Re: Opposition by TomTom International B.V to registration of trade mark application number 1829932 (class 18) – TOMTOC - in the name of Shenzhen Tomtoc technology Co., Ltd.

[2019] ATMO 170

TRADE MARKS ACT 1995

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

Re: Opposition by TomTom International B.V to registration of trade mark application number 1829932 (class 18) – TOMTOC - in the name of Shenzhen Tomtoc technology Co., Ltd.

DELEGATE:

Louise Tuohy

REPRESENTATION:

Opponent: Written submissions by Ann Critchell-Ward and Phillips Ormonde Fitzpatrick

Applicant: No written submissions provided.

DECISION:

2019 ATMO 170

Trade Marks Act 1995 (Cth) – opposition under section 52 – ss 42(b), 44,

60 and 62A pressed - section 60 established – registration refused.

Background

1.  Shenzhen Tomtoc technology Co., Ltd (‘the Applicant’), filed trade mark application number 1829932 on 6 March 2017 in class 18 of the International Classification of Goods and Services. Relevant details of the application are set out below.

Trade Mark:

(‘the Trade Mark’)

Trade Mark application no:

1829932

Filing Date:

6 March 2017 (‘the priority date’)

Specification:

Class 18: School bags; Tool bags (empty); Rucksacks; Pocket wallets; Handbags; Travelling bags; Briefcases; Vanity cases (not fitted); Bags for sports; Umbrella covers

2.  Acceptance of the application for possible registration was published in the Australian Journal of Trade Marks dated 27 July 2017. Subsequently TomTom International B.V. (‘the Opponent’) filed a Notice of Intention to Oppose registration on 22 September 2017 followed by a Statement of Grounds and Particulars (‘the SGP’) on 23 October 2017.

3.  The Applicant then filed a Notice of Intention to Defend on 29 November 2017.

4.  The Opponent filled evidence in accordance with the provisions of the Trade Marks Regulations 1995 (‘the Regulations’).

5.  The Applicant did not file any evidence in this matter.

6.  In the letter issuing from IP Australia on 18 December 2018 the parties were notified that as neither party had requested a hearing, the matter would be given to a delegate of the Register for a decision based on the written record.

7.  The opposition was referred to me as a delegate of the Register of Trade Marks on 4 November 2019.

Grounds of Opposition, Relevant Date and Onus

8. In the SGP the Opponent nominates the grounds of opposition under ss 42(b), 44, 60 and 62A of the Trade Marks Act 1995 (‘the Act’).

9. The rights of the parties are to be determined as at the date of the application1 which is generally, but not always, the filing date2. For the purposes of sections 44 and 60 which speaks of the priority date, the relevant date is 6 March 2017 which, in this case, is the same as the filing date of the application. Sections 42 and 62A, however, do not refer to a filing date or a priority date. However, I will proceed on the basis that the filing date of 6 March 2017 is the ‘Relevant date’ at which to assess all the grounds in the proceedings3.

10.  The Opponent bears the onus of establishing at least one of the grounds of opposition4. The standard of proof is the ordinary civil standard of the balance of probabilities5.

1 Southern Cross Refrigerating Co v Toowoomba Foundry Pty Ltd [1954] HCA 82; (1954) 91 CLR 592, [595].

2 See Sections 6, 12 and 72 of the Act.

3 Apple Inc v Registrar of Trade Marks [2014] FCA 1304, [45].

4 Food Channel Network Pty Ltd v Television Food Network GP [2010] FCAFC 58, [32].

11. In the discussion below, I have only found it necessary to address the section 60 ground in this decision. Nonetheless, should the decision be appealed, then it is open to the Opponent to plead any ground it considers relevant in proceedings before the Court.

Evidence

12. The Opponent filed evidence in accordance with the Regulations being:

Evidence in Support

Declaration by Ann Critchell-Ward made 1 March 2018 (‘Critchell-Ward’).

Additional Material

Opponents Written Submission by Phillips Ormonde Fitzpatrick made 2 November 2018 (‘POF’).

Discussion

Section 60

13. Section 60 of the Act provides:

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.

Note: For priority date see section 12.

5 Telstra Corporation Ltd v Phone Directories Co Pty Ltd [2015] FCAFC 156, [132].

14. In the SGP the Opponent particularised the section 60 ground of opposition as follows:

(a)  The Opponent, TomTom International B.V. is one of the most famous producers of traffic, navigation and mapping products worldwide and invented the portable navigation device for consumers. The Opponent has used and widely promoted the TOMTOM trade mark and related stylised TOMTOM marks in Australia in relation to, a broad range of goods (including protective cases, fitness watches and fitness bands) as well as services since at least 2012 in Australia.

