Rolex SA v LG Display Co., Ltd

[2020] ATMO 136

TRADE MARKS ACT 1995

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

Re:Opposition by ROLEX SA to extension of protection to international registration designating Australia 1915045 (International Registration No. 1394196– ROLED– held by LG Display Co., Ltd.

Delegate:

Bianca Irgang

Representation:

Opponent: Luke Merrick instructed by Ashurst Australia

Holder: Geoff Davidson of Halfords IP

Decision:

2020 ATMO 136
Opposition under regs 17A.29 and 17A.34: sections 44, 60 and 42(b) pressed– section 60 established for some goods in class 9– those goods in class 9 removed and protection to be extended to the remainder of the IRDA.

Background

1. LG Display Co., Ltd. (‘the holder’) has applied for extension of protection of International Registration Designating Australia (‘IRDA’) 1915045 in class 9 of the International Classification of Goods and Services. Relevant details of the IRDA are set out below.

   Trade mark:   ROLED (the ‘Trade Mark’)

   IRDA:  1915045            

   International Registration:  1394196

   Lodgement Date:                  23 January 2018

   Convention Details:              15 January 2018
     Republic of Korea
     4020180006195

   Specification:  Class 9: Televisions; television monitors; television receivers [TV sets]; television apparatus; digital signage monitors; rollable television; flexible television; electronic display unit; touch panels; electronic display panels; organic light emitting diodes (OLED) panels; flexible display panels; rollable display panels; 3D display panels; transparent display panels; holograms; monitors [computer hardware]; computer; organic light emitting diodes (OLED); portable communications apparatus; telecommunication apparatus for use in cars; wrist mounted telecommunication machines and implements being watches; smartphones

2. The IRDA was advertised as accepted for possible protection in the Australian Official Journal of Trade Marks on 30 August 2018. ROLEX SA (‘the opponent’) filed a Notice of Intention to Oppose the extension of protection on 30 October 2018 followed by a statement of grounds and particulars. These two documents, taken together, constitute a notice of opposition (‘the Notice’)[1]. Thereafter the opponent and holder filed evidence as provided by the Trade Mark Regulations 1995 (‘the Regulations’).

   [1] Trade Marks Regulations 1995 (Cth) reg 17A.32.

3. I heard the matter in Canberra on 4 May 2020 as a delegate of the Registrar of Trade Marks.

   Grounds of Opposition

4. The Notice nominated a number of grounds of opposition under the Trade Marks Act 1995(‘the Act’) and those grounds of opposition under sections 42(b), 44, 58 and 60 were pressed. The onus is upon the opponent to establish one or more of its grounds of opposition. The Full Bench in Telstra Corporation Limited v Phone Directories Company Pty Ltd[2] affirmed the approach in Pfizer Products Inc. v Karam[3] where Gyles J referred to the standard of proof required in these matters in terms of a ‘balance of probabilities’.

   [2] [2015] FCAFC 156, [133]

   [3] [2006] FCA 1663, [26]

   Evidence

5. The evidence in this matter consists of the following declarations:

   Opponent’s Evidence

   ·Catherine O’Rourke (‘O’Rourke 1’) dated 25 April 2019 with

   ·Catherine O’Rourke ‘O’Rourke 2’) dated 26 September 2019

   Holder’s Evidence

   ·Juneung Kim (‘Kim’) dated 29 July 2019

   Discussion

   Section 60 - Reputation in Australia

6. 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.

7. To establish the ground of opposition under section 60 the opponent is relying predominantly on its use of and reputation in the trade mark below:

   ROLEX

   (‘opponent’s trade mark’)

8. The opponent has obtained registration for its plain text word ROLEX registered in class 14 for watches which has a priority date of 16 December 1913. Trade Mark Registration no. 1266335 is for the plain text word ROLEX and registered in classes 14, 35 and 37 and has a priority date of 30 November 2007. Unlike section 44 of the Act, section 60 does not require that the goods upon which the opponent uses its trade mark be of a specified standard of similarity with the goods of interest to the holder, nor is there a requirement that the trade marks be substantially identical or deceptively similar. However, I will firstly address one of the main contentions between the parties that ‘smart watches’ which fall under the class 9 specification of the IRDA are the same or similar goods to ‘watches’ which are specified as falling within class 14. The opponent has only opposed part of the holder’s specification in class 9 being: wrist mounted telecommunication machines and implements being watches.

