Re: Trade mark application number 1834021 (9, 12) -intel FALCON in the name of Intel Corporation a Delaware Corporation

[2020] ATMO 4

TRADE MARKS ACT 1995

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

Re:Trade mark application number 1834021 (9, 12) –INTEL FALCON - in the name of Intel Corporation a Delaware Corporation.

Delegate:

Bianca Irgang

Representation:

Applicant: Gilbert Tsang of counsel instructed by Baker McKenzie

Decision:

2020 ATMO 4

Trade Marks Act 1995 – Section 33 – section 44 ground for rejection – Marks are deceptively similar –no evidence provided and no other circumstances made out – application rejected.

Background

1. This matter is an ex parte proceeding involving the application for registration of the following trade mark under the Trade Marks Act 1995 (‘the Act’):

   Trade Mark No: 1834021

   Trade Mark: INTEL FALCON (‘the Trade Mark’)

   Filing Date: 24 March 2017

   Convention Details: 29 September 2016, Jamaica, No. 71022

   Applicant: Intel Corporation a Delaware Corporation

   Specification of Goods:

   Class 9: Data processors; microprocessors; integrated circuits; microcontrollers; microcontroller-based devices; wearable microcontroller-based devices; microcontroller-based devices that connect to the Internet; GPS tracking and navigation devices; Computer software and navigation apparatus all for use with drone and remote-controlled aircraft and vehicles; Computer hardware and software systems for remotely controlling, monitoring, and tracking unmanned aerial, land and sea vehicles; Computer hardware and software systems for controlling, managing, and tracking, intelligent robots; Navigation apparatus for vehicles in the nature of on-board computers, GPS tracking and navigation devices, gyroscope and accelerometers; Remote controls for unmanned aerial vehicle; Remote controls for intelligent robots; Computer software platforms for communications; Computer software and hardware for communicating audio, video and data; Computer software and hardware for use in managing, controlling and tracking drones; downloadable mobile applications for controlling, monitoring, tracking, communicating and collecting data via drones; Cameras; batteries; power supply adapters; chargers
   
   

   Class 12: Drones, unmanned vehicles; remote control aerial, land and sea vehicles; apparatus for locomotion by land, air or water

2. The application was examined under as required by section 31 of the Act and a ground for rejection was raised under section 44. The examiner’s first report provided:

   Conflicting Trade Mark(s): 153534, 213510, 213511, 388995, 838728, 1506111, 1811360 …

   Your trade mark closely resembles the earlier trade marks because they both share the memorable feature FALCON. The additional material in the marks, being INTEL are not sufficient to differentiate the marks or prevent confusion in the marketplace. Consumers are likely to think that the similar goods and services provided under the eight trade marks all come from the same trade source.       

   AND

   ·153534: The goods are similar because the earlier mark has a broad claim for motor vehicles in class 12 which is similar to your range of vehicles and apparatus for locomotion in class 12.

   ·213510: The goods are similar because you have claimed aerial vehicles and apparatus for locomotion by air in class 12 which is similar to the earlier marks claim for Apparatus for locomotion by air, aircraft, and parts therefor in class 12.

   ·213511: The goods are similar because your claims for aerial vehicles and apparatus for locomotion by air in class 12 are similar to the earlier marks claim for Aircraft engines, parts and accessories therefor in class 7.

   ·388995: The goods are similar because you have claimed aerial vehicles and apparatus for locomotion by air in class 12 which is similar to the earlier marks claim for Fixed wing airplanes and structural parts thereof in class 12.

   ·838728: The goods are similar because your class 9 claims for Data processors and microprocessors in class 9 are similar to the earlier marks claim for data processing equipment and computers. The goods and services are closely related because your claims for hardware for communicating audio, video and data in class 9 are closely related to the earlier marks claim for data communications in class 38.

   ·1506111: The goods are similar because your claim for hardware for communicating audio, video and data in class 9 is similar to the earlier marks claim Radios for the communication of voice, data, video and images in class 9.