(b)  The Opponent’s reputation in the TOMTOM trade mark and related stylised TOMTOM marks has extended in Australia such that persons seeing the Opposed Trade mark used in relation to the goods claimed under the Opposed Trade Mark would expect an association or connection with the Opponent when no such connection exists. This would lead to deception or confusion.

15. To satisfy section 60 of the Act the Opponent must establish a reputation of another trade mark in Australia existing before the priority date. The reputation must be significant enough for the use of the Trade Mark in the Australian marketplace to be likely to deceive or cause confusion.

16.  The Opponent relies upon the reputation of its plain word TOMTOM trade marks and composite trade marks in classes 9, 38, 39, 41, 42 and 456.

17. What is intended by the word ‘reputation’ as used in section 60 was considered in McCormick & Company Inc v McCormick by Kenny J, who concluded that it was ‘the recognition of the [trade mark] by the public generally’7. Her Honour then quoted  the relevant test for reputation set out by 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 forum8.

6 See Annexure 1 for full details of the Opponent’s trade marks.

7 McCormick & Company Inc v McCormick [2000] FCA 1335, [81].

8 Re ConAgra Inc v McCain Foods (Aust) Pty Ltd [1992] FCA 159, [118].

18. Furthermore, any assessment of the reputation of a trade mark under section 60 is to take place in the context of the marketplace for the goods and services and the requirement that a ‘significant’ or ‘substantial’ number of persons (rather than the public as a whole) must be likely to be deceived or confused and that what is ‘significant’ or ‘substantial’ may depend on the specialised nature of the relevant market 9.

19.  In practice, once the requisite reputation is demonstrated, the likelihood of deception or confusion increases the more closely the trade marks resemble each other10.

The Evidence

20.  The Opponent’s evidence in support of the opposition is a declaration by Ann Critchell- Ward, the Vice President Intellectual Property at the Opponent.

21.  Critchell-Ward states that the Opponent’s predecessor Palmtop Software which was founded in 1991, decided in about 1998 to adopt a new brand. The Opponent’s predecessor settled on TOMTOM which was considered truly independent of any languages11.

22.  In 2002, the TOMTOM Navigator was launched providing customers across Europe with a new category in consumer electronics, the Portable Navigation Device (PND). In the 11 years since its launch, over 78 million TOMTOM PND have been sold in 41 countries12.

23.  In 2013, the Opponent’s consumer product portfolio extended with TOMTOM GPS Sport watches, and in 2015 it introduced the TOMTOM Bandit action camera. The Opponent’s telematics business as provider of fleet management and vehicle telematics solutions, had an installed base of 605,000 vehicles at the end of 2015. Together with its real-time traffic information and navigation software, today TOMTOM products are sold to customers across various markets, reaching over 800 million people around the world everyday13.

24.  In June 2005, the Opponent launched its award winning TOMTOM GO portable car navigation devices in Australia and opened its first Asia Pacific Office in Sydney Australia14.

9 Le Cordon Blue BV v Cordon Blue International Ltd [2000] FCA 1587; (2000) 50 IPR 1.

10 Quantas Airways Limited v Edwards [2016] FCA 729, [142].

11 Critchell-Ward [4].

12  Critchell-Ward, [5], Exhibit 2.

13  Critchell-Ward, [5], Exhibit 2.

14 Critchell-Ward [6-7] Exhibit 3.

25.  Use of the Opponents trade mark TOMTOM since 2005 has been continuous in all Australian states and territories15.

26.  Critchell-Ward further states that today in Australia, the TOMTOM trade marks are applied to a range of goods and services including, car, truck and motorcycle navigation; mobile navigation apps; maps; sports watches; activity trackers as well as accessories such as chargers, mounts, holders, cases and docking stations16.

27.  Marked as confidential the Opponent has provided what I would characterise as substantial sales figures and individual unit sales for the products sold under its trade mark for the period 2010 to 201717.

28.  The Opponent has provided confidential details of its significant advertising expenditure, for the period 2013 to 201718.

29.  Also marked as confidential is a list of all the advertising and promotion activities conducted through radio, press, print and online media outlets19. Although it is stated that the list details all of the Opponent’s advertising campaigns for the goods and services bearing the TOMTOM trade marks that have been made in Australia20, none of the listings show what dates its advertisements ran.

