Techtronic Power Tools Technology Limited v Techtronic Power Tools Technology Limited

[2016] ATMO 101

TRADE MARKS ACT 1995

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

Re:Opposition by Techtronic Power Tools Technology Limited to registration of trade mark application 1588978 (9) - ONEPLUS - filed in the name of Shenzhen Oneplus Science & Technology Co, Ltd.

Delegate:	Heath Wilson
Representation:	Opponent: Anne Makrigiorgos of Griffith Hack. Applicant: Written submissions from Norton Rose Fulbright.
Decision:	2016 ATMO 101 Opposition under section 52 of the Trade Marks Act 1995 - grounds of opposition under sections 44, 58, 60 and 42(b) of the Act - no grounds established – trade mark to proceed to registration.

Background

1. This is an opposition to the registration of a trade mark under section 52 of the Trade Marks Act 1995 (‘the Act’). The current details of the opposed trade mark application are set out below:

   Trade Mark No: 1588978

   Trade Mark:

(‘the Trade Mark’)

Priority Date: 31 October 2013

Applicant: Shenzhen Oneplus Science & Technology Co., Ltd (‘the Applicant’)

Specification of Goods:

Class 9: Computers; Computer peripheral devices; Computer software, recorded; Laptop computers; Computer game programs; Phototelegraphy apparatus; Neon signs; Portable telephones; Intercommunication apparatus; Satellite navigational apparatus; Cabinets for loudspeakers; Television apparatus; Camcorders; DVD players; Portable media players; In-ear headphones; Headphones; Telephone wires; Materials for electricity mains (wires, cables); Integrated circuits; Video screens; Alarms; Animated cartoons; Mobile phone; Cell phone covers; Cases for mobile phones; Bags and cases specially adapted for holding or carrying portable telephones and telephone equipment and accessories; Smartphone mounts; Connection cables; Wireless headsets for mobile phones and tablet computers; Wearable digital electronic devices in the form of a wristwatch, wrist band or bangle capable of providing access to the Internet and for sending and receiving phone calls, electronic mails and messages; Wearable electronic handheld devices in the form of a wristwatch, wrist band or bangle for the wireless receipt, storage and/or transmission of data and messages and for keeping track of or managing personal information

1. The Trade Mark was examined as required under section 31 of the Act. During examination, a ground for rejection was raised under section 44 on the basis that the Trade Mark was deceptively similar to trade mark registration no. 1038500 owned by Techtronic Power Tools Technology Limited (‘the Opponent’). That trade mark is registered for goods in classes 7, 9 and 11 and is extracted below:

(‘the Opponent’s trade mark’)

1. The specification of goods for the Trade Mark was subsequently amended to remove the following goods:

   Surveying apparatus and instruments; Cameras (photography); Telescopes; Converters, electric; Plugs, sockets and other contacts (electric connections); Connections, electric; Galvanic cells; Battery chargers; Mobile charge power supply

2. Following the amendment, the ground for rejection under section 44 was withdrawn by the examiner and the Trade Mark was accepted for possible registration. Advertisement of that acceptance appeared in the Australian Official Journal of Trade Marks on 3 April 2014.

3. On 2 June 2014, a Notice of Intention to Oppose was filed by the Opponent followed by a Statement of Grounds and Particulars detailing grounds of opposition under sections 42(b), 44 (on the basis of the Opponent’s trade mark), 58 and 60 of the Act.

4. After a cooling off period, the Applicant filed a Notice of Intention to Defend the opposition and the evidence stages commenced, resulting in the following declarations being filed by the parties:

• Declaration of Jeffrey N. Cutler (Director of the Opponent) made 4 July 2015 with Annexures 1 to 9 (‘Cutler’).

• Declaration of Zuohu Liu (President of the Applicant) made 10 November 2015 with annexures ZL-1 to ZL-18 (‘Liu’).