   ·1811360: The goods are similar because the earlier mark has claimed a range of vehicle parts, fittings and systems in class 12 which are similar to your range of vehicles claimed in class 12. The details of the conflicting registration are as follows:

3. The applicant was then given the option of providing evidence of prior or honest concurrent use or other circumstances to overcome the grounds for rejection. The applicant’s legal representative responded by submitting that the Trade Mark was not deceptively similar to the above trade marks.

4. A total of four adverse examination reports were issued to the applicant in relation to the present application. The only ground of rejection that has been raised and which is now maintained is under section 44(1) of the Act is in respect of three citations all owned by Dassault Aviation. Details of the trade mark registrations are set out below:

Trade Mark No.	Priority Date	Mark	Goods
213510	15 September 1967	FALCON	Class 12: Apparatus for locomotion by air, aircraft, and parts therefor
213511	15 September 1967	FALCON	Class 7: Aircraft engines, parts and accessories therefor
388995	22 March 1983	FALCON	Class 12: Fixed wing airplanes and structural parts thereof, included in this class

1. As part of the fourth adverse trade mark examination report the examiner wrote that unless the applicant was able to produce evidence or other circumstances in support of the application she would initiate the rejection process against the application. As an alternative, the applicant was reminded that it had the right to request a hearing.

2. The applicant requested a hearing on the matter which I heard on 24 October 2019 as a delegate of the Registrar of Trade Marks. Gilbert Tsang of counsel instructed by Baker McKenzie appeared for the applicant.

   The Law

   7. Section 33 of the Act provides:

   33  Application accepted or rejected

   (1)The Registrar must, after the examination, accept the application unless he or she is satisfied that:

   (a)the application has not been made in accordance with this Act; or

   (b)there are grounds under this Act for rejecting it.

   Note:For this Act see section 6.

   (2)The Registrar may accept the application subject to conditions or limitations.

   Note:For limitations see section 6.

   (3)If the Registrar is satisfied that:

   (a)the application has not been made in accordance with this Act; or

   (b)there are grounds under this Act for rejecting it;

   the Registrar must reject the application.

   Note:For this Act see section 6.

   (4)The Registrar may not reject an application without giving the applicant an opportunity of being heard.

   Note:For applicant see section 6.

   Presumption of Registrability

3. Mr Tsang argues that the presumption of registrability which arises under subsection 33(1) of the Act is particularly relevant for this matter. I turn to the authority of Registrar of Trade Marks v Woolworths Limited[1] where French J stated:

   ‘The mandatory language of s 33 and the legislative policy which informs it also suggest that the acceptance state is not the time for the kind of detailed adversarial examination of the application that might emerge from a contested opposition.’

   [1] (1999) 45 IPR 411; (1999) AIPC 91-499 [34].

4. The legislation is expressed in terms which make it clear that there is to be a presumption of registrability when an application for registration is being examined by the Registrar. The effect of the presumption is that if there is any doubt about whether a trade mark should be registered, that doubt should be resolved in favour of the applicant, rather than against it. Therefore, by virtue of subsection 33(1) of the Act, the Registrar must accept an application unless satisfied that there are grounds for rejecting it. The grounds for rejecting a mark are well established and if the Registrar holds, on balance, that one of these grounds constitutes a reason for rejection, the provisions of subsection 33(3) come into operation.

5. Subsection 33(3) of the Act sets down the basis for rejecting an application. The subsection prescribes that if the Registrar is satisfied either that the application is not in accordance with the Act, or that there are grounds for rejection, the application must be rejected. This subsection adopts mandatory language. As a consequence, should I as a delegate of the Registrar decide that a valid section 44(1) ground for rejection exists and the applicant is not able to overcome the objection under the provisions of subsections 44(3) or 44(4), I must then reject the application as directed by subsection 33(3).

   Discussion

6. The applicant requested a hearing in order to argue that the section 44 ground for rejection was not appropriate since the trade marks were not deceptively similar and that the examiner erred in maintaining the section 44 ground for rejection. Further to this, the applicant has requested an amendment to the specified goods which it believes will remove the remaining three citations as grounds for rejection.

