2014 with Exhibits RM-1 to RM-6 (‘the Matio Declaration’).

5. The Applicant did not file evidence in answer.

6. Thereafter the Opponent requested a hearing by way of written submissions. The Opponent filed written submissions. The Applicant did not file any written submissions. 

7. The matter has been allocated to me, a delegate of the Registrar of Trade Marks, to decide.

Onus and relevant date

1. The Opponent bears the onus of establishing at least one of the grounds of opposition. The relevant standard of proof in these proceedings is the ordinary civil standard of the balance of probabilities.[1]

   [1] Pfizer Products Inc v Karam [2006] FCA 1663 [6] to [26]; Telstra Corporation Limited v Phone Directories Company Pty Ltd [2015] FCAFC 156 [132].

2. I also confirm that the relevant date at which the rights of the parties are to be determined is 20 December 2013 (‘the relevant date’), being the filing date of the application.[2]

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

Section 44

1. 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)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 that the priority date for the registration of the other trade mark in respect of the similar goods or closely related services.

…

1. The Opponent must establish that the Trade Mark is substantially identical with or deceptively similar to an earlier filed trade mark, in the name of a person other than the Applicant, in respect of similar goods or closely related services.

2. In support of this ground the Opponent relies on the following trade mark registrations (‘the Opponent’s Trade Marks’), all of which are held in the Opponent’s name and have a priority date earlier than the Trade Mark.

TM No.	Trade Mark	Specification
455565	DELI	Class 12: All goods in this class including vehicles; apparatus for locomotion by land, air or water; parts and accessories for vehicles and apparatuses for locomotion by land, air or water included in this class; tyres and tubes included in this class; tyres and tubes for motorcars, motorcycles, bicycles, tricycles and other wheeled vehicles
1373092	Class 12: Tyres and tubes for bicycles, wheelchairs, mopeds, motorcycles, scooters, go-karts, industrial and agricultural implements, wheelbarrows, trailers, utilities and passenger cars
1549002	Class 12: Tyres and tubes for all the following products: bicycles, mopeds, motorcycles, scooters, four-wheeled fun karts, racing karts, golf carts, lawn mowers (vehicles), garden mowers (vehicles), ATVs (all terrain vehicles), wheelbarrows, wheelchairs, industrial and agricultural implements namely agricultural tractors, trailers, utility vehicles, passenger cars and buses; radial tyres and tubes for all the following products: motorcycles, agricultural tractors, ATVs (all terrain vehicles), trailers, passenger cars, motor vehicles; radial tyres for commercial motor vehicles: station wagons, karts, pick-ups, vans, fork lift trucks, hand trucks, light trucks, ultra light trucks, trucks, trucks and buses
1572267	Class 12: Tyres and tubes for all the following products: bicycles, mopeds, motorcycles, scooters, four-wheeled fun karts, racing karts, golf carts, hand trucks, lawn mowers (vehicles), garden mowers (vehicles), ATVs (all terrain vehicles), utility vehicles, passenger cars, light trucks, ultra light trucks, trucks and buses, industrial and agricultural implements namely agricultural tractors, fork lift trucks, trailers; tyres and tubes for all the following products: wheelchairs, wheelbarrows; radial tyres and tubes for all the following products: motorcycles, agricultural tractors, ATVs (all terrain vehicles), trailers, passenger cars, motor vehicles; radial tyres for all the following commercial motor vehicles: station wagons, karts, pick-ups, vans, fork lift trucks, light trucks, ultra light trucks, trucks and buses

1. The Opponent’s Trade Marks are registered in respect of a range of goods in class 12 including tyres and tubes for vehicles. In the terms set out in s 14 of the Act and the relevant authorities,[3] I consider these goods to be the same and or similar to the goods claimed by the Applicant. Therefore, the remaining matter is whether the Trade Mark is substantially identical or deceptively similar to any of the Opponent’s Trade Marks.

   [3] Jellineck’s Application (1946) 63 RPC 59; Application by Beck, Koller & Company (1947) 66 RPC 76.

2. It is immediately apparent that when comparing the Trade Mark side-by-side with the Opponent’s Trade Marks, as is the accepted test for substantial identity,[4] the Trade Mark is not substantially identical to any of the Opponent’s Trade Marks. Therefore, the question to be answered is whether the Trade Mark is deceptively similar to any of the Opponent’s Trade Marks.

   [4] Shell Co of Australia Ltd v Esso Standard Oil (Aust) Ltd (1963) 109 CLR 407, 414.

3. Section 10 of the Act defines a ‘deceptively similar’ trade mark as:

   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.

4. The assessment of deceptive similarity relies upon an estimation of the trade marks’ impressions, specifically ‘between, on the one hand, the impression based on the recollection of the [Opponent’s Trade Marks] that persons of ordinary intelligence and memory would have; and, on the other hand, the impression that such persons would get from the [Trade Mark].[5] If those impressions are likely to cause the public to wonder whether the goods come from the same source, then the trade marks are considered to be deceptively similar.[6]

   [5] Ibid, 415.

