Re: Trade mark application number 2098342 (class 9) - ASUS Vivobaby (Fancy) in the name of Asustek Computer Incorporation
[2020] ATMO 182
•27 November 2020.
TRADE MARKS ACT 1995
DECISION OF A DELEGATE OF THE REGISTRAR OF TRADE MARKS WITH REASONS
Re:Trade mark application number 2098342 (class 9) – ASUS Vivobaby (Fancy) - in the name of Asustek Computer Incorporation.
Delegate: | M. Cooper |
Representation: | Applicant: Brian Elkington of Adams Pluck |
Decision: | 2020 ATMO 182 Trade Marks Act 1995 (Cth) – s 33 application to be heard - s 44 ground for rejection considered - marks are not substantially identical or deceptively similar – application accepted for possible registration. |
Background
On 24 July 2020, Asustek Computer Incorporation, (‘Applicant’), filed a divisional application to register a trade mark under the Trade Marks Act 1995 (‘the Act’). The details of that application are as follows:
Trade Mark No.: | 2098342 |
Trade Mark: | (‘Trade Mark’) |
Priority Date: | 29 June 2016 |
Goods | Class 9: Smartwatches; wearable activity trackers; connected bracelets (measuring instruments); measuring instruments; precision measuring apparatus; pedometers; thermometers, not for medical purposes. (‘Goods’) |
The application was examined under section 31 of the Act and the examination report dated 30 June 2020 identified a s 44 ground for rejection. The examiner cited and maintained that Australian registered trade mark 1740804 (‘the Cited Mark’) was deceptively similar to the Trade Mark. The Cited Mark is owned by Vivo Mobile Communication Co. Ltd. and appears as follows:
It is registered in respect of the following goods:
Class 9: Telephone apparatus, smartphones and portable telephones, but excluding coin-operated telephones
Endorsements: Provisions of paragraph 44(3)(b) and/or Reg 4.15A(3)(b) applied.
Following receipt of the examination report, the Applicant requested to be heard. I heard the matter on 9 November 2020 as the Registrar’s delegate. Brian Elkington of Adams Pluck appeared for the Applicant.
Submissions
The Applicant filed written submissions before the hearing. In summary the Applicant contends that the Trade Mark and the Cited Mark look and sound different and ‘it is readily apparent from a visual comparison of the marks in question that the Applicant’s mark is not deceptively similar to the cited mark’. The Applicant observes the only aural and visual similarity between the marks is ‘Vivo’ and submitted that the additional words ‘ASUS’ and ‘baby’ add ‘additional distinctive elements.’ It is further contended that it is the first part of a trade mark which is the most important as it is the most easily remembered by consumers. The first part of the Applicant’s mark is the word ‘ASUS’, the Applicant’s house trade mark and is well-recognised amongst Australian consumers in relation to electronic goods.
The Applicant also notes the ‘numerous other accepted applications and registrations containing the word ‘VIVO’ in class 9 on the Register’, many (according to the Applicant) of which pre-date the Cited Mark’s priority date, including the Applicant’s mark 1524026 for which covers ‘Notebook computers; Tablet computers’. It submits that if they can co-exist there is no reason why the Cited Mark and Trade Mark cannot also co-exist. The Applicant further contends that it is obvious that the owner of Cited Mark does not have a monopoly on word ‘Vivo’ for class 9 goods and customers are clearly accustomed to seeing the word in association with various electronic goods.
In relation to the Goods, the Applicant submits that they are not the same or of the same description as those covered by the Trade Mark as they do not cover telephones. Finally, the Applicant relies on the presumption of registrability in s 33 of the Act to contend that the Trade Mark should be registered.
Consideration and reasons
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.
Therefore, subject to subsections (3) and (4), the registration of the Trade Mark must be rejected if it is substantially identical with or deceptively similar to the Cited Mark; is in respect of similar goods or closely related services (s 44(1)(a)(i)); and has a priority date not earlier than that of the Cited Mark (s 44(1)(b)). The rights of the parties are determined at the priority date which, in relation to a divisional application, is the day on which the parent application was filed (s 6 of the Act).
The Cited Mark has an earlier priority date (10 June 2014) than the Trade Mark. In relation to s 44(1)(a)(i), s 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. The High Court in Southern Cross Refrigerating Co v Toowoomba Foundry Pty Ltd, in summarising Romer J in Jellinek's Application[1] said this assessment requires consideration of ‘the nature of the goods, the uses thereof, and the trade channels through which they are bought and sold. No single consideration is conclusive in itself…’[2]
[1] (1946) 63 RPC 59.