• Declaration of Simon Gapes (Trade marks attorney for the Opponent at Griffith Hack) made 15 January 2016 with Annexures SG-1 to SG-13 (‘Gapes’).

1. The Opponent requested to be heard, and a hearing was scheduled for 22 September 2016 in Canberra. As a delegate of the Registrar of Trade Marks I set out the timetable for the provision of written summaries of argument. In accordance with the timetable, the Opponent provided its summary of argument on 8 September and the Applicant provided its written summary on 15 September. However, the Applicant also wrote to the office on that date requesting that its class 9 specification be amended to remove the following goods:

   Time recording apparatus; Protection devices for personal use against accidents; Eyeglasses

2. I note that the above goods from the Applicant’s specification formed the entire basis for the ground of opposition under section 44 of the Act as articulated in the Opponent’s written summary of arguments.

3. The amendments to the specification were made, and the hearing proceeded as scheduled, with Anne Makrigiorgos of Griffith Hack making submissions via teleconference on behalf of the Opponent. The Applicant did not appear at the hearing, preferring instead to rely on its written summary of argument.

Onus and Reasons

1. The Opponent bears the onus of establishing at least one of the grounds of opposition on the civil standard of the balance of probabilities.[1] The Opponent did not abandon the ground of opposition under section 44, although Ms Makrigiorgos did not find it necessary to make any further submissions on that ground in light of the amendments to the specification of goods made in the week before the hearing.

   [1] Telstra Corporation Limited v Phone Directories Company Pty Ltd [2015] FCAFC 156, [133] affirming the approach of Gyles J in Pfizer Products Inc. v Karam [2006] FCA 1663, [26].

Section 60

1. 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.

   Note:For priority date see section 12.

2. Section 60 has two major elements that must be satisfied for it to be established. The Opponent must firstly demonstrate the existence of a reputation in its trade mark before the priority date (here, 31 October 2013). The level of that reputation must be such that a ‘significant’ or ‘substantial’[2] number of consumers within the relevant trade would have an awareness of the trade mark. The assessment of what is ‘significant or substantial’ must be properly and sensibly applied[3] and may depend on the specialised nature of the relevant market.[4]

   [2] See Renaud Cointreau & Cie v Cordon Bleu International Ltee (2001) 52 IPR 382; [2001] FCA 1170 and ConAgra Inc. v McCain Foods (Aust) Pty Ltd [1992] FCA 159; (1992) 23 IPR 193.

   [3] “Bali” Trade Mark [1969] RPC 472, 496.

   [4] Le Cordon Bleu BV v Cordon Bleu International Ltee (2001) 50 IPR 1; [2000] FCA 1587, [20].

3. For the second limb of the test, the nature and extent of the demonstrated reputation must be such that the use of the Trade Mark would be likely to deceive or cause confusion. This consideration is conjectural and does not require actual instances of deception or confusion to be demonstrated, but where such instances have been provided, they will be given great weight.[5]

   [5] See Australian Woollen Mills Ltd v F. S. Walton and Company Ltd [1937] HCA 51; (1937) 58 CLR 641.

4. There may be a number of factors that could increase the likelihood of deception or confusion (such as the degree of similarity of the trade marks, whether the respective areas of trade are similar and any actual confusion that has occurred between the trade marks) but the likelihood is dependent on an established reputation in another trade mark in Australia at the priority date.

5. The Opponent has supplied evidence in Cutler to demonstrate that reputation in a trade mark existed at the relevant time. The Opponent alleges it has a reputation in Australia for the trade mark ‘ONE+’ but the majority of the evidence supports use of ‘ONE+ SYSTEM’ trade mark as it appears in paragraph 2 of this decision (i.e. the Opponent’s trade mark).   

6. The Opponent is a principal subsidiary of Techtronic Industries Company Limited (‘TTI’), one of the companies within what is described as the TTI Group. The Opponent holds the intellectual property worldwide of the TTI Group and licenses its use.