9. I note the opponent has argued that the smart watches and the watches found in class 14 are the same type of thing being typically worn on the wrist and used for the purpose of telling the time. The holder has argued that ‘smart watches’ are considerably different from traditional timepieces as smart watches are connected to the wearer’s phone and are capable of many more things than a typical timepiece. The holder asserts that smart watches are predominantly used for their much expanded capabilities rather than just telling the time.

10. I note both parties’ arguments, however, I am satisfied that smart watches are similar goods to watches. Smart watches are worn on the wrist like the vast majority of classic timepieces and are accessories that are both fashionable and serve a function for the wearer. This function goes beyond beautification of the wrist. The considerable uptake by Australian consumers who use smart watches for their capabilities as well as being a fashionable timepiece worn on the wrist is a significantly growing marketplace. Not acknowledging the similarities between the classic time piece and the smart watch, which I note also bears the word ‘watch’ in its basic descriptor, fails to take into account the emerging and growing market trends within the Australian marketplace. I am satisfied that watches in class 14 are similar to smart watches in class 9 although I acknowledge this is not necessary for the opponent to be successful in its section 60 ground of opposition.

11. It is now for me to determine whether the opponent has established that before 15 January 2018 the opponent’s trade mark was recognised by the relevant market, or at least by a significant number of persons in Australia and whether because of that, the use by the holder of its IRDA would be likely to cause confusion.

12. The principles relevant to the assessment of the likelihood of confusion, etc, were set out by French J in Registrar of Trade Marks v Woolworths: [4]

    (ii) A trade mark is likely to cause confusion if the result of its use will be that a number of persons are caused to wonder whether it might not be the case that the two products or closely related products and services come from the same source. It is enough if the ordinary person entertains a reasonable doubt.

    It may be interpolated that this is another way of expressing the proposition that the trade mark is likely to cause confusion if there is a real likelihood that some people will wonder or be left in doubt about whether the two sets of products or the products and services in question come from the same source.

    (iii) In considering whether there is a likelihood of deception or confusion all surrounding circumstances have to be taken into consideration. These include the circumstances in which the marks will be used, the circumstances in which the goods or services will be bought and sold and the character of the probable acquirers of the goods and services.

    (iv) The rights of the parties are to be determined as at the date of the application.

    (v) The question of deceptive similarity must be considered in respect of all goods or services coming within the specification in the application and in respect of which registration is desired, not only in respect of those goods or services on which it is proposed to immediately use the mark. The question is not limited to whether a particular use will give rise to deception or confusion. It must be based upon what the applicant can do if registration is obtained.

    In respect of the last proposition, Mason J observed in Berlei Hestia Industries Ltd v The Bali Company Inc:[5]

    “...the question whether there is a likelihood of confusion is to be answered, not by reference to the manner in which the respondent has used its mark in the past, but by reference to the use to which it can properly put the mark. The issue is whether that use would give rise to a real danger of confusion.”

    [4] [1999] FCA 1020 [50]

    [5] [1973] HCA 43; (1973) 129 CLR 353, 362

13. Reputation is to be assessed according to the test set out in McCormick & Company Inc v McCormick[6] by Kenny J:

    What is intended by the word “reputation” in s 60? The word is defined in The Macquarie Dictionary as follows:

    reputation ... 1. the estimation in which a person or thing is held, esp. by the community or the public generally; repute ... 2. favourable repute; good name ... 3. A favourable and publicly recognised name or standing for merit, achievement, etc. ... 4. The estimation or name of being, having done, etc, something specified.

    Cf. The Oxford English Dictionary. In s 60, the word is, I think, apt to refer to “the recognition of the McCormick & Co marks by the public generally”.

    Does the evidence establish that in Australia before 9 March 1992 the McCormick  & Co marks were recognised by the public generally and, because of that, the use by Mary McCormick of her marks would be likely to cause the public confusion, as for example, by the public’s mistakenly attributing a business connection between the two or attributing her product to the company?

    [6] [2000] FCA 1335 [81]

14. The O’Rourke 1 declaration avers that the opponent’s business was founded by Hans Wilsdorf in 1905 in London, under the name “Wilsdorf and Davis” and the opponent (or its predecessor in title) has manufactured and sold watches and timepieces around the world since around that time. In 1919, the business operations of the opponent were transferred to Geneva, Switzerland and in 1920 the opponent adopted the company name Montres Rolex SA.

