Re: Opposition by Bayerische Motoren Werke Aktiengesellschaft to registration of trade mark application number 1924083 (class 9) in the name of Electracom Pty Ltd

[2021] ATMO 86

TRADEMARKSACT1995

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

Re:      Opposition by Bayerische Motoren Werke Aktiengesellschaft to registration of trade mark application number 1924083 (class 9) -               - in the name of Electracom Pty Ltd.

DELEGATE:

M. Cooper

REPRESENTATION:

Opponent: Benjamin Fitzpatrick of counsel instructed by Adam Sears of Davies

Collison Cave
Applicant: Fraser Old of Fraser Old & Sohn

DECISION:

2021 ATMO 86

Trade Marks Act 1995 (Cth) – opposition under section 52 – ss 44 and 60

  grounds pressed – no ground established – trade mark to proceed to registration.

Background

1. This matter concerns an opposition by Bayerische Motoren Werke Aktiengesellschaft (‘Opponent’), under s 52 of the Trade Marks Act 1995 (‘the Act’), to registration of the trade mark detailed below in the name of Electracom Pty Ltd (‘Applicant’):

Application Number

1924083

Trade Mark

(‘Trade Mark’)

Filing date

3 May 2018

Goods

Class 9: General Purpose Outlets for power and/or data and/or telephony and/or audiovisual applications including power rails, floor boxes, electrical floor outlets, and retractable supply posts; Cable ducts including skirting ducts and vertical ducts; Electric cable organisers including umbilicals, cable baskets, desk grommets, cable clips, cable dumps and cable covers; Wiring harnesses including re-configurable and/or modular harnesses; Charging stations including wireless re-chargers; Snap engageable contactors and interconnectors; Electrical control equipment including energy controllers; Electric cable installation tools; Trunking including flush floor trunking and screed trunking; Support arms for monitors and screens; Support

brackets for television screens and monitors; Support holders for computer equipment including CPUs. (‘Goods’)

1. The Trade Mark was examined and advertised on 18 October 2018 in the Australian Official Journal of Trade Marks.

2. On 13 December 2018, the Opponent filed a Notice of Intention to Oppose registration of the Trade Mark. On 14 January 2019, a Statement of Grounds and Particulars (‘SGP’) was filed which cited opposition grounds under sections 42(b), 44, 58 and 60 of the Act. The Applicant filed a Notice of Intention to Defend on 30 January 2019. The parties then filed their evidence as detailed further below.

3. On 22 January 2021 the Opponent requested a hearing. I heard the matter by videoconference on 18 June 2021 as a delegate of the Registrar of Trade Marks (‘the Registrar’). Benjamin Fitzpatrick of counsel, instructed by Adam Sears of Davies Collison Cave, appeared for the Opponent. The Applicant was represented by Fraser Old of Fraser Old & Sohn.

   Evidence

1. The Opponent’s Evidence in Support was filed on 28 January 2020. It comprised the declaration of Timothy Jacob Hall, Head of Legal Risk and Strategy at BMW Australia Limited dated 24 January 2020 together with Exhibits TJH-1 to TJH-50, including Confidential Exhibits TJH–46, TJH-11A and TJH-11B (‘Hall 1’).

2. The Applicant’s Evidence in Answer was filed on 23 April 2020. It comprised the declaration of Jeremy Gray, Managing Director of Electracom Pty Ltd, dated 21 April 2020 with Exhibits JG1 to JG10 (‘Gray’).

3. The Opponent’s Evidence in Reply, filed on 24 November 2020, comprised of a further declaration by Timothy Jacob Hall dated 24 November 2020 with exhibits TJH-1 to TJH-7 (‘Hall 2’).

4. In accordance with directions, the Opponent and Applicant filed written submissions. These and the evidence are discussed further below.

Grounds and Onus

1. The Opponent bears the onus of establishing one or more grounds of opposition on the balance of probabilities.1

2. In its written and oral submissions the Opponent pressed only its ss 44 and 60 grounds of opposition. The date on which the grounds are to be assessed is the filing date of the opposed application, 3 May 2018, also the ‘priority date’ for ss 44 and 60 purposes (‘the relevant date’).

Consideration and reasons

Section 44

1. Section 44 of the Act relevantly provides:

   44. 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 than the priority date for the registration of the other trade mark in respect of the similar goods or closely related services.

Note 1:     For deceptively similar see section 10. Note 2:                For similar goods see subsection 14(1). 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.