   [6] Registrar of Trade Marks v Woolworths [1999] FCA 1020 [50].

5. The Opponent points to a number of factors which it submits support a finding that the parties’ trade marks are deceptively similar including:

• The dominant and memorable element of each of the trade marks is the prefix DELI.

• The trade marks convey a similar idea and are visually and aurally similar due to the shared prefix.

• This shared prefix is not commonly used or registered in relation to goods classified in class 12.

• DELIUM (Registrations 1549002 and 1572267) and the Trade Mark are both words with no ordinary English meaning.

1. Throughout the written submissions from the Opponent’s legal representatives, the Opponent’s Trade Marks are referred to as the ‘DELI family of marks’.

2. Whilst the Opponent’s Trade Marks all begin with the letters DELI, those letters cannot be described as separately identifiable or a distinguishing element in the DELIUM registrations. These registrations are likely to be viewed in their entirety and not seen as a brand extension of the DELI trade marks. At most it could be argued that consumers may think that DELI and DELI TIRE (with stylised D) emanate from the same trade source.

3. For the reasons set out below, I am not satisfied that the Trade Mark is deceptively similar to any of the Opponent’s Trade Marks.

Registrations 455565 DELI and 1373092 DELI TIRE (with stylised D)

1. There are notable differences and points of distinction between the Trade Mark and the Opponent’s Trade Marks. Indeed, the only element of commonality is the presence of the letters DELI at the beginning of each trade mark.

2. DELI is undoubtedly an essential and memorable element of the Opponent’s Registrations 455565 and 1373092. DELI is the only element of Registration 455565. Although Registration 1373092 contains additional elements, namely the word TIRE and stylisation of the letter D, DELI remains a memorable feature of the trade mark. The word TIRE is entirely descriptive of the goods to which the registration relates and as such should be discounted to a certain extent in the comparison between trade marks.  Additionally, the stylised letter D does not prevent the word DELI from being an essential and memorable element of that trade mark.

3. However, the same cannot be said for the Trade Mark. DELI is subsumed into the totality of the word DELINTE. This is particularly so given that the suffix NTE is not a word in and of itself. DELI alone is unlikely to fix itself in the mind of consumers and become a tool for remembering the Trade Mark. Rather, Australian consumers are likely to recall the Trade Mark as an invented word in its entirety.

4. There are sufficient structural, aural and conceptual differences between the trade marks under consideration to extinguish any real, tangible likelihood that the Trade Mark would be viewed as a brand extension of the Opponent’s DELI and DELI TIRE (with stylised D) trade marks.

Registrations 1549002 DELIUM and 1572267 DELIUM (with stylised D)

1. The DELIUM registrations and the Trade Mark each begin with the letters DELI. However, those letters are not separately identifiable in either DELIUM or DELINTE: there is not a syllable break after DELI- in either trade mark; nor in the context in which they appear would they be visually or aurally separated from the remaining letters. The impression left upon a person of ordinary intelligence would be that of the words in their entirety, namely DELIUM and DELINTE.

2. I mention that DELIUM is the name of an Ancient Greek city and also means ‘the faithful’ in Latin.[7] However, I agree with the Opponent that DELIUM is likely to be viewed as an invented word as it is not a term in common usage.

   [7] Google Translate

3. Whilst the likelihood of confusion is greater when comparing invented words,[8] I consider that the very obvious visual and aural differences between the trade marks are unlikely to be ignored. As such, there is no real, tangible danger of deception or confusion between DELIUM and DELINTE.

   [8] William Bailey (Birmingham) Ltd’s Application (1935) 52 RPC 136.

4. Considering all of the surrounding circumstances, I am not persuaded that DELINTE is deceptively similar to any of the Opponent’s Trade Marks.

5. Accordingly, the s 44 ground of opposition has not been established.

Section 60

1. Section 60 of the Act 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.

1. To establish the ground of opposition under s 60, the Opponent must demonstrate the existence of a reputation in another trade mark in Australia as at 20 December 2013. The Opponent must then establish that because of the aforesaid reputation use of the Trade Mark would be likely to deceive or cause confusion.

2. In McCormick & Co Inc v McCormick the meaning of the word ‘reputation’ for the purposes of s 60 was provided in light of the dictionary definition:

   reputation ... 1. the estimation in which a person or thing is held, esp. by the community or the public generally; repute ... 2. favourable repute; good name ... 3. A favourable and publicly recognised name or standing for merit, achievement, etc. ... 4. The estimation or name of being, having done, etc, something specified.[9]

   [9] [2000] FCA 1335 [81] (‘McCormick’).

