Saab Appliances Pty Ltd v Saab Automobiles

[2005] ATMO 74

TRADE MARKS ACT 1995

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

Re:Opposition by Saab Automobile AB to registration of trade mark application 826676(11) - SAAB APPLIANCES - filed in the name of Saab Appliances Pty Ltd.

Delegate:

Jock McDonagh

Representation:

Opponent: Lance Scott of Spruson & Ferguson, Attorneys

Applicant: Carmen Champion, of counsel, instructed by Hodgkinson McInnes Pappas, Attorneys

Decision:

Section 52 opposition – ground under section 59 not established, ground under section 60 established – registration refused.  Costs awarded against the applicant.

Background

1. The applicant, Saab Appliances Pty Ltd, applied to register the following trade mark:

Application Number:	826676
Trade Mark:
Goods:	Class  11:  Christmas lights, electric fans, electric kettles, electric toasters
Priority date:	8 March 2000
Advertised:	11 April 2002

1. The opponent, Saab Automobile AB, filed notice of opposition to the trade mark's registration on 11 October 2002.  That notice listed effectively all of the available grounds of opposition provided in the Trade Marks Act 1995 ("the Act").

2. The evidence in support was duly served and filed, as was evidence in answer, evidence in reply and applicant’s further evidence, pursuant to the Act and Regulations.

3. The matter came to a hearing before me, as a delegate of the Registrar of Trade Marks, in Sydney on 22 July 2005. Mr Lance Scott of Spruson & Ferguson, Attorneys, represented the opponent. Ms Carmen Champion of counsel, instructed by Hodgkinson McInnes Pappas, Attorneys, represented the applicant.

Evidence

1. Details of the evidence is shown in the following table:

Declarant	Date declared	Exhibits	Known As
Evidence in Support
Antonio Sama	29.01.2003	AS-1 to AS-7	First Sama
Evidence in Answer
Joseph Belluccini	30.10.2003	A to H	First Belluccini
Evidence in Reply
Antonio Sama	2.09.2004	AS-1 to AS-4	Second Sama
Lance Scott	3.09.2004	LS-1	Scott
Applicant’s  Further	Evidence
Joseph Belluccini	14.02.2005	JB-1	Second Belluccini

1. The first Sama declaration is made by the finance director and company secretary of the Australian subsidiary of the opponent.  It provides a background to the opponent's activities in Australia since 1970, particularly in connection with the importation and distribution of motor vehicles, marine engines, coaches, and aerospace and aircraft technology.

2. The first Sama declaration also provides details of the opponent's sales figures from 1996 to 2001, advertising expenditure figures for the same period, and other details of promotional activities by the opponent in Australia.

3. The first Belluccini declaration is made by the managing director of the applicant.  He states that the name of the company was derived from letters taken from the name of each of the directors, namely Sam Aaron and Belluccini.  Further, Saab is said to be a commonly occurring Lebanese surname, which was considered to be desirable for the purposes of the trading activities of the company.  Various material was annexed to demonstrate the use of Saab as a Lebanese surname.

4. The first Belluccini declaration also seeks to explain why the applicant has not used the applied for mark to date.  It was said that, prior to its obtaining professional advice, the applicant was unaware that it could use its mark prior to final registration in Australia.

5. The second Sama declaration took issue with some aspects of the first Belluccini declaration.  It also further explained matters going to the reputation of the opponent, with particular emphasis on brand positioning and brand extension.  It also discussed in detail the concept of an industry grouping of cars known as Premium 5 (“P5”).

6. The second Belluccini declaration was more by way of submissions, and sought to highlight the different markets targeted by the respective parties.

7. At the hearing, the opponent’s representative sought to file further evidence in the proceedings. This was opposed by counsel for the applicant.  I did not allow the opponent to adduce the further evidence.

8. For further evidence to be allowed into such a late stage of opposition proceedings, it should firstly be shown that the evidence could not have been obtained earlier in proceedings with reasonable diligence.  Secondly, it should be shown that the evidence is likely to have an important effect on the outcome of proceedings. Thirdly, as the delegate of the Registrar, I should be satisfied the evidence is credible.

9. I was not satisfied that the first two criteria were satisfied. There was no proper explanation why the proposed evidence could not have been identified before the day of the hearing.  In my opinion, the evidence did not provide anything relevant that had not been provided in previous declarations by Mr Sama.

Grounds of Opposition

1. At the hearing, Mr Scott made perfunctory submissions in respect of the section 59 ground, in that it was submitted that the applicant did not intend to use the trade mark in Australia.  He noted that the only actual trade mark use in respect of the applicant’s goods was use of the word trade mark belle, and that saab was only used in the applicant’s business name.

2. However, I am satisfied with the explanation given in the first Belluccini declaration, that the applicant was unaware that it could use its applied for mark prior to registration.