1. In the circumstances of this application, in order to establish the s 44 ground of opposition under s 44(1), the Opponent must demonstrate, subject to subsections (3) and (4), that the Trade Mark is substantially identical with or deceptively similar to another registered (or

¹ Telstra Corporation Limited v Phone Directories Company Pty Ltd [2015] FCAFC 156 [133] (Besanko, Jagot and Edelman JJ) affirming the approach of Gyles J in Pfizer Products Inc. v Karam [2006] FCA 1663; (2006) 70 IPR 599 [6]-[26].

sought to be registered) mark; is in respect of similar goods or closely related services (s 44(1)(a)); and has a priority date not earlier than that of the other mark (s 44(1)(b)).

1. Section 14(1) of the Act provides that goods are “similar” to other goods if they are the same, or of the same description, as the other goods.

1. The Opponent particularised this ground in its SGP as follows:

The Trade Mark is substantially identical with or deceptively similar to the following Trade Marks, which have an earlier date of priority than the Application and which are registered or applied for with respect to similar goods/services and/or closely related goods/services covered by the Application and, therefore, registration of the Application would be contrary to Section 44 of the Act and/or Regulation 4.15A of the Regulations. The Trade Mark has not been used by the Applicant to satisfy the requirements of Section 44(3) and/or 44(4) and/or 4.15A(3) and/or 4.15A(5)

PARTICULARS

Mark Number 410621

Owner Bayerische Motoren Werke Aktiengesellschaft Filing Date 22 JUN 1984 (Priority Date: 30 DEC 1983)

Classes 2, 4, 7, 9, 12, 16, 17, 18, 20, 21, 24, 25, 26, 28, 34, 36, 37, 39 Status Registered

Mark Number 1464578

Owner Bayerische Motoren Werke Aktiengesellschaft

Filing Date 12 DEC 2011 (Priority Date: 13 JUL 2011) - 3 - 14 January 2019 Classes 3,

8, 9, 11, 12, 14, 27, 28, 29, 30, 32 Status Registered

Mark Number 1685240 (IR No.1241163)

Owner Bayerische Motoren Werke Aktiengesellschaft Filing Date 19 JUL 2014 (Priority Date: 23 JAN 2014) Classes 9, 12, 14, 18, 25, 28, 37 Status Registered

Endorsements:

Colour Claimed: BLUE, WHITE and BLACK

(‘Opponent’s marks’)

1. The Opponent, a well-known luxury motor vehicle manufacturer, relies in written submissions and at the hearing, only on its trade mark 1685240 (‘the Opponent’s Roundel mark’) in this regard. It contends that, given the Goods’ broad specification, ‘there is no doubt that there is a direct overlap between the designated goods of the Opposed Application and the Opponent’s prior mark.’ The Applicant submits that electrics for motor vehicles (mainly 12v DC equipment) are different to the Goods with which power electricians deal (mainly being 240v AC equipment) and there is no relevant similarity between them.

1. The Opponent’s Roundel mark was registered in 2014 (prior to the Trade Mark) and covers goods including ‘apparatus and instruments for conducting, switching, transforming, accumulating, regulating or controlling electricity’ in class 9. I note the broad coverage of the Goods, among other things, for ‘Electrical control equipment’, which do not reflect any limitation or distinction in their application. Overall, I am satisfied that the Goods, in part at least, are encompassed and are relevantly similar to those covered by the Opponent’s Roundel mark in class 9.

1. It remains to be determined whether the Trade Mark is substantially identical with, or deceptively similar to, the Opponent’s Roundel mark. The Opponent did not address substantial identity, submitting only that the marks were deceptively similar. Overall, on a side-by-side comparison, having regard to the essential features of the Trade Mark, I am not satisfied that a total impression of resemblance emerges between it and the Opponent’s Roundel mark such that they might be regarded as being substantially identical.2

² Shell Co. of Australia v Esso Standard Oil (Aust.) Ltd.) [1963] HCA 66 [12]; (1963) 109 CLR 407, 415 (Windeyer J).

