TCL Technology Group Corporation v Musco Corporation
[2023] ATMO 196
•29 November 2023
TRADE MARKS ACT 1995
DECISION OF A DELEGATE OF THE REGISTRAR OF TRADE MARKS WITH REASONSRe:Opposition by TCL Technology Group Corporation to registration of trade mark application 2186036 – TLC for LED – in the name of Musco Corporation
Delegate: Bianca Irgang Representation: Opponent: Dr Kin Leong of Madderns
Applicant: Sonia Stewart of counsel instructed by FB Rice Pty LtdDecision: 2023 ATMO 196
Trade Marks Act 1995 (Cth) - Section 52 opposition – ss 44, 58A and 60 grounds of opposition considered – no grounds of opposition established – trade mark to proceed to registration.Background
Musco Corporation (‘the applicant’), filed trade mark application number 2186036 on 11 June 2021 in classes 11 and 42 of the Nice Agreement Concerning the International Classification of Goods and Services. Current details of the application are set out below.
Trade mark: TLC for LED (the ‘Trade Mark’)
Trade mark application no: 2186036
Priority Date: 11 June 2021
Specification: Class 11: LED luminaires for indoor and outdoor lighting applications; lighting apparatus, namely, lighting installations; lighting fixtures; LED lighting systems, namely, LED modules, power supplies, and wiring
Class 42: Design of large area and sports facility lighting systems for others; consulting services in the field of the design of lighting systems to minimize the effects of glare on spectators and neighbours; lighting design and technology specification services pertaining to permanent or temporary architectural, theatrical, entertainment, commercial and/or residential applications
Acceptance of the application for possible registration was advertised in the Australian Official Journal of Trade Marks dated 12 November 2021. Subsequently, TCL Technology Group Corporation (‘the opponent’) filed a Notice of Intention to Oppose registration followed by a Statement of Grounds and Particulars (‘SGP’).
The applicant then filed its Notice of Intention to Defend. Thereafter, the opponent and the applicant filed evidence in accordance with the provisions of the Trade Marks Regulations 1995 (Cth) (‘the Regulations’).
I heard the opposition by teleconference as a delegate of the Registrar of Trade Marks on 3 November 2023. The opponent was represented by Dr Kin Leong of Madderns. The applicant was represented Sonia Stewart of counsel instructed by FB Rice Pty Ltd.
Grounds of Opposition
The SGP nominated a number of grounds of opposition under the Trade Marks Act 1995 (Cth) (‘the Act’) and sections 44, 58A and 60 were pursued at the hearing. The opponent bears the onus of establishing at least one of the grounds of opposition.[1] The standard of proof is the ordinary civil standard of the balance of probabilities.[2]
[1] Food Channel Network Pty Ltd v Television Food Network GP [2010] FCAFC 58, [32] (Keane CJ, Stone and Jagot JJ).
[2] Pfizer Products Inc v Karam [2006] FCA 1663, [6]-[26] (Gyles J); Telstra Corporation Ltd v Phone Directories Co Pty Ltd [2015] FCAFC 156, [132]-[133] (Besanko, Jagot and Edelman JJ).
Evidence
The evidence filed in this matter consists of the following declarations being:
Opponent’s evidence in support
·Declaration of Fu Chaohui, General Manager of the Legal Department of the Opponent, dated 1 August 2022 with exhibits FC01 to FC07 (“Chaohui 1”)
Applicant’s evidence in answer
·Declaration of James Hansen, Company Secretary of the Applicant, dated 7 November 2022 with annexures A to F; and
·Declaration of Sanjay Prakash, Sales Executive of Musco Lighting Australia Pty Ltd, dated 8 November 2022 with annexures A to D.
Opponent’s evidence in reply
·Declaration of Fu Chaohui, dated 8 January 2023 with exhibits FC08 to FC10
Discussion
Section 44
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.
(2) Subject to subsections (3) and (4), an application for the registration of a trade mark (the applicant’s trade mark) in respect of services (applicant’s services) must be rejected if:
(a) it is substantially identical with, or deceptively similar to:
(i) a trade mark registered by another person in respect of similar services or closely related goods; or
(ii) a trade mark whose registration in respect of similar services or closely related goods 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 services is not earlier than the priority date for the registration of the other trade mark in respect of the similar services or closely related goods.