7. The amended goods specification for the Trade Mark reads:

   Class 9: Computer software and navigation apparatus all for use with small drones with a payload that does not exceed 50 kilograms and remote-controlled aircraft and vehicles that do not exceed 50 kilograms, excluding fixed-wing aircraft; computer hardware and software systems for remotely controlling, monitoring, and tracking unmanned, land and sea vehicles, small drones that do not exceed 50 kilograms and remote-controlled aircraft and vehicles that do not exceed 50 kilograms, excluding fixed-wing aircraft; Navigation apparatus in the nature of on-board computers for small drones that do not exceed 50 kilograms and remote-controlled aircraft and vehicles that do not exceed 50 kilograms, excluding fixed-wing aircraft; GPS tracking and navigation devices, gyroscope and accelerometers, all for small drones that do not exceed 50 kilograms and remote-controlled aircraft and vehicles that do not exceed 50 kilograms, excluding fixed-wing aircraft; downloadable mobile applications for controlling, monitoring, tracking, communicating and collecting data via small drones that do not exceed 50 kilograms and remote-controlled aircraft and vehicles that do not exceed 50 kilograms, excluding fixed-wing aircraft; all the foregoing excluding radios for communication of voice, data, images or video and further excluding goods for use in radios for communication of voice, data, images or video and further excluding drones and remote controlled aircraft and vehicles for military, homeland security, customs or border control use and further excluding goods for use in or with drones and remote-controlled aircraft and vehicles for military, homeland security, customs or border control use.

   Class 12: Small drones with a payload that does not exceed 50 kilograms, and remote-controlled aircraft and vehicles that do not exceed 50 kilograms excluding fixed-wing aircraft; all the foregoing excluding goods for military, homeland security, customs and border control use.  

8. My considerations in making a decision on this matter are whether or not I am satisfied there is a ground for rejection in regards to the Trade Mark taking into account the amended goods put forward by the applicant. In saying that I turn to section 44 of the Act which relevantly provides:

   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.

   Note 1:       For deceptively similarsee section 10.

   Note 2:       For similar goodssee subsection 14(1).

   Note 3:       For priority datesee 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.

9. The cited trade mark registrations have an earlier priority date than the Trade Mark and cover broad claims for apparatus for locomotion by air, aircraft, fixed-wing aircraft and parts for the aforementioned in class 12 and aircraft engines, parts and accessories in class 7 are the same or at least of the same description as those goods claimed in class 12 by the Trade Mark. This is because an apparatus for locomotion may be defined as:

   Apparatus: noun the technical equipment or machinery needed for a particular activity or purpose.

   Locomotion: noun movement or the ability to move from one place to another

10. Therefore, the cited registration no. 213510 covers a very broad claim for technical equipment or machinery which is capable of movement or the ability to move from one place to another. This claim clearly encompasses the amended goods claimed in class 12 by the applicant being: Small drones with a payload that does not exceed 50 kilograms, and remote-controlled aircraft and vehicles that do not exceed 50 kilograms excluding fixed-wing aircraft; all the foregoing excluding goods for military, homeland security, customs and border control use.

11. In regards to the applicant’s goods claimed in class 9, the question of whether these goods are similar goods to those of the cited trade marks’ claimed goods in class 7 and 12 is much more difficult to answer. The applicant has requested an amendment to those goods to be computer software and navigational apparatus for use with drones and computer hardware and software systems for remotely controlling, monitoring, and tracking unmanned, land and sea vehicles as well as drones. These are goods which are directly related to those goods claimed in class 12 being vehicles for locomotion by the cited trade mark registration No. 213510. In fact, the unmanned and automated drone, land, sea and air vehicles are not capable of functioning without this software and hardware in class 9. Given this close relationship and the integral part it plays in the class 12 goods, I am satisfied that the applicant’s claim in class 9 is similar to those goods claimed in class 12 by the cited trade marks.