3. To satisfy section 60, the opponent has the burden of establishing the following elements:

¨    a pre-existing trade mark;

¨    substantial identity or deceptive similarity between the applied-for trade mark and the pre-existing trade mark;

¨    the acquisition of a reputation in Australia by the pre-existing trade mark; and

¨    a likelihood that, because of that reputation, use of the applied-for trade mark would be likely to deceive or cause confusion.

1. The applicable principles remain as set out in Southern Cross Refrigerating Co. v Toowoomba Foundry Pty Limited (1954) 91 CLR 592 per Kitto J at 594-5, save that the opponent bears the onus:

(a)it is not necessary in order to find that a trade mark offends against the section to prove that there is an actual probability of deception leading to a passing off.  While a mere possibility of confusion is not enough - for there must be a real, tangible danger of its occurring... it is sufficient if the result of the user of the mark will be that a number of persons will be caused to wonder whether it might not be the case that the two products come from the same source.  It is enough that the ordinary person entertains a reasonable doubt;

(b)in considering the probability of deception, all the surrounding circumstances have to be taken into consideration;

(c)the rights of the parties are to be determined as at the date of the application;

(d)the test is what the Applicant can do if it obtains registration.

1. The mark or marks relied upon need not be used in relation to similar goods or services (c.f. section 44): Greenpeace Australia Pacific Limited v Taylor [2004] ATMO 7 at [18]; (2004) AIPC 91-971; Hugo Boss AG v Jackson International Trading Company (1999) 47 IPR 423 at 435.

2. I am satisfied that the opponent’s pre-existing saab word trade mark was being used in Australia before the priority date.   

3. In considering whether marks are ‘substantially identical’ they are to be:

‘compared side by side, their similarities and differences noted and the importance of these assessed having regard to the essential features of the registered mark and the total impression of resemblance or dissimilarity that emerges from that comparison’

Shell Company (Aust) Limited v ESSO Standard Oil (Aust) Limited (1961) 109 CLR 407 at 414-415.

1. Applying this test I find that the applicant’s trade mark is not substantially identical to any of the opponent’s pre-existing saab marks.

2. The tests for deceptive similarity lie in the words of Windeyer J in Shell Company of Australia Ltd v ESSO Standard Oil (Australia) Ltd, supra:

   The marks are not now to be looked at side by side. The issue is not abstract similarity, but deceptive similarity.  Therefore the comparison is the familiar one of trade mark law.  It 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 impressions that such persons would get from the defendant’s television exhibitions.  To quote Lord Radcliffe again (de Cordova v Vick Chemical Co (1951) 68 RPC 103; at 106):

   The likelihood of confusion or deception in such cases is not disproved by placing the two marks side by side and demonstrating how small is the chance of error in any customer who places his order for goods with both the marks clearly before him…It is more useful to observe that in most persons the eye is not an accurate recorder of visual detail, and that marks are remembered rather by general impressions or by some significant detail than by any photographic recollection of the whole.

   And in Australian Woollen Mills Ltd v FS Walton & Co Ltd (1937) 58 CLR 641 at 658; Dixon and McTiernan JJ said:

   In deciding this question, the marks ought not, of course, to be compared side by side.  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 impression or recollection which is carried away and retained is necessarily the basis of any mistaken belief that the challenged mark or device is the same.

1. An attempt must be made to estimate the effect or impression produced by each mark in the mind of potential customers.  The application of the criteria requires a practical assessment of the impression of the marks and the circumstances surrounding the way in which the applied-for mark can be used in respect of the goods for which registration is sought in comparison to the opponent’s pre-existing marks.  In so undertaking this task it is important to identify the essential features of the opponent’s marks and the impression recollected and determine whether that/those essential features are to be found in the mark and what role they play in the mark.

2. The essential feature of the pre-existing mark, in a section 60 comparison, is an important element of the impression gained from imperfect recollection. “The identification of an essential feature depends partly on the Court’s own judgment and partly on the burden of the evidence that is placed before it”: de Cordova v Vick Chemicals Co. supra at 106.

3. The weight to be afforded elements common to both marks is largely dependent upon how dominant the common elements are in each mark, the nature of that common element - whether it is distinctive or descriptive - and the nature of the elements of each mark that are not held in common - whether they are distinctive or descriptive.

4. It has been held by the High Court that where the common element in two marks is descriptive there is a heavy onus in establishing a likelihood of deception and that such common words must to some extent be discounted in considering whether the marks are deceptively similar:  Cooper Engineering Pty Limited v Sigmund Pumps Limited (1952) 86 CLR 536 (‘Rain King’ and ‘Rainmaster’). Where the other components of a mark are directly descriptive of the relevant goods/services or are ordinary English words, used in their ordinary way, those components to some extent will be discounted in the Registrar’s analysis of the likely recollection of the mark. Those non distinctive components will leave less of an impression in the mind’s eye.

5. The words ‘likely to deceive or cause confusion’ in section 10 place no limitation on the nature of the confusion or deception envisaged, whether it be visual or phonetic confusion of the marks themselves or confusion or deception as to the trade provenance of the goods (or services):  see John Fitton & Co Ltd’s Application (1949) 66 RPC 110 at 113.9.