Deceptive similarity

1. A trade mark will 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’ (s 10 of Act).

1. In assessing trade marks for deceptive similarity, the Full Federal Court in Urban Alley Brewery Pty Ltd v La Sirène Pty Ltd succinctly summarised the test:

   The test of deceptive similarity …. is a comparison between one mark and the impression of another mark carried away and hypothetically recalled, paying due regard to the fact that recollection is not always perfect.3

1. This comparison is to be made by reference to the standards of ordinary people ‘who should not be credited with high perception or habitual caution’ and in the context of the business and the way in which the particular class/es of goods are sold or services provided.4 A possibility of confusion is not sufficient; there must be a real tangible danger of confusion.5 A likelihood of confusion will exist if there ‘is a real likelihood that some people will wonder or be left in doubt about whether the two sets of products ... come from the same source.’6 It is not necessary that the confusion persist up to, or contribute to inducing, a sale.7 The use to be considered is notional use.8

2. Notwithstanding the Applicant’s submissions as to its past and current use of the Trade Mark, it is its notional use on which I must focus. Consequently, in considering its notional fair use for the Goods, given my findings above concerning the similarity of the goods provided under the Trade Mark and under the Opponent’s Roundel mark, I accept that the Applicant could potentially sell the same types of electrical equipment under the Trade Mark to the same customers through the same trade channels as the Opponent.

³ [2020] FCAFC 186 [99] (Middleton, Yates and Lee JJ).

⁴ Australian Woollen Mills v F S Walton and Co Ltd (1937) 58 CLR 641, 658 (Dixon and McTiernan JJ).

⁵ Ibid; Registrar of Trade Marks v Woolworths Ltd (‘Woolworths’) (1999) 93 FCR 365; [1999] FCA 1020 [50].

⁶ Ibid (‘Woolworths’) (French J).
⁷ TiVo Inc v Vivo International Corporation Pty Ltd [2012] FCA 252 [105] (Dodds-Streeton J).

⁸ Berlei Hestia Industries Ltd v Bali Co Inc [1973] HCA 43; (1979) 129 CLR 353, 362 (Mason J); Campomar

Sociedad Limitada v Nike International Ltd (2000) [2000] HCA 12; (2000) 202 CLR 45,72.

1. In estimating the effect or impression produced on the mind of these potential customers, I note the comment in Clark v Sharp in relation to the appropriate comparison in the circumstances:

   One must bear in mind the points of resemblance and the points of dissimilarity, attaching fair weight and importance to all, but remembering that the ultimate solution is to be arrived at, not by adding up and comparing results of such matters, but by judging the effect of the respective wholes.9

2. The Opponent contends in this regard that structural similarities between the marks are readily apparent, they both ‘consist of a roundel separated into four quadrants, with two opposing filled in quadrants and two opposing empty quadrants’ and this is what the consumer will recall. Given this, the global shift to electrical vehicles, ongoing technical convergence and relying on the delegate’s comments in a decision relating to non-use of the Opponent’s trade mark 1464578,10 the Opponent contends there is a compellingly high risk of consumer confusion if the Trade Mark is registered. To the extent the Applicant relied on prior use under s 44(3) (as it indicated at the hearing), the Opponent asserts that the specifications do not cover the use demonstrated. Although the Applicant claims it had used the Trade Mark in green colour, as the Opponent notes, the application is not so limited and could encompass the use of the Opponent’s blue/white and black colours (s 70(3) of the Act).

3. The Applicant refers to the evidence of its use of the Trade Mark in Australia for approximately 20 years and notes that there has been no confusion between the Opponent’s Roundel mark and the Trade Mark. It rejects any deceptive similarity between the marks, contending that the main difference is the shape of the marks, ‘being the difference between a rugby ball and a soccer ball’. While the Applicant refers to the commonplace nature of secchi marks11 there is no persuasive evidence in this regard. The Applicant also notes the difference in the filled-in quarters, i.e., that they are in opposing quarters and contends that the blue and white colours of the Roundel device, along with annular outer track and different overall shape, is distinctive and consumers are unlikely to be confused on seeing the Trade Mark. It also notes that much of the Opponent’s evidence relates to events outside Australia.

⁹ Clark v Sharp (1898) 15 RPC 141,146 (Byrne J).

¹⁰ Bayerische Motoren Werke AG v Electracom Pty Ltd [2020] ATMO 176 [25]-[27].

¹¹ As used, for example, by ANCAP in its crash testing program. See Australian registered trade mark 1221450.

1. Given neither of the marks has any verbal element, and there is no evidence as to how or if goods under either of the marks would be ordered orally, only a visual comparison is feasible. In considering the impression produced by the marks in their entirety the following differences are pertinent:

·     The Opponent’s Roundel mark is round. The Trade Mark is oval or elliptical.

·     The Opponent’s Roundel mark comprises a thick dark round border encircled by outer and inner lighter/grey lines. The Trade Mark is bound by a single elliptical line and has no additional border or internal lines.