30.  Exhibits 6, 8, 9, 10 and 1121 provide examples of advertising and promotional activities undertaken by the Opponent including copies of periodicals which have conducted product reviews for goods bearing the TOMTOM trade marks or referring to the Opponent’s products22, and a sales catalogue from a major Australian retail chain offering for sale products bearing the TOMTOM trade mark23. However, it is noted that parts of the evidence provided cannot be taken into consideration as it postdates the priority date or is not dated.

15 Critchell-Ward [6].

16 Critchell-Ward [8].

17  Critchell-Ward Exhibit 4.

18  Critchell-Ward Exhibit 5.

19  Critchell-Ward Exhibit 7.

20 Critchell-Ward [12].

21 Critchell-Ward Exhibit 6, 8, 9, 10 and 11.

22 Critchell-Ward [11] Exhibit 6.

23 Critchell-Ward [16] Exhibit 11.

31.  Considering the evidence in Critchell-Ward, I am satisfied that by reason of the Opponent’s substantial sales, and significant expenditure on advertising and promotion activities, that on the balance of probabilities the Opponent’s trade marks had a significant reputation in Australia in relation to its trade marks, and in relation to its goods and services.

32. This is not the end of the matter. For the Opponent to establish the ground under section 60 of the Act, I must also be satisfied that because of that reputation the use of the Trade Mark would be likely to device or confusion.

33.  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 maybe said, the setting, and the habits and observations of men considered in the mass affords the standard24.

34.  The notions of ‘deceive’ and ‘confuse’ were further articulated in the New Zealand case of

Pioneer Hi-Bred Corn Co v Hyline Chicks Pty Ltd, where Richardson J said:

‘Deceived’ implies the creation of an incorrect belief or mental impression and ‘causing confusion’ may go no further than perplexing or mixing up the minds of the purchasing public. Where the deception or confusion alleged is as to the source of the goods, deceived is equivalent to being misled into thinking that the goods bearing the applicant’s mark come from some other source and confused to being caused to wonder whether that might not the case25.

24 Australian Woollen Mills Limited v F S Walton and Company Limited [1937] HCA 51; (1937) 58 CLR 641, [658].

25 Pioneer Hi-Bred Corn Co v Hyline Chicks Pty Ltd [1979] RPC 410, [423] (citation omitted).

35. I also note that the kind of confusion contemplated by section 60 need not lead to the actual purchase of the relevant goods26.

36.  The basis of this matter is whether or not the use of the Trade Mark in relation to the Applicant’s goods is likely to result in a number of persons being caused to wonder whether the Trade Mark denotes the goods from some other source including the Opponent27.

37.  That said, there must also be some similarity between the relevant trade marks28.

38. While it is not necessary to show that the trade marks are substantially identical or deceptively similar for the purposes of an opposition under section 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’29.

39.  The Opponent in the POF submission discusses the similarity between the trade marks and argues that the Trade Mark and the Opponent’s trade marks share the same prefix TOMTO which emphasizes the likelihood of confusion for consumers30.

40.  I agree with the Opponent that the trade marks share the same prefix. The respective trade marks are comprised of six letter words with the same amount of syllables and that visually the difference is one letter. In regards to this matter, I note the following observations of Sargant LJ in London Lubricants (1920) Limited’s Application:

The only similarity in the word “Tripcastroid” to “Castrol” is in the letters composing the centre of the new word. The termination of the new word is different. Though I agree that, if it were the only difference, having regard to the termination of words, that might not alone be sufficient distinction. But the tendency of persons using the English language to slur the termination of words also has the effect necessarily that

26 Nettlefold Advertising Pty Ltd v Nettlefold Signs Pty Ltd (1997) 38 IPR 495, [501]. Heerey J’s remarks were made in the context of s28 of the Trade Marks Act 1955, but are no less applicable to s60 of the current Act. The decision itself was overturned on appeal to the Full Federal Court (1998) 45 IPR 393, but not on this point.

27 Registrar of Trade Marks v Woolworths Ltd [1999] FCAFC 1020; (1999) 45 IPR 411, [428].

28 Reece Pty Ltd v Rogers Seller & Myhill Pty Ltd [2010] ATMO 5; (2010) 85 IPR 647.

29 Qantas Airways Limited v Edwards [2016] FCA 729 [142].

30 POF submission [20].

the beginning of words is accentuated in comparison, and, in my judgement, the first syllable of a word is, as a rule, far the most important for the purpose of distinction.31

41.  Taking the above issues into consideration, I find that the Trade Mark and the Opponent’s trade marks are similar.

42.  In this regard, I note the comments of the delegate of the Registrar in Pottle Productions Inc v Rute Ithalat Ve Ihracat Anonim Sirketi:

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 consideration32.