[2] Southern Cross v Toowoomba Foundry (1954) 91 CLR 592,606.
As noted above, the Applicant denied that the Goods were similar to those covered by the Cited Mark, submitting that they would be sold by different merchants to different types of customers. On the face of it, this seems correct because the Goods are concerned with tracking, measurement and timekeeping whereas the Cited Mark covers communications equipment, i.e. telephones. I note however that the Macquarie Dictionary defines a ‘smart watch’ as follows:
noun a digital watch with features such as internet access, media access, mobile phone capability, camera, GPS navigation, etc.[3]
[3]Macquarie Dictionary (online at 22 November 2020) ‘smart watch’
The Cited Mark designates ‘smartphone’ which is defined as
noun a mobile phone with access to the internet and the functionality of a personal computer.[4]
[4] Macquarie Dictionary (online at 22 November 2020) ‘smart phone’.
Therefore, there is clear similarity in the nature and uses of smartphones and smartwatches which are frequently produced by same manufacturers (e.g. Apple and Samsung) and sold in the same retail stores. It follows that the Goods are, in this respect, relevantly similar to those of the Cited Mark as required by s 44(1)(a)(i). I therefore proceed to consider whether the Trade Mark is substantially identical or deceptively similar to the Cited Mark.
Substantially identical
As noted above, the examiner’s decision relied only on deceptive similarity of the marks. As I am not reviewing the examiner’s decision but deciding the application afresh, I have considered whether the marks are substantially identical by reference to the table below.
| Trade Mark | Cited Mark |
While the Trade Mark and the Cited Mark share the common element ‘Vivo', the Trade Mark contains other elements and is otherwise dissimilar in all respects. On this basis, I am not satisfied that on a side by side comparison, a total impression of resemblance emerges between the Trade Mark and the Cited Mark such that they might be regarded as being substantially identical.[5]
[5] See Shell Co of Australia Ltd v Esso Standard Oil (Aust) Ltd (‘Shell’) (1963) 109 CLR 407, 415.
Deceptive similarity
Section 10 of the Act defines deceptive similarity as follows:
Section 10 - Definition of deceptively similar
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.
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.[6]
[6] [2020] FCAFC 186 [99].
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.[7] A possibility of confusion is not sufficient; there must be a real tangible danger of confusion.[8] 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 goods] come from the same source.’[9] It is not necessary that the confusion persist up to, or contribute to inducing, a sale.[10] The use to be considered is notional use.[11]
[7] Australian Woollen Mills v F S Walton and Co Ltd (‘Australian Woollen Mills’) (1937) 58 CLR 641, 658.
[8] Ibid.; Registrar of Trade Marks v Woolworths Ltd (‘Woolworths’) (1999) 93 FCR 365; [1999] FCA 1020 [50].
[9] Ibid (‘Woolworths’).
[10] TiVo Inc v Vivo International Corporation Pty Ltd (‘TiVo’) [2012] FCA 252 [105].
[11] Berlei Hestia Industries Ltd v Bali Co Inc (1973) 129 CLR 353, 362.
Notionally, as noted above at paragraph 13, the Applicant will, in part, be selling products bearing the Trade Mark to the same types of Australian consumers and in the same markets as those of the Cited Mark.
In estimating the effect or impression produced on the mind of those potential consumers, the marks must be considered in their entirety. As stated in in Starr Partners P/L v Dev Prem P/L:
The first step in the analysis is to identify the impression produced by the registered mark considered in its entirety. Similarity is not based on only part of the registered mark. On the other hand, when one decides upon the impression produced by that mark it is not improper to give more or less weight to particular features of it, provided the ultimate conclusion is based on a consideration of the mark in its entirety. This approach does no more than recognise that one word or feature of a mark can be more striking and memorable than another…[12]
[12] [2007] FCAFC 42 [22].
As noted above, the Trade Mark and the Cited Mark share a common element ‘Vivo’. This is the only element of the Cited Mark and as such, it is the word that would be recalled by consumers. It is, however, only one of three elements in the Trade Mark, appearing in the middle and, in context, not particularly prominent or memorable. In addition, it is the first element that is generally be given the most weight when comparing marks.[13] As Finn J said in revisiting the tests for deceptive similarity in C A Henschke & Co v Rosemount Estates Pty Ltd:
[13] London Lubricants (1920) Ltd's Appn, (1925) 42 RPC 264.
