Re: Opposition by Odyssey VR (Virtual Reality) Pty Ltd to registration of trade mark application number 1858496 (11) Samsung Odyssey Notebook and device in the name of Samsung Electronics Co., Ltd
[2020] ATMO 15
•5 February 2020
TRADE MARKS ACT 1995
DECISION OF A DELEGATE OF THE REGISTRAR OF TRADE MARKS WITH REASONS
Re:Opposition by Odyssey VR (Virtual Reality) Pty Ltd to registration of trade mark application number 1858496 (11) – SAMSUNG ODYSSEY NOTEBOOK and device – in the name of Samsung Electronics Co., Ltd.
Delegate:
Debrett Lyons
Representation:
Opponent: Charbel Nehme, director of the Opponent.
Applicant: Ben Fitzpatrick of Counsel, instructed by Spruson and Ferguson, Patent & Trade Mark Attorneys.
Decision:
2020 ATMO 15
Trade Marks Act 1995 (Cth) - section 52 opposition: ss 44, 59 and 62A of the Trade Marks Act 1995 considered – none established and opposition unsuccessful – trade mark may proceed to registration
Background
This matter concerns an opposition brought by Odyssey VR (Virtual Reality) Pty Ltd (‘the Opponent’) pursuant to section 52 of the Trade Marks Act 1995 (‘the Act’) to registration of the trade mark shown below filed by Samsung Electronics Co., Ltd. (‘the Applicant’).
(‘the Trade Mark’)
The application for registration was made on 13 July 2017 (‘the filing date’) in respect of the following goods in Class 9:
“Mouse for games; monitors for games; convertible PC for games; keyboards for games; tablet computers for games; portable computers for games” (‘the Goods’).
The application claims convention priority of 11 July 2017 (‘the priority date’), based on Republic of Korea, Trade Mark No. 40-2017-0086605 in respect of the Goods.
Following examination, the application was advertised in the Australian Official Journal of Trade Marks as accepted for possible registration after whch the Opponent filed a Notice of Intention to Oppose the registration. It later filed a Statement of Grounds and Particulars (‘the SGP’). The Applicant then filed a Notice of Intention to Defend.
The parties each filed evidence after which they were heard in person in Canberra on 1 November 2019. I was delegated by the Registrar to take the hearing. The Opponent was represented by Charbel Nehme, director of the company. The Applicant was represented by Ben Fitzpatrick of Counsel, instructed by Spruson and Ferguson, Patent & Trade Mark Attorneys.
Grounds of Opposition, Onus and Standard of Proof
The SGP nominated grounds of opposition under sections ss 44, 59 and 62A of the Act. The onus of proof to establish at least one of those grounds rests with the Opponent.[1] The relevant standard of proof is the ordinary civil standard based on the balance of probabilities.[2]
[1] Food Channel Network Pty Ltd v Television Food Network GP [2010] FCAFC 58, [32].
[2] Telstra Corporation Limited v Phone Directories Company Ltd [2015] FCAFC 156, [132]-[133].
The date at which the s 44 ground is to be determined is 11 February 2017, being the priority date of the application and the date at which the ss 59 and 62A grounds are to be determined is 13 February 2017, being the filing date of the application.
Evidence
The parties filed evidence in accordance with the Trade Mark Regulations 1995 (‘the Regulations’), as follows:
Evidence in Support
Date
Declaration of Charbel Nehme
4 May 2018
Evidence in Answer
Declaration of Min Oh
14 August 2018
Declaration of Jacqui-Lee Symonds
14 August 2018
Evidence in Reply
Declaration of Charbel Nehme
18 September 2018
The evidence shows that the Applicant is an electronics company based in the Republic of Korea which sells a wide range of electronic goods internationally. The Opponent is an Australian company which claims a business in virtual reality headsets. It is the owner of the trade mark registration (‘the Registered Mark’), details of which are set out below:
Number
Priority date
Trade mark
Goods
1772783
25 May 2016
“Odyssey VR (Virtual Reality)”
Class 9:
Virtual reality headsets
Class 42:
Information technology (IT) services (computer hardware, software and peripherals design and technical consultancy); none of the aforementioned being in relation to gaming (gambling).