43.  Given that the Opponent has established a significant reputation in the goods and services under its trade marks, and with the degree of similarity between the trade marks evident, it is easy to anticipate a circumstance where a consumer, familiar with the Opponents trade marks particularly in relation to its cases and accessories, would see the Trade Mark used on goods such as bags and cases or on travel accessories as being connected with the Opponent.

44.  I note that the Applicant has claimed 10 items in class 18, however, the Applicant has remained silent throughout this proceeding and therefore I have not been provided with any reason why I should dissect the claimed goods.

45. The Opponent has established the ground of opposition under section 60 in relation to all the goods claimed by the Trade Mark in class 18.

Decision

31 London Lubricants (1920) Limited’s Application (1924) 42 RPC 264, [30].

32 Pottle Productions Inc v Rute Ithalat Ve Ihracat Anonim Sirketi [2012] TMO 124, [40].

46. Section 55 of the Act provides:

55 Decision

(1)         Unless subsection (3) applied to the proceeding, 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.

47. I find that the Opponent has met the onus upon it, in terms of the ground of opposition under section 60 of the Act. Accordingly, as Delegate of the Registrar I refuse to register the Trade Mark.

Costs

48. It is usual for costs to follow the event, and I see no reason to depart from that principle here. I award costs against the Applicant in terms of Schedule 8 of the Regulations.

Louise Tuohy Hearing Officer

Oppositions and Hearings Trade Marks and Designs 2 December 2019

Annexure 1

Trade Mark Number: 955608 Trade Mark: TOMTOM Priority Date: 14 February 2003

Class 9: Computer hardware and software; software for use with (satellite and/or GPS) navigation systems; software for the benefit of travel information systems for the provision or visualization of travel advice and/or information concerning service stations, car parks, restaurants, car dealers and other travel and transport related information; software for information management in the field of transport and traffic; electronic maps, route planners and digital dictionaries, as well as software for use in combination therewith; hardware, in particular location, orientation and navigation apparatus and global positioning systems(GPS), as well as parts thereof, components and accessories therefore, such as, connecting cables, (GPS and/or satellite) receivers and holders for pocket personal computers; satellite and radio transmission apparatus and receivers; telecommunication installations, networks and apparatus; computer terminals, all in particular for use with navigation systems, route planners and/or digital maps; magnetic and data carriers, recording discs; audio and video apparatus; hand-held personal computers; personal digital assistants; electric and electronic apparatus and instruments, not included in other classes

Class 38: Telecommunication services, secured or not, such as transmission and processing of digital data, sound, data, information and image signals, as well as providing (tele)communication infrastructure required to that end, including computer, cable, radio and satellite networks, all in particular for navigation systems, route planners and the use of electronic maps; telecommunication and (wireless) data communication, by means of multimedia or otherwise, including videotext, Internet, GSM and WAP; wireless transmission of digital data; communication by way of computer terminals; telecommunications for the benefit of communication with vehicles; rental of telecommunication apparatus

Class 42: Consultancy and services rendered in the field of automation; development and design of navigation systems, route planners, electronic maps and digital dictionaries; computer software and hardware design; development and design of the goods mentioned in class 9; development and design of telecommunication and data communication services and networks; rental of access time to a computer database; afore-mentioned services also rendered with the aid of multimedia, including videotext, Internet, GSM and WAP; technical consultancy regarding services mentioned in class 38

Trade Mark Number: 1152139 Trade Mark: TOMTOM Priority Date: 06 April 2006

Class 9: Computer hardware and software; hardware and software to be used with (satellite and/or GPS) navigation systems; hardware and software for the use of (satellite and/or GPS) navigation systems; hardware and software for travel information systems for the provision or rendering of travel advice and/or information concerning service stations, car parks, multi- storey car parks, restaurants, car dealers and other information regarding travel and transport; hardware and software for information management for the transport and traffic industries; hardware and software for the use of electronic maps; hardware and software to be used with

electronic maps; electronic maps; hardware and software for route planners; route planners

(being hardware and software); hardware and software for digital dictionaries; digital dictionaries; hardware and software, in particular positioning, orientation and navigation apparatus and "Global Positioning Systems" (GPS) as well as parts thereof, components and accessories for these, such as, but not limited to, connecting cables, (GPS and/or satellite) receivers and holders for pocket personal computers, not included in other classes; satellite and radio transmission and receiving apparatus; telecommunication installations, networks and apparatus; computer terminals, all in particular to be used with and for the use of navigation systems, route planners and/or digital maps; magnetic data carriers and recording discs; audio and video apparatus; hand-held personal computers; personal digital assistants; electric and electronic apparatus and instruments for providing information regarding maps, navigation, traffic, weather and interesting locations; alarm apparatus and instruments to be used for tracking and tracing vehicles