To establish its opposition in terms of section 44 of the Act the opponent must show all of the following:
·a trade mark (or trade marks), either registered or pending registration, in the name of a person other than the present applicant, and in relation to which the opposed trade mark is either substantially identical or deceptively similar;
·the trade mark(s) in the name of the other person must be in respect of similar goods or closely related services; and
·the priority date(s) of the other person’s trade mark(s) is (are) earlier.
The opponent is the registered owner of six trade mark registrations which it has particularized in its SGP and submissions in support of the section 44 ground of opposition. I will refer to the following registrations as the ‘opponent’s trade marks’ as a collective unless otherwise specifying a particular trade mark. The details of the opponent’s trade marks are as follows:
Trade mark:
Trade mark no: 735264
Priority Date: 12 May 1997
Specification: Class 9: Sound recording tapes; video tapes; transformers; circuit boards; loudspeakers; alarms for mining; intelligent instrument meters; audio equipment; calculating machines and peripheral equipment; electronic data processing installations; copying apparatus and machines; electronic scales; telephone apparatus; television sets and television apparatus; video recorders; cables; wireless telephone installations; facsimile machines; sound recording materials; video recorder materials; signal remote control for electrical installations; dynamo apparatus; power apparatus; wire generic components; electrical switching components; electrical adjustments installations; electronic alarms; instruments for mining; batteries; integrated circuit boards; electronic components; wireless measurement instruments; records
Trade mark:
Trade mark no: 987391
Priority Date: 3 February 2004
Specification: Class 9: Computers; computer peripheral devices; monitors (computer hardware); notebook computers; telephone apparatus; portable telephones; facsimile machines; stored program control telephone exchanges; television apparatus; video compact disc (VCD) players; digital compact disc (DVD) players; computer displays; audio and video system, namely audio and video apparatus, cassette deck, speakers, and parts and fittings thereof, sold as a unit for home use; cameras (photography); electric cables; electric wires; telephone wires; electric converters; electric switches; current rectifiers; electric relays; plugs, sockets and other contacts (electric connections); lighting ballasts; electric voltage stabilizers; low voltage power supplies; alarms; theft prevention installations, electric; batteries
Trade mark:
Trade mark no: 1093385
Priority Date: 18 March 2005
Specification: Class 7: Agricultural machines; typographic machines; electromechanical food preparation machines; electromechanical beverage preparation machines; coffee grinders other than handoperated; electric kitchen machines; dry cleaning machines; electromechanical machines for the chemical industry; mixing machines; elevators (lifts); presses; steam engines; motors for refrigerators; control mechanisms for machines, engines or motors; compressors (machines); pumps (machines); valves (parts of machines); propulsion mechanisms other than for land vehicles; waste disposals; electric shoe polishers; electric food processors; washing machines; dishwashers; vacuum cleaners; hand-held tools, other than hand-operated; generators of electricity
Class 11: : Lamps; lighting apparatus and installations; water heaters; gas burners; griddles (kitchen appliances); electric heaters for feeding bottles; electric coffee percolators; electric coffee machines; microwave ovens (cooking apparatus); cooking apparatus and installations; electric cooking utensils; electric kettles; ice machines and apparatus; electronic refrigerating cabinets for wines; ice cream making machines; exhaust fans; electric fans for personal use; electric hair dryers; extractor hoods for kitchens; electric laundry dryers; air purifying apparatus; air humidifiers; hair dryers; heating apparatus; water taps; water pipes for sanitary installations; ornamental fountains; heaters for baths; devices for drinking water; water purification installations; gas lighters; sockets for electric lights; refrigerators; air conditioning apparatus; sterilizers; pocket warmers; hand drying apparatus for washrooms
Trade mark: TCL
Trade mark no: 2067042
Priority Date: 4 July 2019