·     The blank quadrants in the Trade Mark are in opposite quarters to those in the Opponent’s Roundel mark.

·     The quadrants in the Opponent’s Roundel mark are convex in appearance. The quadrants in the Trade Mark are flat.

1. I accept that a person with an imperfect recollection is unlikely to recall precisely which two quadrants of the Opponent’s Roundel mark are blank however, given their convex nature, combined with the round shape of the Opponent’s Roundel mark, its thick dark outer circle and the thinner outer and inner light/grey circles are distinctive and memorable features which are at least equally if not more prominent to the quadrants and, considering the mark as a whole, and are at least equally, if not more, likely to be recalled.

1. While I accept the Opponent’s submission that, differently oriented, the marks may appear similar12 I am required to consider the marks as registered, not as they might appear. In any event, nothing in the evidence demonstrates that the Trade Mark is used in anything other than an oval or elliptical shape.

1. In relation to the idea of the marks, the marks are conceptually different. In particular, the evidence and submissions reveal the perception that the Opponent’s mark is ‘based on a rotating propeller’, reminiscent of the Opponent’s beginnings as an aircraft manufacturer. The Trade Mark conveys no similar, or even any, idea.

¹² The Opponent referred and compared Gray, Exhibit JG7 with Exhibit TJH-2 of Hall 2.

1. Therefore, in assessing the overall impression based on recollection of the Opponent’s Roundel mark, I am not satisfied that the one common element in the marks, that is, the partially completed quadrants, constitutes sufficient similarity between them such that a person with an imperfect memory of the Opponent’s Roundel mark, on seeing the Trade Mark, will be caused to wonder if there is a connection or association between them. The lack of any evidence of confusion, notwithstanding the Applicant’s demonstrated use of the Trade Mark since 2012, gives some support to this conclusion13.

2. It follows that I do not consider the Trade Mark ‘so nearly’ resembles the Opponent’s Roundel mark in any material way such that its use would be ‘likely to deceive or cause confusion’ among ‘persons of ordinary intelligence and memory’, even allowing for imperfect recollection. In coming to this conclusion, I have been cognisant of the presumption of registrability which is to be applied in favour of the Applicant.14

3. Accordingly, I am not satisfied that the s 44 ground of opposition has been established.

Section 60

1. Section 60 of the Act provides as follows:

   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.

Note:        For priority date see section 12.

1. Therefore, the Opponent must first establish that its mark/s had a reputation in Australia at the relevant date and, secondly, that because of that reputation, the Applicant’s use of the Trade Mark would be likely to deceive or cause confusion.

¹³ See for example, Re Lancer Trade Mark [1987] RPC 303, 319 (Falconer J).

¹⁴ Pfizer Products Inc v Karam (2006) 237 ALR 787; 70 IPR 599; [2006] FCA 1663 at [8].

1. The Opponent particularised this ground in the SGP as follows:

The Opponent is a well-known manufacturer of luxury motor vehicles, motor cycles and engines. The Opponent company was founded in 1916 and is the owner of and uses extensively the well-known and world-famous trade mark BMW in relation to its motor vehicles, motorcycles and engines. In addition to the BMW trade mark, the Opponent also uses the trade mark ("the BMW Roundel trade mark"). The BMW Roundel trade mark has been used in Australia and internationally for many decades and is a well- known and famous trade mark in its own right. As well as manufacturing motor vehicles, motorcycles and engines, the Opponent manufactures a significantly broader range of goods under and by reference to the BMW and BMW Roundel trade marks. In particular, the Opponent uses its BMW Roundel trade mark on and in relation the said Goods.

The BMW Roundel trade mark has been used extensively in Australia and internationally in relation to the said Goods for many years and from a time significantly prior to the priority date of the opposed application. The Opponent enjoys an extensive reputation in this trade mark. The trade mark applied for by the Applicant is deceptively and confusingly similar to the BMW Roundel trade mark and is applied for in relation to goods which are the same as or which are similar to the said Goods.

Due to the reputation and fame of the BMW roundel trade mark associated with the Opponent in Australia, use of the trade mark applied for by the Applicant is likely to receive [sic] or cause confusion.