Preliminary observations
The Opponent, both in its written submissions and its representations at the hearing, characterised itself as something of an unwilling antagonist in these proceedings. It approached the Applicant before the Trade Mark was filed in Australia, motivated by what it describes in its written submissions as “the real and obvious danger … that my business will be perceived by customers, suppliers, investors, business partners, associates and the general public to have willingly infringed on the applicants Trademark.”
In what follows later I have found it convenient to consider s 44 firstly since my findings in relation thereto have some bearing on the other grounds pressed. That said, the Opponent’s position in these proceedings can be summarised by the broad complaint leveled against the Applicant that, when it filed the application, it did not intend to use the Trade Mark (s 59) and it made the application in bad faith (s 62A). The Opponent’s submissions in respect of those grounds are intertwined and so I have set out here a precis of the facts and allegations on which those two grounds of opposition are made.
Mr Nehme wrote on the Opponent’s behalf to the Applicant’s Australian business, Samsung Electronics Australia, on 4 May 2017 and to the Applicant’s legal representatives in May/June 2017 for what he describes as the purpose of mitigating the risk of confusion and deception between the marks. The letter to the Australian business elicited a written response, stating that the letter had “been sent across to Samsung Legal Team and they shall investigate and address your concerns moving forward.” The letters to the Applicant’s Korean patent attorneys resulted in advice that “since we have been notified from Samsung that they will take this matter into their own hands, we have closed our file on this case.” There is no evidence of a direct response from the Applicant.
Although nothing in particular turns on it, I would characterise the essentially identical letters as very politely worded warnings that the Opponent was the owner of the Registered Mark. The letters refer to the Applicant’s recent failure to secure local registration of the trade mark “Odyssey” and express the hope that will be the end of interest in that mark.
The Opponent’s evidence shows that a little earlier, on 13 April 2017, the Applicant’s trade mark application for “Odyssey” in class 9 was refused registration in the Republic of Korea. Further, that on 11 April 2017, the Applicant filed an application in the Republic of Korea for the Trade Mark, that application forming the basis of the priority claim for the at-issue application in these proceedings.
According to the declaration of Mr Oh from the Applicant’s Intellectual Property Strategy Team, the Trade Mark was adopted honestly and was filed as part of an international marketing plan. Mr Oh declares that the Applicant has filed applications for the Trade Mark in a number of jurisdictions and has already used the Trade Mark or variations thereof which include the word, “Odyssey”, in other countries. Indeed the evidence shows that an application was made for a mark including the word “Odyssey” in the United States in September 2012[3] and that the Applicant has since that time used this trade mark in the United States, but in respect of mobile phones.
[3] Maturing to registration as USPTO Reg. No. 4401596 from September 13, 2012 for the trade mark, SAMSUNG ATIV ODYSSEY.
However, Mr Oh states that the Applicant intended to use the Trade Mark in Australia on the Goods. The Opponent is not so convinced. Its research shows that whilst the Applicant had by the priority date produced goods such as virtual reality headsets, it had not done so under the Trade Mark nor under a mark including the word, “Odyssey”. Further, the Opponent relies on an internal email found in the Applicant’s evidence dated more than a year before the application was filed wherein a Mr Jung Le wrote, “at the moment there is no plan to release this brand/product in other jurisdictions”, that was to say, in jurisdictions other than Brazil, China, Republic of Korea, the U.S.A, and Vietnam. The Opponent is concerned that Mr Oh’s declaration in these proceedings appears to contradict that internal correspondence when he asserts that in 2016 the Applicant had formed an intention to use the term, “Odyssey”, for gaming products in the countries listed above, but with other countries to follow and in particular, had “plans to launch the brand in Australia in late 2018 or 2019 … initially … in relation to notebooks and computers [but also] … in relation to the remaining [Goods] … if the initial launch is successful”.