Class 38: Secured or not secured telecommunication services, such as transmission, storage and passing on of digital data, light, sound, data, information and image signals, as well as providing and making available the (tele)communication infrastructure necessary for this, including cable, radio networks and satellite networks, all in particular for navigation systems, route planners and the use of electronic maps; telecommunication and (wireless) data communication, by means of multimedia or otherwise, including videotext, the internet, GSM and WAP; wireless transmission of digital data; communication by way of computer terminals; telecommunication services for the communication with vehicles and other means of transport; rental of telecommunication apparatus; technical consultation concerning all services mentioned above; rental of access time to a computer database

Class 39: Navigation services (piloting); information services regarding traffic and traffic congestion; provision of information regarding travel; provision of data regarding the positioning of goods flows, transports, means of freight transports and vehicles (tracking and tracing); provision of information to travellers regarding fares, time tables and means of public transport; services of a travel agency, namely booking of rental cars, boats and other vehicles; all of the aforesaid services also provided via a communications network or a mobile telephone or a wireless navigation device

Class 41: Education; provision of training; entertainment, including services regarding the production of radio programmes and television programmes; cultural activities; sporting activities, including outdoor activities

Class 42: Automation services and consultation therefor; development and design of navigation systems, route planners, electronic maps and digital dictionaries; design of computer software and hardware; development and design of the goods mentioned in class 9; development and design of telecommunication and data communication services and networks; provision of computer networks; the services mentioned above, among other things with the aid of multimedia, including videotext, the internet, GSM and WAP; provision of temporary use of non-downloadable computer software for tracking and tracing goods and vehicles via computer networks, intranets and the internet; providing and making available of computers being part of telecommunication infrastructures, especially for navigation systems, route planners and the use of electronic maps

Class 45: Personal and social services rendered by others to meet the needs of individuals; security services for the protection of property and individuals, among which the tracking and tracing of goods and individuals in the context of security

Trade Mark Number: 1255603

Trade Mark:

Priority Date: 28 February 2007

Class 9: Computer hardware and software to be used with satellite and/or GPS navigation systems for navigation purposes; computer software to be used with route planners, electronic maps, and digital dictionaries for navigation and translation purposes; software for travel information systems for the provision or rendering of travel advice and/or information concerning service stations, car parks, restaurants, car dealers and other travel and transport related information; software for information management for the transport and traffic industries; software to be used for viewing electronic maps; downloadable electronic maps; software for operating route planners; route planners in the nature of handheld personal computers; software for operating electronic digital dictionaries; electronic dictionaries; location, orientation and navigation, and global positioning systems (GPS) consisting of computers, computer software, transmitters, GPS and/or satellite receivers, network interface devices, connection cables, and parts and fittings thereof; satellite and radio transmission apparatus technology, namely, processors, mobile telephones and receivers; telecommunications installations, networks and apparatus, namely, mounting racks for telecommunications hardware, telecommunication switches; computer terminals, all in particular to be used with navigation systems, route planners and/or digital maps; audio and video apparatus namely, audio and video receivers and processors; handheld personal computers; personal digital assistants

Class 38: Secured or unsecured telecommunication services, namely, transmission and delivery of digital data, light, sound, data information and image signals by means of computer, cable, radio and satellite transmissions, all in particular for navigation systems, route planners, and the use of electronic maps; wireless transmission of data, by means of videotext, the internet, gsm and wap; wireless transmission of digital data; electronic transmission of data and documents via computer terminals

Class 39: Providing navigation and information services, namely, information regarding traffic and traffic congestion; provision of information regarding travel; provision of information to travellers regarding fares, time tables and means of public transport; all of the aforesaid services also provided via a communications network or a mobile telephone or a wireless navigation device

Class 42: Consultation in the field of computer software design; providing temporary use of non-downloadable software which provides geographical, map image and trip routing data obtained with the aid of a Global Positioning System (GPS) in order to enable third parties to come to an accurate location or orientation; development and design of navigation systems, route planners, electronic maps and digital dictionaries; computer software and hardware design; development and design of software for use with navigation systems, route planners and the use of electronic maps and digital dictionaries; development and design of telecommunication and data communication services and networks