1. While the Opponent refers to its ‘world famous trade mark BMW’ it does not specify to which trade mark/s it refers, relying in the SGP on the reputation of the displayed ‘BMW Roundel trade mark’ which reflects its registered trade mark 1685240. In submissions the Opponent refers to its reputation in the ‘Roundel device’ and to its marks covering class 9 goods as ‘incorporating the Roundel device’, apparently conflating its SGP reference to the BMW Roundel trade mark with its other marks which cover class 9 goods and also incorporate this device (Opponent’s trade marks 410621 and 1464578, ‘the BMW device marks’). As noted above, s 60 requires the identification of another trade mark. In the absence of a request to amend the SGP, I have considered the reputation of the Opponent’s Roundel mark as particularised and as discussed above. As clarified at the hearing, I have also considered any common law use of this mark prior to the relevant date.

Reputation

1. In McCormick & Co Inc v McCormick Kenny J considered the meaning of reputation in s 60 as ‘the recognition of the [trade mark] by the public generally’15 and observed, in relation to the measurement of reputation as follows:

   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: see, e.g., Isuzu-General Motors Australia Ltd v Jackeroo World Pty Ltd (1999) 47 IPR 198; Marks & Spencer plc v Effem Foods Pty Ltd (2000) AIPC 91-560; Photo Disc Inc v Gibson (1998) 42 IPR 473; and RS Components Ltd v Holophane Corp (1999) 46 IPR 451. This Court has followed this approach as well, acknowledging that public awareness of and regard for a mark tends to correlate with appreciation of the products with which that mark is associated, as evidenced by sales volume, amongst other things.16

2. The material annexed to Hall 1 shows that BMW is recognised as one of the ‘World’s Most Powerful Brands.’ The evidence further demonstrates substantial sales, promotions and advertising and significant use of the Opponent’s marks in Australia as badges of origin in connection with prestigious motor vehicles, motor cycles and associated incidental goods and services. The sales and revenue figures do not however demonstrate under which of the marks the expenditure was incurred or the revenue received. While the evidence shows significant use and Australian reputation in the Opponent’s BMW device marks, there is no discernable evidence of any use and promotion of the Opponent’s Roundel mark17 such that would enable a conclusion that it had acquired the relevant reputation at the relevant date for the purposes of s 60(a).

3. I have considered whether the use of the BMW device marks might be characterised as use of the Opponent’s Roundel mark with additions or alterations that do not substantially affect its identity (s 7(1) of the Act). In these marks, the capitals ‘BMW’ appear in white in the thick black outer circular band. It is a strong visual element, prominent and conspicuous, when considered against the other elements. It is a feature essential to their overall identity. On this basis I am not satisfied that use of the BMW device marks can properly be characterised as use of the Opponent’s Roundel mark with alterations that do not substantially affect its

¹⁵ [2000] FCA 1335 [81].

¹⁶ Ibid [86].

¹⁷ While the exhibits TJH-2 to TJH-6 of Hall 2 purportedly show use of the BMW Roundel mark on electrical componentry, the exhibits either show the BMW device marks or are obscured (e.g., TJH-2, p35-7).

identity.18 It follows that I am not satisfied that the Opponent’s evidence has established any relevant reputation in the Opponent’s Roundel Mark, or a trade mark with additions or alterations that do not substantially affect its identity, such that s 60(a) is enlivened.

1. Accordingly, I am not satisfied that the s 60 ground has been established.

Decision

1. Section 55 of the Act relevantly provides:

Decision

(1)  Unless subsection (3) applies to the proceedings, the Registrar must, at the end, decide:

(a)  to refuse to register the trade mark; or

(b)  to register the trade mark (with or without conditions or limitations) in respect of the goods and/or services then specified in the application;

having regard to the extent (if any) to which any ground on which the application was opposed has been established.

1. The Opponent has failed to establish a ground of opposition. Accordingly, the Trade Mark may proceed to registration after 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 either withdrawn or discontinued. Otherwise, the disposition of the application should be in accordance with the Court’s order or direction.

Costs

1. Both parties sought costs. As the Applicant was the successful party, I award costs against the Opponent under s 221 of the Act in the amounts set out in Schedule 8 of the Trade Marks Regulations 1995 (Cth).

Mary-Ann Cooper Hearing Officer

Delegate of the Registrar of Trade Marks 20 August 2021

¹⁸ I note recent NZ case ([2021] NZIPOTM 7) in which use of the Opponent’s trade mark with ‘BMW’ was considered to constitute use of the Opponent’s Roundel mark however this decision was made under s 7(3) of the New Zealand Trade Marks Act 2002 which has no equivalent in the Australian trade marks legislation.