Specification: Class 7: Food preparation machines, electromechanical; juice extractors, electric; ironing machines; dishwashers; kitchen machines, electric; blenders, electric, for household purposes; coffee grinders, other than hand-operated; dry-cleaning machines; washing machines [laundry]; wringing machines for laundry; compressed air machines; compressors for refrigerators; door openers, electric; window openers, electric; machines and apparatus for cleaning electric; vacuum cleaners; curtain drawing devices electrically operated; 3D printers; vending machines; motors, electric, for refrigerators; household bean milk maker; electric openers for rolling doors
Class 9: Data processing apparatus; computers; computer peripheral devices; monitors [computer hardware]; tablet computers; computer hardware; USB flash drives; interactive touch screen terminals; humanoid robots with artificial intelligence; electronic interactive whiteboards; wearable computers; network servers; security tokens [encryption devices]; electronic pocket translators; encoded identification bracelets, magnetic; biometric fingerprint scanners; flash memory card adapters; computer software applications, downloadable; electronic agendas; pedometers; facsimile machines; bathroom scales; electronic notice boards; digital signs; telephone apparatus; video telephones; cellular phones; navigational instruments; intercoms; wearable activity trackers; computer network switches; computer network hubs; antennas; transponders; television apparatus; loudspeakers; cabinets for loudspeakers; horns for loudspeakers; megaphones; audio mixers; monitoring apparatus, other than for medical purposes; audio- and video-receivers; sound transmitting apparatus; sound recording apparatus; sound reproduction apparatus; camcorders; portable media players; electronic book readers; headsets; headphones; microphones; virtual reality headsets; security surveillance robots; wearable video display monitors; personal stereos; audio amplifiers; stereo tuners; audio interfaces; equalizers [audio apparatus]; cameras [photography]; video projectors; audiovisual teaching apparatus; surveying apparatus and instruments; inductors [electricity]; thermometers, not for medical purposes; hygrometers; air analysis apparatus; water meters; gas meters; detectors; lasers, not for medical purposes; diagnostic apparatus, not for medical purposes; optical apparatus and instruments; mirrors [optics]; cables, electric; wires, electric; chips [integrated circuits]; lightemitting diodes [LED]; switches, electric; electric plugs; video screens; touch screens; amplifiers; remote control apparatus; electrical adapters; power adapters; temperature sensors; climate control digital thermostats; ultrasonic sensors; heat regulating apparatus; apparatus and installations for the production of X-rays, not for medical purposes; theft prevention installations, electric; electric door bells; locks, electric; alarms; fire alarms; smoke detectors; electronic access control systems for interlocking doors; peepholes [magnifying lenses] for doors; eyeglasses; batteries, electric; chargers for electric batteries; electrostatic copying machines; mobile phones; radios; computer software applications, downloadable; smartwatches (data processing); smartglasses (data processing); computer application software for cellular phones; face recognition device; data cables; rechargeable batteries; electronic pens [visual display units]; network routers; lightemitting diode [LED] televisions; digital signal processors; in-car telephone handset cradles; electronic advertising displays; apparatus for the recording, transmission, amplification and reproduction of sound; infrared detectors; electricity meters; couplers [data processing equipment]; electric sockets; AC/DC power supplies; converters for electric plugs; sensors [measurement apparatus], other than for medical use; electrical control, testing and monitoring apparatus; electronic access control systems for interlocking doors
Class 11: Lamps; cooking utensils, electric; cooking apparatus and installations; grills [cooking appliances]; gas burners; coffee machines, electric; kettles, electric; microwave ovens [cooking apparatus]; bread-making machines; coffee percolators, electric; coffee roasters; refrigerators; freezers; air-conditioning installations; air-conditioning apparatus; air purifying apparatus and machines; drying apparatus and installations; extractor hoods for kitchens; dehumidifiers for household purposes; electric fans for personal use; fabric steamers; heating apparatus; heating installations; heaters for baths; hand drying apparatus for washrooms; toilets [water-closets]; toilet seats; water purifying apparatus and machines; radiators, electric; food steamers, electric; pressure cookers, electric; wine cellars, electric; laundry dryers, electric; humidifiers; electrical driers; electric bath heaters; water dispensers; sterilized cupboard.