[P]articular attention ought be paid to the first part of a name for generally the first word or syllable provides the most important means of distinguishing marks... save where the initial word or syllable is both common to the marks and is common to the trade or is commonly used by a number of trade mark proprietors, in which case the emphasis is to fall on other portions of the mark as a means of distinguishing them.[14]
[14] C A Henschke & Co v Rosemount Estates Pty Ltd. [1999] FCA 1561 [35].
The Trade Mark’s first word, ‘ASUS’, is not common to the marks, is not commonly used by a number of trade mark proprietors[15] and, unlike the Cited Mark, is not common to the trade. It should therefore be attributed more weight in comparing the marks.
[15] Except by the Applicant as its house brand.
Conversely, the Cited Mark is both common to the marks and used by other trade mark proprietors. The comments in Harrods Ltd’s Application are relevant in this regard:
Now it is a well-recognised principle, that has to be taken into account in considering the possibility of confusion arising between any two trade marks, that, where those two marks contain a common element which is also contained in a number of other marks in use in the same market, such a common occurrence in the market tends to cause purchasers to pay more attention to the other features of the respective trade marks and to distinguish between them by those other features. This principle, however, requires that the marks comprising the common element shall be in fairly extensive use and, as I have mentioned, in use in the markets in which the marks under consideration are being or will be used.[16]
[16] (1935) 52 RPC 65 [70].
The Applicant identified 14 such currently registered marks (excluding the Trade Mark and the Cited Mark) incorporating the word ‘Vivo’ for either class 9 goods or ‘watches’ in class 14, including its own registration for ‘ASUS VivoBook’. This suggests that the use of ‘Vivo’ is a relatively ‘common occurrence in the market’ and the Cited Mark’s owner does not hold any monopoly on its use in relation to the Goods. It enables an inference to be drawn that consumers are accustomed to differentiating their product choices in this regard. In any event, I accept the Applicant’s submission that, in relation to the purchase of such products, which are not everyday purchases and are generally not inexpensive, consumers exercise a degree of care and scrutiny in their choices. Such scrutiny would mitigate any risk that consumers would be caused to wonder or infer that the Goods came from the same source or had some connection to the Cited Mark.
In addition, in assessing whether the Trade Mark so nearly resembles the Cited Mark as to be deceptively similar, I note the striking visual dissimilarities between them which would diminish any risk of confusion. Specifically, ‘Vivo’ in the Cited Mark has a degree of stylisation that is not reflected in its use in the Trade Mark. The Trade Mark comprises three (or two) words with the word ‘Vivo’ appearing in the middle of the text surrounded by the distinctive word ‘ASUS’ and highlighted text of ‘baby’. Aurally and semantically the Trade Mark and the Cited Mark are significantly different. Conceptually, while ‘Vivo’ has some uses as a word in English’[17] there is nothing in the evidence that suggests any common idea in the marks.
[17] TiVo op cit [169].
On my overall assessment, the marked visual, conceptual and aural dissimilarity between the Trade Mark and the Cited Mark, notwithstanding the appearance of the common word ‘Vivo’, militates against any likelihood of deception or confusion arising in the minds of the relevant consumers.
For these reasons, even allowing for imperfect recollection, I do not consider that the Trade Mark ‘so nearly’ resembles the Cited Mark in any material way such that it would be ‘likely to deceive or cause confusion’ among ‘persons of ordinary intelligence and memory’.
It follows that I am not satisfied that the Trade Mark is substantially identical or deceptively similar to the Cited Mark within the meaning of s 44(1). In the circumstances there is no need to consider s 44 (3) or (4). The section 44 ground for rejection is therefore not established.
In making this decision, I have also had regard the presumption of registrability which is to be applied in favour of the Applicant.[18]
[18] Section 33 of the Act and see Pfizer Products Inc v Karam (2006) 237 ALR 787; 70 IPR 599; [2006] FCA 1663 [8].
Decision
Section 33 of the Act relevantly 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.
For the above reasons I am not satisfied that the ground for rejection under s 44 of the Act is established. Accordingly, I accept the Trade Mark for possible registration.
Mary-Ann Cooper
Hearing Officer
Oppositions and Hearings
Trade Marks and Designs
27 November 2020.
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