7. The TTI Group first used the Opponent’s trade mark in Australia in March 2005 on batteries and chargers for power tools. Shortly thereafter it commenced using the Opponent’s trade mark upon or in relation to power tools and accessories. The TTI Group designs manufactures and sells power tools and outdoor power equipment under such brands as ‘HOMELITE’ and the well-known ‘RYOBI’. It also designs manufactures and sells floor care appliances under such notable brands as ‘HOOVER’, ‘ORECK’ and ‘VAX’.

8. Between July and December 2005, the power tools and accessories sold under the Opponent’s trade mark became available on retail shelves in Australia.[6] Cutler also indicates that in 2015, the range of products sold under or by reference to the Opponent’s trade mark was much broader. However, the relevant reputation is that existing at October 2013 and I must assess the likelihood of deception or confusion arising from the use of the Trade Mark at that time.

   [6] Cutler, [7].

9. The sales figures for the Opponent’s products sold under its trade mark are confidential, but from 2005 to 2013 are substantial and indicate growth over that period. The figures for the Opponent’s advertising and marketing expenditure generally accord with the sales figures.

10. Since 2006, the Opponent’s products have been exclusively sold in Bunnings and there is evidence before me of point of sale advertising, advertising in magazines, newspapers, catalogues, online and on television and radio.[7] However, it is the nature of that use which is paramount to the current opposition.

    [7] Annexures 6 - 8 to Cutler.

11. Turning to the use of the Opponent’s trade mark, the first instance in the evidence is within a catalogue featuring the ‘RYOBI® 18-VOLT NAILER’ where the technology it includes is described as an ‘18-volt ONE+ SYSTEM®’. Elsewhere in Cutler, another product is named ‘RYOBI® 18-VOLT ONE+® AIRSTRIKE®’ and again, a ‘RYOBI® 18-VOLT ONE+ SYSTEM®’. The ‘ONE+ SYSTEM’ appears to have also been used in relation to a range of the Opponent’s gardening power tools.[8] Although Cutler contains evidence relating to the Opponent’s floor care appliances, I cannot ascertain whether the Opponent’s trade mark has been used on any of those goods.

    [8] Annexure 1 to Cutler.

12. A significant amount of the evidence (but not every instance, as Ms Makrigiorgos pointed out at the hearing) displays use of the Opponent’s trade mark in conjunction and close association with the Opponent’s well-known brand ‘RYOBI’ for power tools. Even when the Opponent’s trade mark appears by itself, it is invariably within a promotional brochure with the Opponent’s house mark ‘RYOBI’ appearing prominently on every page. On the products themselves, the Opponent’s trade mark may appear on one side of the product with ‘RYOBI’ appearing prominently on another side.

13. Even if it were accepted that the above examples amounts to evidence of two trade marks operating concurrently on the same label[9] and therefore constitutes use of the Opponent’s trade mark, its association with the reputation of ‘RYOBI’ undoubtedly affects the strength of the overall reputation that the Opponent’s trade mark enjoys. It is safe to say the Opponent’s trade mark mainly functions as a secondary brand to ‘RYOBI’. The sales and promotional figures for the products referred to earlier should be viewed in light of that fact. To illustrate the point, common examples of the trade mark use in Cutler are extracted below:

and.

[9] See Wellness Pty Ltd v Pro Bio Living Waters Pty Ltd and Ors (2004) 61 IPR 242, 247.

1. As can be seen, there are examples where the Opponent’s trade mark features ‘18V’ encased within the letter ‘O’ in the ‘ONE+ SYSTEM’ brand. This is simply an indication of the voltage of the Opponent’s lithium ion battery platform, but it nevertheless cannot be entirely discounted in an overall assessment of the likelihood of deception or confusion between the trade marks.