Trade mark: TCL
Trade mark no: 2103931
Priority Date: 11 October 2019
Specification: Class 35: Advertising; public relations; business management consultancy; providing business information via a web site; provision of an online marketplace for buyers and sellers of goods and services; marketing; sales promotion for others; procurement services for others [purchasing goods and services for other businesses]; import-export agency services; personnel management consultancy; administrative services for the relocation of businesses; systemization of information into computer databases; book-keeping
Class 37: Heating equipment installation and repair; freezing equipment installation and repair; office machines and equipment installation, maintenance and repair; installation and maintenance of medical devices; installation and maintenance of sanitary apparatus; kitchen equipment installation; installation and maintenance of bathing apparatus; installation and maintenance of illuminating apparatus; electric appliance installation and repair; installation and repair of airconditioning apparatus; installation, maintenance and repair of computer hardware; photographic apparatus repair; installation and maintenance of entertainment or sports apparatus; fire alarm installation and repair; telephone installation and repair; burglar alarm installation and repair.
Class 42: Technological research; industrial design; cloud computing; platform as a service [PaaS]; conversion of data or documents from physical to electronic media; creating and maintaining web sites for others; electronic data storage; development of computer platforms; computer programming; maintenance of computer software; computer software design; software as a service
Trade mark: TCL Micro LED
Trade mark no: 2178344
Priority Date: 12 October 2020
Specification: Class 9: Fluorescent screens; video screens; remote control apparatus; transistors [electronic]; light-emitting diodes [LED]; television apparatus; audio- and video-receivers; portable media players; wearable video display monitors; semi-conductors; optical fibers [light conducting filaments]; mobile telephones; tablet computers; interactive touch screen terminals; electronic interactive whiteboards
The opponent’s trade marks have earlier priority dates to the Trade Mark.
Turning to the respective trade marks, the issue for me to determine now is whether the Trade Mark is either substantially identical or deceptively similar to any of the opponent’s trade marks. The respective trade marks for comparison are:
Opponent’s Trade Marks
Trade Mark
TCL
TCL Micro LED
TLC for LED
The opponent has not argued that the respective trade marks are substantially identical and I agree. It is obvious that the trade marks are not substantially identical according to the side-by-side test set out by Windeyer J in Shell Co (Aust) Ltd v Esso Standard Oil (Aust) Ltd[3]. While the respective trade marks contain a combination of the same three letters this is where the similarities between them end. There are additional words within the Trade Mark and different graphic and word elements within some of the opponent’s trade marks which preclude a total impression of similarity.
[3] (1963) 109 CLR 407, 414.
I now consider whether the Trade Mark is deceptively similar to any of the opponent’s trade marks. Deceptive similarity is defined by section 10 of the Act, which states ‘[f]or 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. The determination of deceptive similarity requires a comparison of the impression persons of ordinary intelligence and memory would have, in recalling each of the opponent’s trade marks, to the impression they would get from the Trade Mark.[4] The probability of deception must be finite and non-trivial.[5]
[4] The Shell Company of Australia Ltd v Esso Standard Oil (Australia) Ltd (1961) 109 CLR 407, 415 (Windeyer J).
[5] Registrar of Trade Marks v Woolworths Limited [1999] FCA 1020, [43] (French J).
The opponent’s trade marks consist of the acronym TCL sometimes accompanied by additional words ‘Micro LED’ or a graphic device. The Trade Mark is for an acronym followed by words being, as a whole, ‘TLC for LED’. Looking at the Trade Mark it is clear that a prominent and memorable part is the acronym TLC which is at the beginning of the Trade Mark and provides an understandable meaning and cognitive cue beyond being a combination of three letters and an acronym. As the applicant has pointed out, ‘Tender Love and Care’ OR ‘Tender Loving Care’ is the commonly understood and used meanings often attributed to the acronym TLC.
The opponent has argued:
Comparing the two words TCL and TLC, it is noted that the first of the distinctive features they have in common is their first letter, T.
The second feature the words have in common is that they both comprise only three letters, and that the remaining two letters L and C are common to both words, only being differentiated by their position.
Three-letter words often have suffered from mistyping errors. These errors are caused by pressing the wrong key or pressing keys in the wrong order. As established, TCL and TLC are three-letter words with the same letter combination and the same first letter. It will be appreciated that they are even more readily mistyped, especially if typed quickly, where attempts to write TCL will result in TLC being typed and vice versa. It will be appreciated that there are a variety of implications for this, including consumers inadvertently performing internet searches for the wrong name; and articles, emails or messages containing references to the wrong name.
Due to the scope of monopoly sought by the Opposed Trade Mark, it will be appreciated that purchasers of the goods and/or services claimed will include purchasers of consumer electronics, that is, electronic equipment intended for every day use.