15. According to O’Rourke 1 the opponent received its first official chronometer certification in 1910 for developing a watch which was suitable to wear on the wrist. In 1914, the Kew Observatory awarded the Opponent a “Class A Certificate” which Ms O’Rourke understands to be the highest distinction awarded by the Kew Observatory for watches. The opponent also invented the OYSTER watchcase in 1926, which was the world first truly waterproof wristwatch. The opponent then invented the self-winding PERPETUAL rotor mechanism which led to the development of many modern automatic watches. In 1945, the opponent created the DATEJUST, which was the world’s first stopwatch featuring an automatic date-change component. In 1956 the opponent further developed this feature to the point where it displaced the day of the week (in full) in 26 different languages.

16. According to O’Rourke 1 the opponent has distributed its products throughout the world through numerous affiliated Rolex companies in Europe, the United States, South America, Asia and Australia. The opponent manufactures, promotes for sale and sells watches which clearly and prominently bear the ROLEX trade mark throughout the world. O’Rourke states that the opponent has conducted business in Australia since about 1981 through its affiliated company, Rolex Australia Pty Ltd. However, I note that O’Rourke 1 points out that since 1922 the opponent has used its ROLEX trade mark on goods and services which include watches, timepieces, chronometers and their components, related retail, repair and maintenance services. In addition to the above goods and services, the opponent has also provided various promotional products to end consumers through dealerships including caps, scarves, wallets, umbrellas, pens, calendars and golf balls which have also featured the ROLEX trade mark[7].

    [7] Exhibit CR-6 accompanying O’Rourke 1

17. The opponent has claimed confidentiality in a number of its exhibits which I will discuss in general terms only so far as is necessary in order to provide reasoning for my decision. Therefore, I turn to the revenue generated through sales of the opponent goods and services under its ROLEX trade marks for a number of years before the priority date of the Trade Mark which is very considerable[8]. The same can be said for the opponent’s substantial amounts invested in advertising and marketing its ROLEX branded goods around the world and in Australia[9].

    [8] Confidential Exhibit CR-7 accompanying O’Rourke 1

    [9] Confidential Exhibit CR-8 accompanying O’Rourke 1

18. Given all of the above, I am satisfied that the opponent’s trade mark had acquired a reputation in Australia for its goods and services before the priority date of the Trade Mark. It now needs to be determined if, given this reputation in Australia, use of the Trade Mark by the holder would be likely to deceive or cause confusion.

19. Overall I consider that, given the reputation acquired by the opponent’s trade mark, a significant number of consumers would at the very least experience a reasonable doubt[10] as to the existence of some sort of connection between the opponent’s trade marks and the Trade Mark if they were used on the wrist mounted telecommunication machines and implements being watches listed in the opposed application. In considering the similarities between opponent’s trade mark and the Trade Mark it becomes clear that the respective trade marks share some striking similarities.

    [10] Southern Cross Refrigerating Co v Toowoomba Foundry Pty Ltd (1954) 91 CLR 592 at 594-5

Opponent’s trade mark	Trade Mark
ROLEX	ROLED

1. Both trade marks are words that are five letters long and contain the same four letters at the beginning of the word. The only difference between the trade marks is the last letter which is a respective “X” verses a “D”.

2. The holder has asserted that the respective trade marks are not likely to deceive or confuse when they are considered as wholes and do not dispute the opponent’s substantial reputation in time pieces. However, the holder does argue that the opponent’s significant reputation in its timepieces as well as the differences between the respective trade marks is likely to preclude any deception of confusing from arising.

3. The holder submitted:

   It is well established that the strong reputation of a trade mark may reduce the chances of deception and confusion relevant to section 60. For example, in McDonald's Corporation v Steve M. Bowditch 20, the Delegate found: 20 [1999] ATMO 104 12

   “An overriding factor in all of these questions, is McDonald's impressive reputation which strongly links to the term Golden Arches, and is manifest in the trade mark. In terms of high profile trade marks the trade mark must be amongst the most successful. It is seen across the country, highly visible beside many busy roadways. It is parodied in cabaret. It is featured in news items reporting on incidents such as McDonald's success in alien economies and cultures, or on continuing operation in a war zone. It is one of the best known trade marks of the day with an exceptionally high level of recognition. In light of that recognition, it seems to me most unlikely that the applicant's GOLDEN BOOMERANGS trade mark would be mistaken for the familiar even when it is coloured gold. Boomerangs are not arches, and are well short of appearing to be the McDonald's golden . I do not think that it likely that people would misread THE GOLDEN BOOMERANGS as GOLDEN ARCHES. Nor do I think it likely that people would mistake THE GOLDEN BOOMERANGS device for the letter . Further, in absence of evidence that McDonald's has ever modified its classic American image to a local Australian (or other) image, I do not think people would wonder whether Mr Bowditch's trade mark indicates a McDonald's restaurant modified to an Australian personification.”