2. After considering the entirety of the evidence, I am not convinced that a sufficient trade mark reputation has been demonstrated for deception or confusion in the relevant marketplace to be the likely result. In any event, given the disparity between the Applicant’s goods and the niche market in which the Opponent’s trade mark has been used, even if a consumer were aware of the Opponent’s trade mark in relation to battery packs for power tools and accessories they would not be confused by the use of the Trade Mark upon or in relation to different goods claimed in class 9 of the Applicant’s specification.

3. I find that the ground of opposition under section 60 is not established.

Section 42(b)

1. Section 42 of the Act relevantly provides:

Trade mark … use contrary to law

An application for the registration of a trade mark must be rejected if:

    (b)  its use would be contrary to law.

1. The Opponent’s arguments under the section 42(b) ground were that the use of the Trade Mark would:

• Be misleading or deceptive or likely to mislead or deceive in contravention of section 18 of The Australian Consumer Law[10] (‘ACL’); and

• Constitute a false or misleading representation that the Applicant’s goods have the sponsorship or approval of the Opponent contrary to section 29(1)(g) of the ACL.[11]

  [10] Schedule 2 to the Competition and Consumer Act 2010.

  [11] Paragraph 75 of the Opponent’s written submissions 

1. The facts relied upon by the Opponent were the same as those under section 60 and were dependent on the extent and nature of the reputation the Opponent demonstrated in its trade mark. I have already addressed the extent of that reputation. For the purposes of this ground, it follows that there are not a reasonably significant number of potential purchasers that are likely to be aware of the Opponent’s trade mark and then misled or deceived by the use of the Trade Mark.

2. In other words, as there was not a reputation in the Opponent’s trade marks sufficient to support a finding that the use of the Trade Mark would deceive or confuse Australian consumers, it follows that the reputation is likewise insufficient to support an argument for misleading and deceptive conduct.[12] There is also nothing to satisfy me that the use of the Trade Mark would mislead consumers into believing that the Applicant’s products had the sponsorship or approval of the Opponent. Subsection 29(1)(g) of the ACL has not been established.

   [12] Parkdale Custom Built Furniture Pty Ltd v Puxu Pty Ltd [1982] HCA 44, [8].

3. Under section 42(b) of the Act, the Registrar must be satisfied that the use of the Trade Mark ‘would’, not ‘could,’ be contrary to law.[13] On the strength of the evidence, I am not so satisfied. I find that this ground of opposition has not been established.

   [13] Advantage Rent-A-Car Inc. v Advantage Car Rental Pty Ltd [2001] FCA 683, [32].

Section 58

1. Section 58 of the Act provides:

58  Applicant not owner of trade mark

The registration of a trade mark may be opposed on the ground that the applicant is not the owner of the trade mark.

Note:For applicant see section 6.

1. With regard to the ownership of a trade mark, the first person to apply to register will, in most cases, be entitled to claim to be the owner in relation to the goods/services of the application and also goods/services constituting the ‘the same kind of thing’.[14] An exception to that general statement is if a trade mark has been used before the filing date (the relevant date here being 31 October 2013).  In that event (and in the absence of fraud) the owner of a trade mark in Australia is taken to be the first person to use it (‘first user’) in the course of trade in relation to the goods or services.

   [14] Re Hicks' Trade Mark (1897) 22 VLR 636 (‘Hicks’).

2. The first user need not have invented or first thought of the trade mark[15], but rather it is the first party to use it as a trade mark in Australia. The application of section 58 requires that a ‘total impression of similarity (emerges) from a comparison between the two marks. In a real sense a claim to proprietorship of the one extends to the other. But to go beyond this is, in my view, not possible.’[16]

   [15] Aston v Harlee Manufacturing Co (1960) 103 CLR 391, 399.

   [16] Carnival Cruise Lines Inc v Sitmar Cruises Ltd [1994] FCA 936; (1994) 120 ALR 495, [62].

3. The Applicant did not use the Trade Mark in Australia before the filing date. The only use before the filing date is that of the Opponent’s trade mark in relation to particular goods.