Section 44
Section 44 of the Act provides, inter alia:
44Identical 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.
The Registered Mark is the basis for the Opponent’s s 44 ground of opposition. The priority date of the Registered Mark is earlier than that of the Trade Mark. The following question is whether the class 9 goods of the Registered Mark – virtual reality headsets – are similar goods to any of the Goods of the Trade Mark, all being products for gaming and set out again hereunder for convenience:
Mouse for games; monitors for games; convertible PC for games; keyboards for games; tablet computers for games; portable computers for games
Section 14(1) of the Act defines “similar goods” as goods that are the same as other goods or of the same description as that of other goods. The Applicant submits that:
Both [the Goods], and Virtual Reality Headsets, are typically purchased only after careful deliberation and, in many cases, close visual inspection. It is therefore unlikely that a consumer, intending to purchase a keyboard, mouse, monitor or computer for games would mistakenly purchase a Virtual Reality Headset.
However, mistaken selection of goods is not the issue; the question is whether the compared goods are the same or of the same description. I find that virtual reality headsets are goods of the same description (if not the same goods) as “monitors for games” and I think that since since virtual reality headsets are used principally for gaming, there is a respectable argument that they are goods of the same description as all of the Goods.
In this case, there is no need for me to reach a final decision on that question since the success of the ground of opposition is determined by the final issue of whether the compared trade marks are deceptively similar (there being no cogent argument that they are substantially identical, which I find they are not).
For the purposes of comparison the words “Virtual Reality”, the letters “VR” and the expression “Notebook” can be largely discounted; they are either directly descriptive or of low distinctive value in relation to products of the general kind at stake. Further, the device element of the Trade Mark is of little visual significance and plays a minor part in the overall comparison of the two marks. The shared element is the word, “Odyssey”, and what I must measure is (a) the value of that word in light of certain evidence adduced by the Applicant and (b) the impact of the SAMSUNG house mark.
The Applicant submits that the term “Odyssey” has a known meaning, being “a long and eventful journey or adventure” which is apt for goods relating to the gaming industry. I was initially surprised by that submission but concede that the Symonds declaration, made on behalf of the Applicant, shows that from the declarant’s search of the IP Australia Australian Trade Mark Search database, registered trade marks containing the word “Odyssey” are not uncommon in classes 9 and 42[4]. The search shows quite a number of co-existing registrations including:
· Registration no. 822151 for ODYSSEY in the name of Harman International Industries, Incorporated registered in respect of Class 9: Computer sound systems, namely, transducers, loudspeakers and loudspeaker systems.
· Registration no. 937768 for ODYSSEY in the name of Sony Music Entertainment registered in respect of Class 9: Audio and audio visual recordings including phonograph records, pre-recorded magnetic tapes, discs, cassettes and CD ROMs.
· Registration no. 1047675 for LOST ODYSSEY in the name of Microsoft Corporation in respect of Class 9: Computer programs, namely, game software for use on computers and video game players.
· Registration no. 1222619 for ETRIAN ODYSSEY in the name of Kabushiki Kaisha Atlus in respect of Class 9: Computer hardware and software including computer video games software; computer video game programs including computer video game programs for mobile phones; computer video game programs downloadable via a telecommunications network.
· Registration no. 1288727 for ODYSSEY in the name of Permafrost Pty Ltd in respect of Class 9: Digital picture frames, digital picture albums, digital picture key rings.
· Registration no. 1501249 for PERIODYSSEY in the name of Alexandra Fraser in respect of, inter alia, Class 9: Scientific, nautical, surveying, photographic, cinematographic, optical, weighing, measuring, signalling, checking (supervision), life-saving and teaching apparatus and instruments; apparatus and instruments for conducting, switching, transforming, accumulating, regulating or controlling electricity; apparatus for recording, transmission or reproduction of sound or images; magnetic data carriers, recording discs; compact discs, DVDs and other digital recording media; mechanisms for coin-operated apparatus; cash registers, calculating machines, data processing equipment, computers; computer software.