6. The common feature to the applied for mark and each of the opponent’s pre-existing word marks  is the word ‘Saab’.

7. In the applied-for mark the word component ‘Saab’ is the central feature of the mark. In my opinion, it is the feature that is most likely to be remembered.  The other two components comprise a word descriptive of the goods sought to be registered in respect of the mark (“Appliances”) and a device element suggesting that the mark is Australian.  These secondary components, by reason of their element of descriptiveness, will be afforded little differentiating weight on imperfect recollection when comparing the applied-for marks with the opponent’s saab trade marks.

8. The next question in respect of the section 60 ground, is whether the opponent has shown a sufficient reputation in its trade mark to satisfy the requirements of subsection 60(b), such that the reputation is wide enough that deception and confusion is likely. The reputation must be shown to have existed at the priority date.

9. It is not necessary to prove reputation by direct evidence of consumer appreciation; it is commonplace to infer reputation from a high volume of sales, together with substantial advertising and other promotions: McCormick & Co Inc v McCormick, (2001) 51 IPR 102 at 129.

10. I am satisfied that the opponent has a well established reputation in Australia, acquired by virtue of the duration and extent of use in Australia, as well as in other jurisdictions, of its various saab trade marks, the volume of sales, extensive promotions and the high regard that has accrued to it through its quality motor vehicles. I find that this reputation was established before the priority date of the subject application. It remains for me to determine if, because of this reputation, use by the applicant of its trade mark would be likely to deceive or cause confusion.

11. To establish the ground of opposition under section 60 it is enough if there is a real, tangible danger of confusion amongst a number of persons. This degree of confusion may be less than that required to contravene s52 of the Trade Practices Act 1974.

12. In its submissions, the applicant conceded that the opponent had a substantial reputation in its saab trade marks in respect of motor vehicles sold at the higher end of the price bracket for such vehicles.  It was not conceded that any of the saab trade marks had become famous in Australia.

13. Counsel for the applicant denied that ‘brand extension’ would be applicable in this case.   She submitted that there should be a natural association between the goods, such that consumers could infer a relationship between trade marks, as being part of an extended product range, citing Chubpak Australia Pty Ltd v Aristopet (1999) ATMO 71.

14. However, both parties referred to Automobiles Peugeot v Viva Time Corp [2001] ATMO 52 (25 June 2001). I note that in that case, Hearing Officer Ian Thompson said:

    Although this is not in evidence, I am aware that many people, and many automobile manufacturers, view the purchase of an automobile as a life style choice – this is particularly true at the ‘prestige’ end of the market.  Vehicle manufacturers market goods, some of them completely unconnected with vehicles, which are seen as embodying the image projected by the trade mark and reflecting the lifestyle image projected by the vehicles.

1. In the Peugeot case, the section 60 ground succeeded because Mr Thompson went on to find there was evidence that showed that automobile manufacturers are known to exploit the established reputation and prestige of their trade marks by making or licensing others to use their trade marks on such goods as watches, which were the goods of interest in that case. Because of Peugeot's reputation and the fact that the Peugeot was in fact using its trade mark on watches, there was a real likelihood of deception and confusion.

2. So far as I am aware no automobile manufacturer has extended its range of merchandise to Christmas lights, electric fans, electric kettles, or electric toasters and on the face of it, it seems an unlikely brand extension. However, I must balance this against the evidence of the broad range of goods already marketed by the opponent (including such items as vacuum flasks, travel cups, carafes, glassware, and watches) and consider whether the opponent's reputation is such that consumers are likely to be deceived or confused if the applicant uses its trade mark in respect of Christmas lights, electric fans, electric kettles, or electric toasters, goods quite different from the usual range of merchandise used to promote motor vehicles.

3. The applicant’s evidence showing the various electrical appliances currently bearing the belle brand, includes stainless steel models that are of a style not unlike the vacuum flasks and travel cups exhibited by the opponent.  Such electrical appliances bearing the applied-for trade mark are likely to be considered to be ‘life-style products’ and part of the opponent’s extended promotion of its brand.

4. I am satisfied that because of the opponent’s reputation, there is a real and tangible danger that a substantial number of persons would be confused or deceived by finding the applicant’s mark used on the relevant goods.  I find that the opponent has established this ground of opposition.

5. No other grounds of opposition were supported by evidence or submissions. I formally dismiss them.

Conclusion and Decision

1. The opponent has established a ground of opposition on which it relied so that the opposition as a whole has been successful.  Pursuant to section 55, I refuse to register application 826676.

Costs

1. The opponent has sought its costs in this matter. As the opponent has been successful in its opposition, I award costs against the applicant and direct that the applicant pay the costs of the opponent in accordance with the official scale.

Jock McDonagh

Hearing Officer

Trade Marks Hearings

30 November 2005