4. For the purposes of establishing proprietorship in the Trade Mark, the Opponent is opposing the registration of the Trade Mark in relation to ‘portable media players’ on the basis of the earlier use of the Opponent’s trade mark for ‘radios’. Should this ground of opposition be established by the Opponent, the Applicant requested that ‘portable media players’ be deleted from class 9.

5. Before I consider whether the trade marks in question are substantially identical, it will therefore be necessary to consider whether ‘radios’ are the same kind of thing as ‘portable media players’ claimed in the specification of the Trade Mark.

‘Portable Media Players’ and ‘Radios’

1. As it was not filed in evidence, I was urged by both the Opponent and Applicant to take into account information[17] that could be described as public knowledge in defining whether radios and portable media players are the ‘same kind of thing’. In that regard, the Oxford Dictionary of English defines a ‘portable media player’ as:

   noun

   a handheld electronic device for playing digital media such as audio and video files: the second disc of this release is a digital copy for portable media players. [18]

   [17] In accordance with Reg 21.15(4) of the Trade Marks Regulations 1995.

   [18] 3^rd Edition (Oxford University Press).

2. The Applicant also supplied the following definition from ‘Wikipedia’:

   A portable media player (PMP) or digital audio player (DAP) is a portable consumer electronics device capable of storing and playing digital media such as audio, images, and video files.[19]

   [19] Retrieved 14 September 2016 from >

   It is clear from the material that portable media players have a number of functions (including the storage and playback of various forms of media) and certain portable media players also have built-in FM radio tuners. On the other hand, a radio cannot necessarily play digital media and can take many forms, not all of them can be fairly described as ‘portable’ or ‘handheld’.  I am not convinced it is sufficient to argue (as the Opponent has) that ‘digital and analog radios play audio’.[20]

   [20] Opponent’s written submissions, paragraph 23.

3. As mentioned above, the expression ‘same kind of thing’ which has its origins arising from the Hicks case and has been interpreted to mean goods that are not identical, but are essentially the same, though they may differ in size, shape and name. This is a narrower test than the ‘similar goods’ test in section 14. As the Full Bench of the Federal Court in Colorado Group Limited v Strandbags Group Pty Limited found:

   In identifying whether or not goods or a class of goods are essentially the same as other goods or classes of goods, a decision-maker will have regard to a range of factors, depending on the goods in question. Physical and functional differences may be relevant. Other matters may be as well. There is no bright line that marks out the factors for a "same kind" inquiry from the factors for a "same description" inquiry, although these inquiries may differ in the answers they yield. Goods that are properly regarded as "essentially the same" may well cover a narrower field that goods "of the same description".[21]

   [21] [2007] FCAFC 184, [16].

1. A notable example of goods that were determined to be the same kind of thing have included axes and hatchets,[22] while backpacks and other types of bags were not the same kind of thing. Just as calculators with clocks are not the same kind of thing as wristwatches[23] and a clock within a vehicle is not the same kind of thing as a clock,[24] it cannot be said that a portable media player which may have a radio incorporated within it, is the same kind of thing as a radio. I find that the physical and functional features of the products generally differ and a customer seeking to purchase a portable media player is unlikely to be satisfied with a radio.

   [22] Jackson v Napper [1886] 35 Ch D 160.

   [23] See Canon Kabushiki Kaisha v Robert James Brook & Anor [1996] FCA 756.

   [24] See Nissan Jidosha Kabushiki Kaisha v Woolworths Ltd (1999) 45 IPR 649.

2. In summary, I am not convinced that the goods are the ‘true equivalent thing or article’.[25] As a result, I need not consider the other elements of the ground of opposition and I find that the ground under section 58 of the Act is not established.

   [25] Colorado Group Limited v Strandbags Group Pty Limited [2007] FCAFC 184, [89]-[90].

Section 44

1. Section 44 of the Act relevantly provides:

44Identical 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.

Note 1:For deceptively similar see section 10.

Note 2:For similar goods see subsection 14(1).