12. I am satisfied that the respective goods claims of the Trade Mark and the cited trade mark registrations cover similar goods and that the suggested amendments by the applicant do not overcome the overlap in goods. Therefore, the key issue to be decided by me is whether the applicant’s Trade Mark is substantially identical with or deceptively similar to the cited FALCON trade marks.

Comparison of the trade marks

1. It is obvious that the applicant’s Trade Mark is not substantially identical with the cited FALCON trade mark registration according to the side-by-side test set out by Windeyer J. (at first instance) in The Shell Company (Australia) Limited v Esso Standard Oil (Australia) Limited[2]. The Trade Mark includes the additional word INTEL which provides a clear visual difference from the cited trade marks.

   [2] (1961) 109 CLR 407 [414]

2. Deceptive similarity is defined by section 10 of the Act. The determination of deceptive similarity requires a comparison of the impression persons of ordinary intelligence and memory would have recalling the cited trade marks, to the impression they would get from the Trade Mark.[3] The probability of deception must be finite and non-trivial.[4]

   [3] The Shell Company of Australia Ltd v Esso Standard Oil (Australia) Ltd (1961) 109 CLR 407, Windeyer J [415]

   [4] Registrar of Trade Marks v Woolworths Limited (1999) 45 IPR 411; (1999) AIPC 91-499, French J [43]

3. According to the authorities[5] any consideration of whether trade marks are deceptively similar must take into account that consumers may have an imperfect recollection of a trade mark. As a general principle one needs to estimate the impression consumers are likely to form of each trade mark as a whole. Confusion may result if a trade mark incorporates the distinguishing features of another’s trade mark. The test to determine whether trade marks are ‘deceptively similar’ is set out in The Shell Company (Aust) Limited v Esso Standard Oil (Aust) Limited[6] where Windeyer J stated:

   ‘The marks are not now to be looked at side by side [as for substantial identity]. The issue is not abstract similarity, but deceptive similarity … the comparison … is between, on the one hand, the impression based on recollection of the plaintiff’s mark that persons of ordinary intelligence and memory would have; and, on the other hand, the impression that such persons would get from the defendant’s [trade mark]’

   [5] Clark v Sharp (1898) 15 RPC 141, [146]; Re Application by the Pianotist Co Ltd (1906) 23 RPC 774; Australian Woollen Mills Ltd v F.S. Walton & Co Ltd (1937) 58 CLR 641; Aristoc Ltd v Rysta Ltd (1943) 60 RPC 87; Cordova v Vick Chemical Co (1951) 68 RPC 103; Cooper Engineering Co Pty Ltd v Sigmund Pumps Ltd (1952) 86 CLR 536; Registrar of Trade Marks v Woolworths Ltd (1999) 45 IPR 411

   [6] (1961) 109 CLR 407 [415]

4. His Honour added at 416, that:

   ‘[The] deceptiveness that is contemplated must result from similarity; but the likelihood of deception must be judged not by the degree of similarity alone, but by the effect of that similarity in all the circumstances.’ In addition, the test is not one of mere possibility of confusion but of a real tangible danger that a number of persons will be caused to wonder whether the products come from the same source.’

5. Mr Tsang argued at length that the trade marks in question are not deceptively similar, drawing on a number of the established authorities for the purpose of making the comparison.

6. The thrust of Mr Tsang’s arguments against the respective trade marks being deceptively similar may be summarized as:

   ·The addition of the word INTEL and the importance of giving due weight to these points of dissimilarity given the nature of the goods;

   ·The reputation the applicant has in the word INTEL contained in the Trade Mark;

   ·The respective ‘ideas’ of the trade marks

7. Despite those submissions, whilst I accept that there are differences between the respective trade marks, I am satisfied that they are deceptively similar.

8. The Trade Mark is the words INTEL FALCON in plain words. The cited trade marks are for the word FALCON. The term FALCON is the common element in both of the trade mark representations and is the only word in the cited trade marks.

