Teka Industrial SA v Deka Australia Pty Ltd

[2017] ATMO 47

TRADE MARKS ACT 1995

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

Re:Opposition by Teka Industrial SA to registration of trade mark applications 1664084(11) – DEKA logo – and 1664085(35) – DEKA AUSTRALIA ­ – ­­in the name of Deka Australia Pty Ltd.

Delegate:

Debrett Lyons

Representation:

Opponent: no attendance; no submissions.

Applicant: Andrew Sykes of counsel, instructed by Colin Cheung of Actuate IP.

Decision:

2017 ATMO 47

Trade Marks Act 1995: s52 proceedings: ss42(b), 44, 58 and 60 pressed – s. 44 established; trade marks refused registration; no costs awarded.

Background

1. In these proceedings under the Trade Marks Act 1995 (‘the Act’) Deka Australia Pty Ltd (‘the Applicant’) has applied to register the trade marks which appear below:

Application No: 1664084

Priority Date:  11 December 2014

Goods:Class 11: Electric ceiling fans; Electric cooling fans; Fans (air-conditioning); Room fans; Table fans; Heating apparatus; Cooling apparatus; Apparatus for water heating; Water cooling apparatus; Heating installations (water); Installations for cooling (‘the Deka Goods’).

Trade Mark:  

Application No: 1664085

Priority Date:  11 December 2014

Services:Class 35: Retailing of goods (by any means); Wholesaling of goods (by any means) (‘the Deka Services’).

Trade Mark:  DEKA AUSTRALIA

(taken together, ‘the Trade Marks’)

1. The Trade Marks were examined as mandated by section 31 of the Act and subsequently advertised as accepted for possible registration in the Australian Official Journal of Trade Marks on 7 May 2015.

2. Teka Industrial SA (‘the Opponent’) has opposed registration of the Trade Marks.  Notices of Intention to Oppose the registration of the Trade Marks were filed on 25 June 2015 and 6 July 2015.  Thereafter, the oppositions proceeded on essentially the same footing and so on 21July 2015 the Opponent filed its Statements of Grounds and Particulars (‘the SGPs’).

3. On 17 August 2015, the Applicant filed Notices of Intention to Defend.

4. The parties subsequently filed Evidence in Support, Evidence in Answer, and Evidence in Reply as detailed later after which a hearing was convened in Canberra on 7 March 2017.  At the hearing the Applicant was represented by Andrew Sykes of counsel, instructed by Actuate IP, who made oral submissions to supplement the written submissions already made in accordance with my pre-hearing directions letter.   The Opponent was not represented and made no submissions in spite of my directions prior to the hearing.

SGPs, Onus and Outline of the Opposition

1. The SGPs detail grounds of opposition under sections 42(b), 44, 58 and 60 of the Act. The Opponent bears the onus of establishing one or more of those grounds on the balance of probabilities.[1]  The date at which the grounds of opposition must be established is the Priority Date of the applications.[2] 

   [1] See Pfizer Products Inc v Karam [2006] FCA 1663.

   [2] See Southern Cross Refrigerating v Toowoomba Foundry Pty Ltd (1953) 91 CLR 592 at 595.

2. With the exception of section 58, which provides a basis for opposition where the Applicant is not the owner of the Trade Marks, the grounds pressed by the Opponent rely in common on claims of confusion or misrepresentation of one kind or another premised on the Opponent’s asserted trade mark rights.

3. In that regard, the Opponent is the owner of Australian trade mark registrations 707686 and 1165189 (‘the Registrations’) for the trade mark shown below (‘the Opponent’s Mark’):

4. The Opponent maintains that the goods of the Registrations are similar to the Deka Goods or are closely related to the Deka Services and that the Trade Marks are deceptively similar to the Opponent’s Mark.  Moreover, it submits that the Opponent’s Mark has been used in Australia and because of the reputation it has so acquired, use of the Trade Marks would be likely to cause confusion or deception amongst the Australian public.

5. The Applicant broadly denies those allegations.

Evidence

1. The parties filed evidence in accordance with the Trade Mark Regulations 1995.  The evidence is materially identical in respect of both oppositions and comprises:

• the Opponent’s evidence in support being a Statutory Declaration of  Miguel Fernandez Lopez made on 18 November 2015 (‘Lopez 1’); and

• the Applicant’s evidence in answer being a Statutory Declaration of Birwin Yu made on 22 February 2016 (‘Yu’); and

• the Opponent’s evidence in reply being a second Statutory Declaration of Miguel Fernandez Lopez made on 25 April 2016 (‘Lopez 2’).