When considering purchasers of products and services such as those claimed in the Opposed Trade Mark, those consumers with minimal brand awareness are likely to have a somewhat blurry or imperfect recollection of the mark TCL. They are likely to recall the three letters used, and the leading letter T, but it is quite possible that they will not remember the order of the remaining two letters. On seeing the mark TLC FOR LED, consumers may well be oblivious to the difference between the two names and believe that TLC FOR LED is related to TCL.
The applicant has counter argued:
The Opponent attempts to create a false impression of deceptive similarity by effectively “deleting” the words “FOR LED” from the Opposed Mark and then asserting that the relevant comparison is simply between the “words” “TCL” and “TLC”.
In Australian Ezy Tax Systems Pty Ltd v Ezy Tax Solutions Pty Ltd [2016] ATMO 62 at [22], it was noted that (emphasis added):
“A descriptive element within a trade mark may be to some extent discounted in a comparison (or to paraphrase Hornsby, a certain risk of confusion due to the presence of that element may be accepted), but those descriptive elements cannot be entirely ignored in the overall comparison.
Rather, the correct approach is that the marks must be compared as wholes, rather than broken into their constituent parts: In Food Channel the Full Federal Court unanimously (Keane CJ, Stone and Jagot JJ) said at [92] (emphases added):
“In our respectful opinion, the judge erred in principle in two respects. First, her Honour expressly declined to consider the comparison of the marks as a whole. Secondly, her Honour failed to appreciate that the necessary comparison was of marks used in different trades and that the evidence of Mr Allen was directed to the “Australian Television industry and the media generally” rather than the general public who may not be acculturated to equate the terms “Channel” and “Network”.
Further, even if the Opponent was correct in its arguments for deceptive similarity based only upon a comparison between “TCL” and “TLC” (which the Applicant rejects), those acronyms are not visually and aurally deceptively similar. This is for at least the reasons set out below.
Fundamentally, contrary to the Opponent’s assertions at Chaohui #1 [17], [18] and repeated throughout the OS47 (see especially OS [18] – [20]), “TCL” and “TCL” are not words, rather, they are acronyms (or more properly, initialisms). Accordingly, the “TCL” and “TLC” initials would each be pronounced as a string of letter names with the second and third letters of each acronym differentiating each initialism (with T-C and T-L, and then C-L and L-C, being phonetically and visually dissimilar).
The Opponent’s claim at Chaohui #1 [18] that “The words are easily mis-typed and easily misspoken” is factually incorrect. The movement of the teeth and tongue in pronouncing “T-L” is quite different to pronouncing “T-C. Similarly, pronouncing “L-C” is quite different to pronouncing “C-L”.
Neither are the keys “C” or “L” located near one another on a keyboard; one would not mistakenly type “C” when they meant to type “L” or vice versa. There is no evidence to support a finding that a person typing would make such an error with a keyboard, let alone with another device such as a smart phone. The claim at OS [20] that “Three-letter words have often suffered from mistyping errors” and the related exposition about poor typing skills is not only unsupported by any evidence, but to the extent that it might be an accurate description of human behaviour it would be evidence of carelessness, not of deception or confusion, which is what s 44 requires.
The applicant makes some valid points. It is the whole of the trade mark which must be considered. While the Trade Mark and all the opponent’s trade marks contain a three letter acronym which contains the same three letters in different positions, I am guided by the reasoning in Australian Meat Group Pty Ltd v JBS Australia Pty Limited [6]:
[80] This then leaves the AMG word mark compared to the AMH word mark. This is the high point of the respondent’s case on trade mark infringement.
[81] In comparing these marks, it is important to bear in mind the scope of the monopoly afforded by registration of an acronym. The world of commerce is conditioned to the use of acronyms… Once again, the context of use is important. The pool of acronyms and initialisms is more limited than the reservoir of words from which they are sourced.
[83] Another issue that can arise is whether the mark applied for is substantially identical with, or deceptively similar to, an acronym that is a prior registered mark or a mark whose registration has been sought with an earlier priority date than the mark in question: see s 44 of the Act. When this question arises, the Registrar proceeds on the basis that the Australian public is quite used to acronyms in the market place and is used to relying on small differences to distinguish between them. For this reason, closer similarities than normal are expected and tolerated for acronyms, in the absence of demonstrated bad faith[7].