4. The holder has argued that the words are different aurally and I note that ROLEX is an invented word and that ROLED has a meaning. However, whilst differences between two marks may be significant it is the similarities, which are most significant, whether visual, audible, distinctive or conceptual[11].

   [11] Austin, Nichols & Co Inc. v Stichting Lodestar (2005) 11 TLCR 265 at [13].

5. The respective trade marks shared the same four letters at the beginning of the word and visually are very similar. I believe that there are striking similarities between the trade marks which add to the potential for confusion between the trade marks. This is particularly so when the opponent has demonstrated extensive use on time pieces worn on the wrist. 

6. The holder has stated that when it came up with the trade mark it was seeking to incorporate “OLED” and that it is an indirect reference to the desirable OLED (Organic Light Emitting Diode) display of the device to which its Trade Mark would be applied[12]. I am satisfied that this only adds to the potential of confusion between the respective trade marks. This is because the opponent has a demonstrated and long-standing reputation in new developments with devices worn on the wrist and OLED or even LED is a direct reference to a likely characteristic of the screen in the ‘smart watch’.

   [12] Kim declaration

7. The opponent’s extensive reputation in new developments of time pieces over the course of a century is likely to add to confusion experienced by the Australian consumer when faced with a new technological development being the ‘smart watch’ worn on the wrist with an LED screen coupled with the extreme visual similarities in the trade marks ROLEX and ROLED. The holder’s decision to use “OLED” within its trade mark and then add the letter ‘R’ at the beginning out of all 26 letters of the alphabet given that it would have been aware of the opponent’s ROLEX trade mark being used on time-pieces is a discussion not particularly addressed by the applicant.

8. I am satisfied it is highly likely that a significant number of consumers would at the very least experience a reasonable doubt[13] as to the existence of some sort of connection between the ROLEX trade mark and the applicant’s Trade Mark, particularly when these trade marks are applied to similar goods. 

   [13] Southern Cross Refrigerating Co v Toowoomba Foundry Pty Ltd (1954) 91 CLR 592 at 594-5

9. I am satisfied that the opponent has established the section 60 ground of opposition in relation to the goods that it opposed being wrist mounted telecommunication machines and implements being watches. Having found in favour of the opponent in terms of section 60 there is no need for me to discuss the other grounds as set out in the notice, although this ground or any others in the Act may also be relied on in the event of an appeal from this decision.

   Decision

10. Regulation 17A.34 provides:

    17A.34Decision on opposition

    (1)Unless the opposition proceedings are discontinued or dismissed, the Registrar must decide:

    (a)to refuse protection in respect of all of the goods or services listed in the IRDA; or

    (b)to extend protection in respect of some or all of the goods or services listed in the IRDA (with or without conditions or limitations);

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

    (2)The Registrar must tell the International Bureau of his or her decision.

1. I find that the opponent has met the onus upon it, in terms of the ground of opposition under section 60 in regards to those goods being wrist mounted telecommunication machines and implements being watches in class 9. Accordingly, Accordingly, I direct that protection of IRDA 1915045 be extended in respect of those goods in class 9 being:

   Class 9: Televisions; television monitors; television receivers [TV sets]; television apparatus; digital signage monitors; rollable television; flexible television; electronic display unit; touch panels; electronic display panels; organic light emitting diodes (OLED) panels; flexible display panels; rollable display panels; 3D display panels; transparent display panels; holograms; monitors [computer hardware]; computer; organic light emitting diodes (OLED); portable communications apparatus; telecommunication apparatus for use in cars;  smartphones

   Costs

2. 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 under section 221 of the Act in terms of Schedule 8 of the Regulations given that the opponent was successful in establishing a section 60 ground of opposition in regards to the specific goods in class 9 that it opposed.

   Bianca Irgang

   Hearing Officer

   Oppositions and Hearings

   13 August 2020