Note 3:For priority date see section 12.

Note 4:The regulations may provide that an application must also be rejected if the trade mark is substantially identical with, or deceptively similar to, a protected international trade mark or a trade mark for which there is a request to extend international registration to Australia: see Part 17A.

1. In the context of an opposition to registration, the Opponent must identify an earlier filed trade mark in respect of similar goods or closely related services that is substantially identical with, or deceptively similar to, the Trade Mark. For this ground of opposition, the Opponent is relying on the earlier filed Opponent’s trade mark (i.e. trade mark registration no. 1038500).

2. In the case of Registrar of Trade Marks v Woolworths, French J made clear that:

   The logic of subs 44(2) suggests that the determination whether goods are closely related to the services in question is logically antecedent to the determination whether the trade mark in respect of the services is deceptively similar to that in respect of the goods. Wilcox J at first instance in this case saw the questions as "conceptually distinct" but accepted that one could not be addressed in isolation from the second:

   "The closer the relationship between the services and particular goods, the more likely any similarity in marks will prove deceptive."

   …

   In the end there is one practical judgment to be made. Whether any resemblance between different trade marks for goods and services renders them deceptively similar will depend upon the nature and degree of that resemblance and the closeness of the relationship between the services and the goods in question. It will not always be necessary to dissect that judgment into discrete and independent conclusions about the resemblance of marks and the relationship of goods and services. Consistently with that proposition, the Registrar or a judge on appeal from the Registrar could determine in a particular case that, given the limited degree of resemblance between the relevant marks he or she could not be satisfied, no matter how closely related the goods and services concerned, that the use of the applicant's marks would be likely to deceive or to cause confusion.[26]

   [26] [1999] FCA 1020 [39]-[40] (French J); see also Qantas Airways Limited v Edwards [2016] FCA 729, [120].

3. At the risk of stating the obvious, the converse must also be true. That is, the Registrar may determine that no matter the extent of resemblance between the trade marks, if the goods in the respective applications are dissimilar the result is that the use of the applicant’s trade mark would not be likely to deceive or confuse.

4. Section 14 of the Act provides that goods are ‘similar’ to other goods if they are the same, or of the same description as that of the other goods. As mentioned earlier, this ground was only pursued at the time by the Opponent on the basis of particular goods identified by the Opponent as conflicting (i.e. ‘eyeglasses’, ‘protection devices for personal use against accidents’, and ‘time recording apparatus’). Since amendment, those goods are no longer part of the Applicant’s specification.

5. The Opponent bears the onus of establishing this ground and has not identified any other goods in the current class 9 specification that could be described as the same, or of the same description as the goods in the specification of the Opponent’s trade mark. For the avoidance of doubt, I have also considered the respective specifications and in light of the applicable tests[27], and on the balance of probabilities, I do not find those goods to be similar.

   [27] See Jellinek's Application (1946) 63 RPC 59.

6. As a result, it is unnecessary for me to consider whether the Trade Mark and the Opponent’s trade mark are substantially identical and/or deceptively similar. I find that the ground of opposition under section 44(1) of the Act has not been established.

Decision

1. Section 55 of the Act relevantly provides:

   (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:For limitations see section 6.

2. The Opponent has not established a ground of opposition. I direct that trade mark application 1588978 may proceed to registration one month from the date of this decision.

3. If the Registrar is served with a notice of appeal before that time, I direct that registration shall not occur until the appeal has been withdrawn or discontinued. Otherwise, the disposition of the application should be in accordance with the Court’s order or direction.

Costs

1. An award of costs is a discretionary power exercised by the Registrar under section 221. Although it was made without any admission, the Applicant applied to amend its specification at the last moment after receiving the Opponent’s submissions objecting to the very same goods under section 44. While a ground of opposition has not been established, I find the each party has enjoyed a measure of success and I decline to make an award of costs in this matter.

Heath Wilson
Hearing Officer
Oppositions and Hearings
14 November 2016