· Registration no. 1873041 for SUPER MARIO ODYSSEY in the name of Nintendo Corporation in respect of, inter alia, Class 9: Programs for consumer video game apparatus; electronic storage media recorded with programs for consumer video game apparatus; downloadable or installable programs and additional data for consumer video game apparatus; programs for handheld electronic game apparatus; electronic storage media recorded with programs for handheld electronic game apparatus; downloadable or installable programs and additional data for handheld electronic game apparatus.
[4] Symonds [18] and Exhibit JS-15. Additionally, I observe that Mr Oh, who declares on behalf of the Applicant that this is why the word “Odyssey” was chosen, elaborates further that ‘Samsung Odyssey will take you on the ultimate journey towards virtual reality’.
The fact that several of those registrations are for goods related to gaming is evidence enough for me to accept that the term is popular for such goods, whatever the reason, and faced with that evidence I accordingly have to consider that the commonality of the word in the compared marks is not necessarily a compelling sign that the marks are deceptively similar.
Compounded with that observation is the prominent use of SAMSUNG and the case law has established that the inclusion of a well-known mark, such as this mark, goes a long way in removing any likelihood of confusion or deception. On balance I find that the compared marks, taken as wholes, are not deceptively similar[5].
[5] Section 10 of the Act defines “deceptively similar” 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.” So, see, for example, Registrar of Trade Marks v Woolworths (1999) 45 IPR 41, where the Full Federal Court noted at [46]: “The question for the Registrar and the Court is not whether consumers might be confused (in the sense of wondering about common origin or connection) but whether there is a reasonable likelihood that they will be confused.” In that case the Federal Court had to answer the question whether “Woolworths metro” should be refused registration because it was deceptively similar to “metro”. In finding they were not deceptively similar Justice French (as he then was) said at [61]): “Where an element of a trade mark has a degree of notoriety or familiarity of which judicial notice can be taken, as is the present case, it would be artificial to separate out the physical features of the mark from the viewer's perception of them. For in the end the question of resemblance is about how the mark is perceived. In the instant case the visual impact of the name “Woolworths” cannot be assessed without a recognition of its notorious familiarity to consumers.”
In the result, the Opponent has not established a ground of opposition under s 44 of the Act.
Section 59
Section 59 provides:
Applicant not intending to use trade mark
The registration of a trade mark may be opposed on the ground that the applicant does not intend:
(a) to use, or authorise the use of, the trade mark in Australia; or
(b) to assign the trade mark to a body corporate for use by the body corporate in Australia;
in relation to the goods and/or services specified in the application.
As stated already, it is the Opponent who bears the onus of proof to establish a ground of opposition. The Opponent’s submissions in respect of ss 59 and 62A take as their starting point the notion that it is the Applicant which must show it had an intention to use the Trade Mark and that it filed the Trade Mark in good faith. That is incorrect as a matter of law. So far as s 59 is concerned, the accepted proposition is that the mere fact of making an application for registration raises a presumption of an intention to use[6]. The presumption is rebuttable, but only upon compelling proof that intention was lacking. Non-use, or delay in putting the mark to use, are not of themselves proof that the requisite intention was lacking at the filing date[7]; the courts recognise the commercial reality that there may be any number of reasons why a mark, intended for use, is not used either immediately or for some time and indeed the Act is so constructed to provide separate mechanisms for the removal of marks not used without cause over a prescribed period of time.
[6] Aston Harlee Manufacturing Co (1960) 103 CLR 391 at 401; Kimberly-Clark Worldwide, Inc v Goulimis [2008] FCA 1415; (2008) 78 IPR 612 at [10]; Armor All Products Corporation v Crc Chemicals Australia Pty Limited [1993] FCA 487; (1993) Aipc 91-027 (1 October 1993) at [52].
[7]Re Peddie’s Application (1944) 61 RPC 31; Health World Ltd [2008] FCA 100 at [163], Ritz Hotel Ltd v Charles of the Ritz Ltd (1988) 15 NSWLR 158).