[88] In our respectful view, the primary judge placed too much significance on the “AM” component of the AMH word mark and the AMG word mark when concluding that they were deceptively similar marks, particularly in discounting the significance to be attached to the distinguishing last letters “H” and “G” respectively. Further, each mark must be compared as a whole. When this is done, there is an undeniable difference between the AMH word mark and the AMG word mark both visually and when described verbally as initialisms. When these considerations are coupled with an appreciation that the trade in question is characterised by the discernment and the inquiring minds of the traders concerned, and that the purchases in question are of some significance in terms of volume and value, we are not persuaded that, in use, the AMG word mark is deceptively similar to the AMH word mark. The primary judge erred in reaching the opposite conclusion. This error was the product of his Honour’s reliance on the strong reputation he found in the AMH acronym.”
[6] 2018] FCAFC 207 (Allsop CJ, Besanko and Yates JJ)
[7] Professional Golfers’ Association of Australia Ltd v Ladies Professional Golf Association (2004) 61 IPR 206 at [17]; CMA CGM v CMA Corporation Ltd [2011] ATMO 95 IPR 593 at [25]–[30].
While there are some similarities between the respective trade marks, I am not satisfied that any of the opponent’s trade marks are deceptively similar to the Trade Mark. The difference in appearance, aural pronunciation and likelihood of remembering differing ideas is considerable. The single letter difference between the respective trade marks in the acronym along with additional differing words being “MICRO LED” and “FOR LED” is striking and is sufficient to differentiate the trade marks from each other. I am not satisfied that the Trade Mark is deceptively similar to any of the opponent’s trade marks.
As so much of s 44 is satisfied, it has not been necessary for me to look more closely at the exact correspondence of the parties’ goods and services since the section 44 requirement that the compared marks be either substantially identical or deceptively similar is dispositive of the matter. As such, the opponent has not established the section 44 ground of opposition.
Section 58A
The opponent has particularised section 58A as a ground of opposition. Section 58A of the Act is enlivened should the Trade Mark have been accepted under the provisions of subsection 44(4). The Trade Mark was not accepted under the provisions of subsection 44(4), nor do I propose to apply that provision now, so the opponent is also unable to establish this ground of opposition.
Section 60
Section 60 of the Act relevantly 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.
To establish the ground of opposition under section 60 the opponent relies on its use of and the acquired reputation in what it particularized in its SGP as the ‘TCL trade mark’. When I turn to the opponent’s evidence of use, I confirm that the vast majority of that use is for the TCL acronym solus (‘TCL trade mark’).
Unlike section 44 of the Act, section 60 does not require that the goods/services upon which the opponent uses its TCL trade mark be of a specified standard of similarity with the goods and services of interest to the applicant, nor is there a requirement that the opponent’s TCL trade mark be substantially identical or deceptively similar to the Trade Mark.
It is for me to determine whether the opponent has established that before 11 June 2021 its TCL 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 applicant of the Trade Mark would be likely to cause the public confusion.
In relation to reputation Kenny J states in McCormick & Co Inc v McCormick[8]:
[i]n ConAgra Inc v McCain Foods (Aust) Pty Ltd [1992] FCA 159; (1992) 33 FCR 302 at 343 , Lockhart J said:
[R]eputation within the jurisdiction may be proved by a variety of means including advertisements on television or radio, or in magazines and newspapers within the forum.
Justice Kenny continues:
[i]n practice, it is commonplace to infer reputation from a high volume of sales, together with substantial advertising expenditures and other promotions, without any direct evidence of consumer appreciation of the mark, as opposed to the product: …[9]
[8] (2000) 51 IPR 102, 128-129.
[9] Ibid [86].
In considering whether the opponent’s TCL trade mark had developed a reputation in Australia by the priority date for its goods and/or services, I turn to the opponent’s evidence of use of its trade marks in Australia.