Discussion

Section 58

1. Section 58 provides a ground of opposition where the applicant is not the owner of the trade mark at issue. To succeed under section 58, the Opponent must establish that someone other than the Applicant first used the Trade Marks (or marks “substantially identical” thereto)[3] in Australia for goods and services adjudged to be “the same kind of thing” as the Deka Goods and the Deka Services before the Priority Date, or before the Applicant’s first use of the Trade Marks for relevant goods or services, whichever is the earlier.

   [3] Carnival Cruise Lines v Sitmar Cruises Ltd [1994] FCA 936; (1994) 31 IPR 375.

2. The trade marks under comparison in this case are not the same, nor are they substantially identical.  The established standard test for substantial identity of competing trade marks was set out by Windeyer J. in Shell Co. (Aust) Ltd v Esso Standard Oil (Aust) Ltd, as follows:

In considering whether marks are substantially identical they should, I think, 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 the comparison.[4]

[4] (1963) 109 CLR 407 at 414.

1. By way of example, the following trade marks have been found not to be substantially identical: "Otrivin" Trade Mark [1967] RPC 613, (OTRIVIN and OTRIVINE); Lonza Ltd v Kantfield Pty Ltd (T/A Martogg & Co) (1995) 33 IPR 396 (FORTEX and FOREX); Photo Disc Inc v Gibson And Another (1998) 42 IPR 473 ('PHOTO-DISK' - with descriptive phrase and arabesques and PHOTODISC), although in the latter decision, the Deputy Registrar observed that if the trade marks had been PHOTO-DISK and PHOTODISC, solus, she would have found that the trade marks were substantially identical.

2. For this reason, I find that the section 58 ground of opposition has not been established.

3. I add here that to the extent the Opponent’s evidence might have suggested a different basis for section 58, namely that a party other than the Applicant was in fact the owner of the (exact) Trade Marks,[5] Yu addresses that matter by providing a deed of assignment between the relevant parties executed on 9 December 2014.

   [5] The Opponent claims in its SGPs that the Applicant is not the owner of the Trade Marks, and that Deka Marketing is the rightful owner of the Deka Trade Marks.

Section 44

1. In the absence of invocation of the provisions of subsections 44(3) or 44(4), section 44 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.

   (2)Subject to subsections (3) and (4), an application for the registration of a trade mark (applicant’s trade mark) in respect of services (applicant’s services) 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 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.

   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.

2. Therefore, to establish a ground of opposition under section 44 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 Applicant, and in relation to which the Trade Marks are either substantially identical or deceptively similar;

   ·     the trade mark(s) in the name of the other person must be in respect of similar services or closely related goods; and

   ·     the priority date(s) of the trade mark(s) of the other person is (are) earlier than that of the Trade Marks.

3. The Registrations have earlier priority dates[6] than that of the Trade Marks and are owned by a person other than the Applicant.

   [6] The priority dates of registrations 707686 and 1165189 are 3 May 1996 and 23 February 2006, respectively.

4. Section 14 provides:

   Definition of similar goods and similar services

   (1)For the purposes of this Act, goods are similar to other goods:

   (a)if they are the same as the other goods; or

   (b)if they are of the same description as that of the other goods.

   (2)For the purposes of this Act, services are similar to other services:

   (a)if they are the same as the other services; or

   (b)if they are of the same description as that of the other services.

1. Registration 707686 covers

Class 6: Stainless steel sinks, metallic pipes; and

Class 11: Cookers, furnaces, sinks, devices and accessories for lighting, for steam production, for cooking, for water distribution and sanitary elements.

1. Registration 1165189 covers

Class 7: Washing machines, dishwashers and drying machines.

1. It remains for the Opponent to show (a) that the goods of the Registrations are for “similar goods” to the Deka Goods or are “closely related” to the Deka Services and (b) that the compared trade marks in question are “deceptively similar” (the matter of substantial identity having been already decided).

2. The Applicant’s (redacted) submissions in relation to the former issue, (a), are:

   DEKA  AUSTRALIA

   [Neither] of the Teka Trade Marks is registered in Class 35, or indeed in any of the service classes. This means that the Opponent must show that the services claimed under the DEKA AUSTRALIA mark are ‘closely related to’ the goods claimed under the Teka Trade Marks.