9. With this observation in mind, I note the applicant’s submission that the structure of the trade mark has no grammatical meaning and that the word INTEL has no dictionary meaning and is therefore distinctive and not to be discounted or minimized when comparing the respective trade marks for the purpose of section 44. I agree that in coming to a decision regarding deceptive similarity it is important that the trade marks are considered in their entirety – ‘it is the whole of the mark as used or intended to be used which is the subject of the comparison with the registered mark.’[7]

   [7] Anheuser-Busch Inc v Budejovicky Budvar (2002) 56 IPR 182, 218 (Allsop J).

1. I do not believe that the INTEL element of the Trade Mark should be disregarded but at the same time I hold the view that consideration must be given as to whether it is likely that deception or confusion could occur through ‘contextual confusion’ whereby the common element in each of the respective trade marks may induce traders and the public to believe that the marks emanate from the same trade source.[8]

   [8] John Fitton & Co. Ltd’s Application (1949) 66 RPC 110, per Assistant-Comptroller Chisholm at 113.

2. The principal of conceptual confusion is summed up in John Fitton & Co. Ltd’s Application[9] where Mr S. E. Chisholm, the Assistant-Comptroller, commented:

   ‘With reference to the nature of the confusion alleged the evidence furnished on behalf of the Opponents by their trade declarants is direction not so much towards showing that the two marks ‘Jests’ and ‘Easyjests’ might themselves be confused either visually or orally, as towards establishing that confusion would result, owing to the presence of the common element ‘Jest’ in each mark, in traders and the public being induced to believe that the two sets of goods sold under the marks emanated from the one and same trade source.’

   [9] 66 RPC 113

3. Therefore, it needs to be determined whether a prospective purchaser, although aware that the respective trade marks are different, may still be caused to wonder whether they are the property of the same entity. To hold such a belief requires that the respective trade marks are seen to have some sort of relationship – that the Trade Mark would be seen as related to the cited trade mark registration because of a commonality that has been produced by a mutual feature.

4. Given the structure of the cited trade mark registrations which are solely the word FALCON, I consider it probable that consumers who know of the cited trade mark registrations upon seeing goods bearing the Trade Mark are likely to believe that the goods come from the same trade source, are related to the goods bearing the cited trade mark registration or a possible collaboration between the respective parties. It is common practice among traders to adopt a trade mark and then modify it in some way when offering new, related products or different product lines. The public is familiar with this practice and knows that, while the trade marks are not identical, they do denote related products offered by the same trader.

5. I am satisfied that the applicant’s Trade Mark is deceptively similar to the cited trade mark registrations. The applicant has not been able to provide any evidence of use before the priority date so the provisions of subsection 44(3)(a) and 44(4) are not applicable. Nor am I satisfied that there are other circumstances which might be said to apply make it proper to accept this trade mark for registration. The applicant has simply not provided sufficient reasons for the present application to be accepted under the provisions of subsection 44(3)(b). Accordingly, I do not find it proper in the circumstances to apply the provisions of subsection 44(3)(b) in this matter.

   Decision

6. Section 33 of the Act relevantly provides:

   33Application accepted or rejected

   (1)The Registrar must, after the examination, accept the application unless he or she is satisfied that:

   (a)the application has not been made in accordance with this Act; or

   (b)there are grounds under this Act for rejecting it.

   Note:For this Act see section 6.

   (2)The Registrar may accept the application subject to conditions or limitations.

   Note:For limitations see section 6.

   (3)If the Registrar is satisfied that:

   (a)the application has not been made in accordance with this Act; or

   (b)there are grounds under this Act for rejecting it;

   the Registrar must reject the application.

   Note:For this Act see section 6.

   (4)The Registrar may not reject an application without giving the applicant an opportunity of being heard.

   Note:For applicant see section 6.

7. I am satisfied that there is ground for rejecting trade mark application no. 1633800 and I hereby reject it.

   Bianca Irgang

   Hearing Officer

   Trade Marks Hearings & Opposition

   13 January 2020