Sheppard Industries Ltd v Gemini Bicycle Centres Pty Ltd - [2008] ATMO 42

TRADE MARKS ACT 1995

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

Re:Opposition by Sheppard Industries Ltd to registration of trade mark applications 1065796, 1066360 and 1066364(12) - VIVENTE - filed in the name of Gemini Bicycle Centres Pty Ltd.

Delegate:

Terry Williams

Representation:

Opponent

Applicant

Decision:

ATMO 2008 42

S 52 opposition: s 44 and 60 not established – registration proceeding

Background

Gemini Bicycle Centres Pty Ltd has applied to register the following trade marks
VIVENTE
All three applications seek registration in respect of bicycles. The applications have been examined at the Trade Marks Office and advertised as having been accepted for possible registration.
Registration, however, is opposed by Sheppard Industries Ltd (“the opponent”). The opponent is the owner of trade mark registration 553364, AVANTI, in respect of cycles and parts and accessories therefor and with a priority dating back to 1991. The trade mark is registered in plain script. As used, the trade mark is typically rendered as follows:

The parties have followed the process set out in the regulations for the serving and filing of evidence to support their respective positions. Ultimately, under section 55 of the Trade Marks Act 1995 (“the Act”), the Registrar of Trade Marks is required to decide whether to register the application. I heard the parties, and what follows is my decision, made under delegation from the registrar.
At the hearing, the applicant was represented by Julia Baird and Michelle Daniels of counsel and representatives from the instructing solicitor firm, Swaab Attorneys. The opponent, a New Zealand company, was represented by Brian Thompson and Matthew Hayes of A.J. Park, intellectual property lawyers.

Grounds Considered

The opponent, in its notice of opposition, nominated a wide variety of grounds. However, at hearing it relied only on the grounds falling under sections 44 and 60 of the Act. Those provisions involve conflict between an applicant’s mark and either an earlier application/registration (the ground in terms of s 44) or an earlier reputation in a registered or unregistered trade mark (s 60).
While Sections 44 and 60 are not at all similar in their structures, they share a common element, the issue of conflicting trade marks that are either substantially identical or deceptively similar[1]. For reasons which I will set out below, the opponent’s case fails at that threshold.
[1] It is common ground that for the purpose of this decision the original, unamended, form of s 60 is relevant, as per Apple Computer Inc v Todaytech Group Ltd (2007 ATMO 40)
Both advocates relied on essentially similar authorities to defend their positions. Ms Baird argued that, under the current legislation, it is for the opponent to establish its ground on the balance of probabilities, following Pfizer Products Inc v Karam, [2006] FCA 1517, consistent also with Clinique Laboratories Inc v Luxury Skin Care Brands Pty Ltd [2003] FCA 1517. Mr Hayes put it thusly: “the onus is upon the opponent to show that there is a reasonable likelihood of deception or confusion.
At the hearing, Mr Hayes argued that the applicant’s trade marks were substantially identical to that of the applicant. It is common ground that the test for substantial identity remains as per Shell Company (Aust) Limited v Esso Standard Oil (Aust) Limited (1961) 109 CLR 407 at 414-415. 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.
A practical analysis of what this might mean, in my own view, is as per Gummow J in Carnival Cruise Lines Inc v Sitmar Cruises Ltd [1994] FCA 936. He said:
It requires a total impression of similarity to emerge from a comparison between the two marks. In a real sense a claim to proprietorship of the one extends to the other.
I will come, shortly, to a detailed comparison of the similarities and differences of the competing trade marks in relation to the issue of deceptive similarity but, in terms as set out above, I cannot consider that they are substantially identical.
Turning to the issue of the competing trade marks being deceptively similar, that term is itself defined by s 10:
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.
Mr Hayes noted the proper reformulation of the issues put forward by French J in Registrar of Trade Marks v Woolworths (1999) 45 IPR 411 at 428. Pertinently, the matter comes down to:
… assessment of the effect of the challenged mark upon the minds of potential customers. Impression or recollection taken away from the point at which the challenged mark is observed will be the basis of any belief about a connection between the new and the old marks. The effect of spoken description must be considered. What confusion or deception may be expected is to be based upon the behaviour of ordinary people. As potential buyers of goods they are not to be credited with high perception or habitual caution. Exceptional carelessness or stupidity may be disregarded. The question ultimately is not susceptible of much discussion (Australian Woollen Mills Ltd v FS Walton & Co Ltd (1937) 58 CLR 641 at 659):
It depends on a combination of visual impression and judicial estimation of the effect likely to be produced in the course of the ordinary conduct of affairs.
Mr Hayes noted that both parties use, in rendering their respective trade marks, fonts that put heavy emphasis on the diagonals - of the A, V and N in AVANTI, and of all of the letters in the applicant’s trade marks 1066360 and 1066364. Such actions would also be within the notional fair use of the applicant’s trade mark 1065796.
The applicant’s trade mark is in fact, as the opponent’s evidence shows, applied to the diagonal strut of the bicycles in question. Thus:

Mr Hayes, at the hearing, drew my attention to another issue that might affect the comparison and broaden the enquiry. I note, from the opponent’s evidence in support, that the opponent has used a number of sub-brands or models starting with the letter V “since 2005 in New Zealand and Australia”. These sub-brands are VENTURA, VITALI, VIVACE, VOLTAGE and VUELTA. However, those trade marks are not registered, with or without AVANTI, and so are irrelevant for the purposes of s 44. The brochures that form exhibit JBS-1 to the Struthers declaration in the evidence in support of the opposition are said to illustrate this usage and similarly, at exhibit JBS-6, there is exhibited a one-page document advertising AVANTI VENTURA, AVANTI VUELTA and AVANTI VOLTAGE bicycles. There is no evidence of the extent of such use or even of the extent of distribution of the brochures. The extent of any reputation that might have been derived between some indeterminate date in 2005 and the priority date of the opposed applications in July of that year, a key issue for s 60, is also indeterminate.
The comparison, therefore, is simply between AVANTI and VIVENTE. Given the prominence of the relevant word in applications 1066360 and 1066364, all three applications will stand or fall on that question. I will turn to the relevant parts of the evidence. Some of this is helpful as it addresses issues such as pronunciation, customer attitudes and marketing conditions.
There is evidence from a Mr Stockwell, a bicycle dealer in Brisbane. He was ‘struck by the similarity of the VIVENTE brand to the AVANTI brand, as it appeared on the bicycle’, and declares ‘I can see how it would be easy for purchasers to confuse the two brands’. Mr Stockwell’s remarks, however, must be seen in their context: the bicycle which triggered these comments was brought into his shop for repair and was what he described as appearing to be ‘a cheap “knock-off” copy of an AVANTI bicycle’. As Ms Baird noted at the hearing, there is no evidence that Mr Stockwell himself was even momentarily confused.
Mr Stockwell gives evidence also that there is a marked variation in the level of customer awareness of bicycle brands. I accept this contention; it appears reasonable that bicycle purchasers would range from enthusiasts to casual users, and very likely that brand awareness would vary across that spectrum.
The declarants who give evidence in support of the application set out their own personal opinions about the lack of similarity between the competing trade marks. Mr McFarlane, a director of the applicant, says that he has never encountered any confusion, or any complaint. The trade mark, he says, was adopted through a focus-group process. While he speaks candidly about what the focus group wanted to achieve – oblique references to riders gathering at coffee shops, and to speed and style – there is no detail given about who were the members of the group or what options were put to them. Given that the applicant has at no stage denied knowledge of the AVANTI trade mark when adopting VIVENTE, I find the lack of detail in the reference to the focus group is curious. It gives an appearance of an explanation without actually explaining anything at all.
Mr McFarlane seems to have chosen his words carefully at one point. He declares:
I have never received a complaint about the VIVENTE brand being confusing or similar to another brand, and have never experienced a customer being confused with the VIVENTE brand and another brand. More specifically, I have never received any complaints about the VIVENTE brand being confusing or confused with AVANTI brand from either dealers or ultimate customers.
The need for the latter qualification stems from the opponent’s evidence in support of the opposition. The opponent wrote to the applicant in July 2005, the year in which the applicant decided to use its trade mark, expressing just such concerns.
Mr McFarlane argues that brands are unimportant in relation to other factors, particularly the selection of an appropriate type of bicycle. He says that there are 30 different categories of bicycle and that “there is a history of the same or similar brand and model names being used in the bicycle industry”. He further alleges that it is common for bicycle manufacturers to copy the colours, stylistic aspects and component packages of competitor’s products. This bears echoes of Mr Stockwell’s reference to “knock-off copies”, and I accept it and give it due weight.
As to his assertion about the existence of the same or similar brand and model names, I think Mr McFarlane is somewhat reckless with the truth. His table of “59 cases of similar or matching names of either models or brands and models” is not as he describes it. The table shows that Mr McFarlane draws a distinction between “brand” and “model”. The table actually shows that, for example, both GT and AVANTI (“brand pairs”) produce an AGGRESSOR (“model”). Similarly, FUJI and AVANTI both produce a DISCOVERY. I can find no evidence in his table of any similar or matching elements that he himself describes as brands.
I must also somewhat discount the applicant’s evidence of the differing Italian meanings and phonetic differences of the competing trade marks. The declarant who gives evidence on this matter, Antonia Rubino, is both an Australian resident and an expert in Italian. She establishes that both “vivente” and “avanti” are Italian words, the former meaning “living”, the latter having meanings ranging from the adverb ‘in front’ to whole propositions, for example ‘come in’ or ‘come on’. Her opinions would be more relevant if it were clear that Australian users pronounced the competing trade marks as they would be pronounced in Italian. This is not clear from her declaration.
Ms Baird emphasised that Dr Rubino is an Australian resident, not just a ‘foreign expert’. She also argued that Australians in general should be taken to be not generally unfamiliar with Italian pronunciation. I accept this. Ms Baird noted Ms Rubino’s opinion, set out in her declaration, that knowledgeable Australian residents would pronounce both words correctly, where those less well-informed would see VIVENTE as resembling or perhaps derived from “viva”, a suggestion quite absent from the trade mark AVANTI. However, her declaration appears to be no more than speculation on this question and there are, as Mr Hayes argued, many ways that the applicant’s trade mark may be pronounced.
The remaining evidence does not admit to any clear findings on that specific question. Mr Struthers, on behalf of the opponent, sets out a range of possible pronunciations of AVANTI that he has encountered over the 27 years that he has been a director of the opponent. These variants range from AVARNTEE to AVAUNTAY. Unhelpfully, Mr Struthers does not disclose which, if any, of these might be common. This would obviously be something with which he would be familiar. His failure to give evidence on this aspect is curious.
For the applicant, Mr Lamberton and Ms Quintner, two Queensland bicycle dealers, declare that they pronounce the relevant trade marks as VI-VEN-TAY and A-VAN-TI, as does Mr Robertson, a bicycle dealer in New South Wales. There is a general concession among the applicant’s declarants to the effect that the opponent’s trade mark is a major brand, as Mr Struthers asserts. I think, from this, that AVANTI might well be pronounced relatively consistently, by customers and potential customers in general, as A-VAN-TI, the conclusion to which Dr Robino also comes.
However, there is no clear evidence as to the likely pronunciation, in Australia, by people in general, of VIVENTE. It appears to be unreasonable to exclude, in particular, the pronunciation VI-VEN-TI.
With those things as a background, Mr Hayes drew my attention to the following aural similarities[2]:

The first consonant is a V
- Both trade marks have the same dominant consonant sounds from the letters V, N and T. These, he argued, dominate the vowel sounds from A, E and I.
- Both have three syllables
- The first syllables of both, AV and VIV, sound very similar and emphasize the letter V. Likewise, the second syllables, AN and EN, also sound very similar and emphasize the letter N, and the final syllables TI and TE can have a very similar sound.

Visually, he noted that:

One word is of seven letters, the other six, so that both have a similar bulk
- Except for the letters A and E, both words use identical letters V, I, N and T.

I note the evidence that, while some bicycles may be expensive, many consumers would have their minds more on suitability for intended purpose, or size, than on trade marks. Even so, I am not satisfied that the opponent has established its ground. I appreciate the similarities to which Mr Hayes drew my attention. However, a letter-by-letter analysis is not appropriate. These trade marks will be used as wholes and recollected, imperfectly or otherwise, based on usage as wholes. To my mind, even when I allow for the emphasis that both traders give to diagonal strokes in the competing marks, AVANTI does not look like VIVENTE, either in upper case or in forms such as the parties have adopted. They both give an impression of being Italian words, or perhaps French, but that is the end of the matter. Likewise, there is no persuasive evidence that the trade marks will sound alike, though I admit that Mr Hayes demonstrated that, with a New Zealand accent, the issue has more merit than might otherwise be thought.
Accordingly, the trade marks of the opponent, as used and registered, are not deceptively similar to those the applicant now seeks to register. I remain, in saying this, sensitive to the possibility that the applicant may, if Mr Stockwell is correct in his scathing assessment, be passing off its goods as the opponent’s products. Alternatively, it may be in breach of s 52 of the Trade Practices Act1974 by way of misleading or deceptive conduct. However, the evidence of any such conduct is conspicuously lacking and remedy for any such complaint must lie elsewhere.

Conclusion

In terms of s 55 my decision is that the trade mark applications may proceed to registration one month from the date of this decision. If the Registrar has been served with a copy of a notice of appeal before that time, I direct that registration shall not occur unless the appeal has been withdrawn or registration is otherwise ordered by the court.

I direct that the opponent pay the applicant’s costs to the extent allowable under the regulations.

Terry Williams

Hearing Officer

Trade Marks Hearings

29 May 2008