3. The reputation in the other trade mark must be amongst a significant or substantial number of people.[10] However, what is considered significant or substantial depends upon the nature of the goods and/or services in question.[11]

   [10] See Renaud Cointreau & Cie v Cordon Bleu International Ltee [2001] FCA 1170; ConAgra Inc. v McCain Foods (Aust) Pty Ltd [1992] FCA 159.

   [11] Le Cordon Bleu BV v Cordon Bleu International Ltee [2000] FCA 1587 [91].

4. The reputation cannot be assumed, but rather must be established as a matter of fact by the Opponent.[12] In McCormick Kenny J stated:

   In practice, it is commonplace to infer reputation from a high volume of sales, together with substantial expenditures and other promotions, without any direct evidence of consumer appreciation of the mark, as opposed to the product.[13]

   [12] Conagra Inc. v McCain Foods (Australia) Pty Ltd [1992] FCA 159 [77].

   [13] [2000] FCA 1335 [86].

5. The Opponent is relying on the trade marks set out at paragraph 13 of this decision. I do not regard these trade marks as a family of trade marks for the reasons discussed above in relation to s 44.

6. The Matio Declaration states that the Opponent’s goods have been sold under or by reference to the Opponent’s Trade Marks in Australia since April 2000.[14] Furthermore, the declaration states that ‘the majority of’ the Opponent’s Trade Marks have been used continuously and throughout Australia since April 2000.[15] As such, the Opponent claims approximately 13 years of use before the relevant date. However by virtue of the description ‘the majority of the DELI family of marks’ the Opponent does not identify which of its trade marks were used. Accordingly, it is not clear which trade mark has been used and therefore in which trade mark the purported reputation resides.

   [14] Matio Declaration [13].

   [15] Matio Declaration [14] – [15].

7. Annual sales figures of goods sold in Australia bearing the Opponent’s Trade Marks have been provided for the years 2004 to 2014. Whilst not insignificant, the figures are for the Opponent’s Trade Marks collectively.[16]

   [16] Matio Declaration Confidential Exhibit RM-4.

8. The Opponent has provided photographs of packaging, leaflets and catalogues showing use of DELI, DELI TIRE and DELIUM.[17] The Radial Tire Catalog 2012 shows use of DELIUM (with stylised D) prior to the relevant date. The DELI TIRE Road Symbiosis 2012/2013 shows use of DELI TIRE (with stylised D) prior to the relevant date. However the remainder of the examples provided in Exhibit RM-1 are undated and the Matio Declaration does not provide dates in relation to them. Therefore I am unable to determine whether they are before the priority date.

   [17] Matio Declaration Exhibit RM-1.

9. Similarly, the printouts from the Opponent’s website ‘ are also undated.[18] The Matio Declaration states that this website provides information and advertises goods bearing the Opponent’s Trade Marks directly to Australia.[19] However, the Opponent has not provided any material to substantiate that use on this website was directed or targeted at Australian consumers[20] or that Australian consumers have accessed this website.

   [18] Matio Declaration Exhibit RM-2.

   [19] Matio Declaration 4 [20].

   [20] See Ward Group Pty Ltd v Brodie & Stone Plc [2005] FCA 471.

10. Copies of invoices for the sale of the Opponent’s goods to Australian distributors have been provided for the period of 2007 – 2014.[21] The invoices describe goods with reference to at least one of the Opponent’s Trade Marks.

    [21] Matio Declaration Confidential Exhibit RM-2.

11. The Matio Declaration also refers to use of the Opponent’s Trade Marks in overseas jurisdictions. The Opponent’s Trade Marks are registered and/or the subject of pending trade mark applications in various jurisdictions.[22] Annual sales figures for goods bearing the Opponent’s Trade Marks have been provided for those jurisdictions from 2004 – 2014.[23] These figures are also for the Opponent’s Trade Marks collectively. Whilst ‘spillover’ reputation resulting from overseas use is a factor that may inform s 60, the Opponent has not established how its reputation in a trade mark overseas in respect of tyres may have transferred to the Australian consciousness.

    [22] Matio Declaration Exhibit RM-5.

    [23] Matio Declaration Confidential Exhibit RM-6.

12. I find that the material provided is not sufficient to demonstrate that as at the relevant date the Opponent’s Trade Marks, collectively or separately, were recognised by a significant or substantial portion of the Australian public.

13. Even in the event that the Opponent did establish the requisite reputation in either its DELI or DELIUM trade marks on the evidence before me, for the reasons discussed above in relation to s 44 I would not be convinced that use of the Trade Mark would be likely to deceive or cause confusion.. The respective trade marks are simply too different.

14. Accordingly, the s 60 ground of opposition has not been established.

Section 42(b)

1. Section 42 of the Act relevantly provides:

Trade mark scandalous or its use contrary to law

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

…

(b) its use would be contrary to law.