Chaohui 1 avers the opponent is a Chinese multinational electronics company and leading player in the global TV industry. Founded in 1981, Mr Chaohui states the opponent now operates in over 160 markets globally and that according to Sigmaintell[10], the opponent ranked 2nd in the global TV market in terms of sales volume in 2019. According to Chaohui 1 the opponent owns TCL Electronics Australia Pty Ltd, which has operated under the TCL trade mark in Australia since it’s registration in 2004, where the TCL trade mark has been used in relation to a variety of consumer electronics products, including televisions, refrigerators, washing machines, air conditioners, loudspeakers and mobile phones. I note from the evidence that the overwhelming majority of all instances of the opponent’s use of its TCL trade mark in Australia are on televisions[11].
[10] Sigmaintell is a professional market research and advisory company focusing on the global high-tech industry.
[11] Exhibits FC02 to FC04 and FC07 accompanying Chaohui 1
The opponent has been promoting televisions utilising light-emitting diode (LED) backlighting technology for sale in Australia since as early as April 2010. This is supported by Exhibit FC04 accompanying Chaohui 1 which is printouts from the Internet Archive, Wayback Machine showing use of the opponent’s TLC trade mark in relation to “Ultra Slim LED TV’s” in April 2010.
The opponent advertises its TCL trade mark products in different ways, including the following on-line channels:
·Facebook page at:
·Instagram page at: aus.nz/
·Twitter[12] page at:
·YouTube channel at: Now called ‘X’
Mr Chaohui states that in addition to the online advertising, the opponent engages in sponsorship deals with various Australian organisations including the Victoria Racing Club and Melbourne Victory Football Club[13]. Additionally, Mr Chaohui declares that the opponent has been extensively discussed in Australian technology publications and a few articles from limited Australian sources is contained in exhibit FC07 accompanying Chaohui 1.
[13] Confidential exhibits FC05 and FC06 accompanying Chaohui 1
The Australian sales revenue for the opponent’s products under its TCL trade mark since 2017 is contained in confidential exhibit FC01 accompanying Chaohui 1. The figures provided are substantial and growing each subsequent year. It is clear that the opponent has sold a large number of its consumer electronics within Australia but it is unclear exactly what these goods are as the vast majority of the opponent’s evidence demonstrate use of the TCL trade mark on televisions. There is a comment in an article by PC World in exhibit FC07 dated 29 January 2018 which details the opponent’s market share in Australia for QLED televisions and the inclusions of soundbars into the televisions but there is no indication of other goods that the opponent uses its TCL trade mark on. I am satisfied that the opponent has a reputation for its TCL trade mark in Australia for televisions but I am not satisfied that this reputation is sufficient to trigger section 60.
In order to establish a section 60 ground of opposition the opponent must demonstrate that it has acquired a reputation in Australia because of which the use of the Trade Mark would be likely to deceive or cause confusion. As with my decision under the section 44 ground of opposition, the difference in appearance, aural pronunciation and likelihood of remembering differing ideas is considerable when considering the respective trade marks “TCL” and “TLC for LED”. The differences between the Trade Mark and the opponent’s TCL trade mark are striking and are sufficient to differentiate the trade marks from each other. I do not believe that the reputation the opponent holds in its TCL trade mark in regards to televisions is sufficient to overcome the divergence in the goods/services of interest to the parties and the differences in the respective trade marks. Particularly since the trade marks are acronyms - one with a well known meaning being Tender Love and Care/Tender Loving Care and the other having no apparent meaning apart from being identifiable as an acronym.
The opponent has accordingly not established its ground of opposition under section 60.
Decision
Section 55 of the Act relevantly provides:
55 Decision
(1) Unless subsection (3) applies to the proceedings, the Registrar must, at the end, decide:
(a) to refuse to register the trade mark; or
(b) to register the trade mark (with or without conditions or limitations) in respect of the goods and/or services then specified in the application;
having regard to the extent (if any) to which any ground on which the application was opposed has been established.
Note: Forlimitationssee section 6.
The opponent has not established any grounds of opposition. The trade mark application may accordingly proceed to registration one month from the date of this decision. If the Registrar has been served with notice of appeal before that time, I direct that registration of the Trade Mark shall not occur until the appeal has been decided or discontinued.
Costs
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 opponent under section 221 of the Act in terms of Schedule 8 of the Regulations.
Bianca Irgang
Hearing Officer
Oppositions and Hearings
Trade Marks and Designs
29 November 2023
TCL Technology Group Corporation v Musco Corporation [2023] ATMO 196
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