That said, the presumption of intention to use in favour of an applicant has been rebutted in certain cases, for example, where a strong inference was able to be drawn that the application was made simply to frustrate a competitor in business’s attempt to itself obtain registration of the same or a similar mark.
The Opponent submits that the Applicant’s own evidence shows that it did not intend to use the Trade mark in Australia. It states that “[t]he applicants internal email dated 14 April 2016 should be considered a more accurate reflection of the company’s intention at this point in time, as opposed to Mr Oh’s post dated declaration that has been prepared for the purpose of defending the mark under opposition.” Whilst I tend to agree with that statement as a broad proposition when it comes to weighing evidence, Mr Fitzpatrick was keen to point out that the internal email was dated more than a year before the critical filing date of the application for the Trade Mark and so cannot be conclusive of the Applicant’s intention at that point of time. I am likewise in agreement with that proposition. All that might sway me away from the presumption in favour of the Applicant already discussed are circumstantial factors which if accepted on face value would raise a compelling inference that the Applicant did not intend to use the Trade Mark in Australia. At this point I am required to read certain suggestions into the Opponent’s submissions. One inference might be that the Applicant was only actuated to file in Australia by receipt of the Opponent’s letters. Another might be that after the Applicant’s failure to secure local registration of the mark, “Odyssey”, the Trade Mark was an artifice, filed with no genuine intention to use it. Thirdly, might be the suggestion that there was no intention to use the Trade Mark in respect of the Goods.
The strongest evidence is the internal email. It is not a legal document and scrutiny of the kind it has been given here was almost certainly not contemplated. Further, it significantly predates the filing date and shows, at best, the Applicant’s intentions at the time; I find that taking account, too, of the nature of the electronic goods industry. The remaining circumstantial factors in my view do not rise to the occasion. Furthermore, the evidence is that well before the filing date, the Applicant had used all of the words of the Trade Mark, albeit not together. Bearing the onus of proof, the Opponent has not convinced me that the Applicant did not intend to use the Trade Mark in Australia on the filing date. The intention may have been contingent, but that is allowed by the case law.
Section 62A
Section 62A 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.
The crucial facts have been outlined. The case law under s 62A requires me to ask the hypothetical question whether the circumstances were such that a reasonable person standing in the shoes of the Applicant would have been aware that he /she ought not to apply for trade mark registration. Put another way, in Fry Consulting Pty Ltd v Sports Warehouse Inc (No 2), [2012] FCA 81, Dodds-Streeton J described at [166] bad faith as importing “conduct which, irrespective of the form it takes, is of an unscrupulous, underhand or unconscientious character.”
What I have already decided determines the issue of bad faith in this case. There is evidence from the Australian Register that the term “Odyssey” has had a level of appeal to traders in the gaming industry. The Applicant has used it since 2012, albeit not in connection with the Goods. The Applicant has made gaming products. I cannot conclude that the decision of the Applicant to adopt and seek to register the Trade Mark, containing the word, “Odyssey”, was a decision made to take advantage of the Opponent in some way, rather than a decision to use that word for the reasons already set out. I am not satisfied that the Applicant’s conduct in filing the application for the Trade Mark was unscrupulous, underhanded or unconscientious in character. Consequently, I find that the Opponent has failed to establish the ground of opposition under s 62A.
Decision
Section 55 of the Act relevantly 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.
The Opponent has not established a ground of opposition.
The Trade Mark may proceed to registration one month from the date of this decision. If the Registrar has been served with a notice of appeal before that time, I direct that registration shall not occur until the appeal has been decided or discontinued and the disposition of the application should be in accordance with the court’s order or direction.
Costs
The Applicant sought its costs in the event it was successful in this matter and I accordingly award costs against the Opponent at the official scale set out in Schedule 8 to the Regulations.
Debrett Lyons
Hearing Officer
Hearings and Oppositions
5 February 2020
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