1. The Opponent relies on ss 18 and 29(1)(b) and (g) of Schedule 2 to the Australian Consumer Law (‘the ACL’) of the Competition and Consumer Act 2010. These sections correspond to ss 52 and 53 of the now repealed Trade Practices Act 1974 (‘the TPA’). The Opponent also states that use of the Trade Mark would amount to passing off.

2. Schedule 2 of the ACL relevantly provides:

Section 18: Misleading or deceptive conduct

(1)   A person must not, in trade or commerce, engage in conduct that is   misleading or deceptive or is likely to mislead or deceive.

Section 29: False or misleading representations about goods or services

(1)    A person must not, in trade or commerce, in connection with the supply or possible supply of goods or services or in connection with the promotion by any means of the supply or use of goods or services:

…

(b)make a false or misleading representation that services are of a particular standard, quality, value or grade;

…

(g) make a false or misleading representation that goods or services have sponsorship approval, performance characteristics, accessories, uses or benefits.      

1. Sections 18 and 29 of the ACL require conduct or representations that have been or are likely to mislead or deceive, and therefore imports a higher threshold than s 60 of the Act.[24] Section 60 of the Act requires only that use of the Trade Mark be likely to confuse or deceive. Thus it usually follows that if an Opponent cannot establish its opposition under s 60 then neither will it be able to establish that use of a trade mark would be contrary to the ACL.

   [24] Parkdale Custom Built Furniture Pty Ltd v Puxu Pty Ltd (1982) 1A IPR 684, 688.

2. Similarly, where use of a trade mark does not contravene s 18 of the ACL, neither will it amount to the tort of passing off. The relationship between the tort of passing off and s 52 of the TPA (and by extension s 18 of the ACL) was addressed in Re Equity Access Pty Ltd v Westpac Banking Corporation:

   [t]he scope for the operation of s 52 will thus be broader than that involved in the tort of passing off so that in a case such as the present where the claim is for the protection of the reputation in a name against the use of that name by another, failure to succeed under s 52 or s 53 will invariably mean that proceedings for passing off would likewise fail.[25]

   [25] [1989] FCA 506 [40].

3. As I have found that s 18 of the ACL has not been contravened, it follows that the use of the Trade Mark does not amount to the tort of passing off.

4. For the reasons provided under s 60 I am not satisfied that use would amount to a false or misleading representation (such as a sponsorship, approval or affiliation with the Opponent). The Opponent must establish that the use of the Trade Mark ‘would’, not ‘could’, be contrary to law.[26] It has not done so.

   [26] Advantage Rent-A-Car Inc v Advantage Car Rental Pty Ltd [2001] FCA 683 [28].

5. Accordingly the s 42(b) ground of opposition has not been established.

Section 62A

1. Section 62A of the Act 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.

1. Bad faith was judicially considered in Fry Consulting Pty Ltd v Sports Warehouse (No 2) wherein Dodds-Streeton J stated:

   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 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.[27]

   [27] [2012] FCA 81 [164].

2. This approach was endorsed by Bennett J in DC Comics v Cheqout Pty Ltd.[28]

   [28] [2013] FCA 478.

3. In their written submissions, the Opponent’s legal representatives assert that the Applicant applied for the Trade Mark with full knowledge of the Opponent’s Trade Marks and that the Applicant would have been aware of the international fame and reputation of those trade marks.[29]

   [29] Opponent’s Written Submissions [12].

4. The Opponent has not provided any evidence to support these assertions. Furthermore, if the Applicant was aware of the Opponent’s Trade Marks at the time of filing the application, this (without more) does not signify the application was made in bad faith.

5. I am not persuaded that the Opponent has discharged the onus of establishing that the Applicant, as at the priority date, applied for the Trade Mark in bad faith, in the sense that in all the circumstances, persons adopting proper standards would regard the decision to apply to register the Trade Mark as being in bad faith, or that reasonable and experienced persons in the field would view such conduct as falling short of acceptable commercial behaviour.

6. Accordingly I find that the s 62A ground of opposition has not been established.

Decision

1. Section 55(1) of the Act provides:

55Decision

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.

   Note: For limitations see section 6.

2. The Opponent has not established any ground of opposition.

3. Accordingly I direct that trade mark application 1598198 may proceed to registration one month from the date of this decision.

4. If the Registrar is served with a notice of appeal before that time, I direct that registration shall not occur until the appeal has been withdrawn or discontinued. Otherwise, the disposition of the application should be in accordance with the Court’s order or direction.

Costs

1. The Opponent sought costs. I see no reason to depart from the general rule that costs follow the event. As the Opponent has failed to establish a ground of opposition, I award costs against the Opponent in accordance with the applicable amounts set out in Schedule 8 of the Trade Marks Regulations 1995.

Katrina Brown

Hearing Officer

Trade Mark Hearings

4 May 2016