   It is generally considered that retailing and wholesaling services are not considered to be closely related to the goods which are being retailed or wholesaled.[7] The Applicant refers to the following paragraphs from the IP Australia Trade Marks Office Manual of Practice and Procedure: [8]

   The primary judge in the Metro case Justice Wilcox, took the view that the connection between retailing and wholesaling services and the goods sold in these outlets was not of the same order of closeness as in Lockhart J's examples, in the Caterpillar case (see paragraph 4.3). It is now considered that while there may be a relationship at some points between retailing services and goods sold in a retail outlet the relationship is not significant enough to warrant raising section 44 grounds for rejection in most situations. Examiners should not routinely cite similar marks merely because one mark covers goods and the other mark could be viewed as covering the retail of those goods.
   […]
   In deciding whether a section 44 ground for rejection exists, examiners will generally consider a specific claim for motor vehicle, jewellery or clothing to be closely related to a specific claim for retailing or wholesaling of such goods in class 35. On the other hand, a specific claim for goods other than motor vehicles, jewellery or clothing will generally not be considered to be closely related to a specific claim for retailing or wholesaling of those goods unless there is a strong rationale to conclude that consumers have come to expect that the particular goods and their retail or wholesale typically originate from the same source.

   This is a common sense approach since in cases, such as this, where retail or wholesale services are claimed in broad terms, they could otherwise be said to be closely related to any goods which can be retailed or wholesaled.

   Unlike the exceptions given in the IP Australia Trade Marks Office Manual of Practice and Procedure – motor vehicles, jewellery and clothing – it is uncommon for the manufacturers of home appliances to provide retail services, either online or offline. This goes for the Opponent as well, which, according to its own evidence, does not engage in any retail activities in Australia, and sells its products solely through authorized distributors. The public would not expect home appliance trade marks such as the Teka Trade Marks to be used in relation to retail services, and would not be confused by the use of similar marks in relation to these services.

   [7] See Registrar of Trade Marks v Woolworths [1999] FCAFC 1020.

   [8] IP Australia Trade Marks Office Manual of Practice and Procedure, Part 26, Sub-part 4.3.1.

3. In large part the IP Australia Trade Marks Office Manual of Practice and Procedure (‘the Manual’) is a guide to pre-opposition acceptance.  In Registrar of Trade Marks v Woolworths, (‘Woolworths’) French J (as he was) described “the preliminary screening nature of the acceptance process” and the fact that under section 33 of the Act an examiner was required to accept an application when a matter was in doubt. His Honour stated:

   The mandatory language of s 33 and the legislative policy which informs it also suggest that the acceptance stage is not the time for the kind of detailed adversarial examination of the application that might emerge from a contested opposition. [9]

   [9] (1999) 45 IPR 411 at [34]-[35].

4. There compelling evidence before me that “it is uncommon for the manufacturers of home appliances to provide retail services”, nor of the expectations of the public in that regard.

5. I do not accept the Applicant’s submission that the examples given in the Manual concerning the sale of motor vehicles, jewellery and clothing are “exceptions” to any general rule.  They reflect no more than what were points of illustration by the then Registrar of Trade Marks and Designs, Mr F J Smith, in a 1979 paper he published prior to introduction of “service marks” in Australia.[10]

   [10] See, for example, the relatively recent discussion thereof by Yates J in Yates J in Qantas Airways Limited v  Edwards[2016] FCA 729 at [109]-[110].

6. Furthermore, the broad statement in the Manual that “a (specific) claim for goods … will generally not be considered to be closely related to a (specific) claim for retailing or wholesaling of those goods unless there is a strong rationale to conclude that consumers have come to expect that the particular goods and their retail or wholesale typically originate from the same source” requires qualification.  In Qantas Airways Limited v  Edwards[11] Yates J underscored that section 44 is drafted so that the determination of whether goods are closely related to services is logically antecedent to the determination of whether the trade mark in respect of the services is deceptively similar to that in respect of the goods.  In other words, examination of consumer expectation is linked to questions of confusion or deception to which we later come.  For now, I find that the Deka Services are closely related to all of the goods of the Registrations since the Deka Services are cast to entail the retailing or wholesaling of those goods. 

   [11] Ibid., at [115]-[119].

7. Continuing, the Applicant’s written submissions in relation to application 1664084 are:

   DEKA Logo Mark

There is no overlap between the Deka Goods and the Teka Goods. None of the Deka Goods is identical to any of the Teka Goods. Therefore, the Opponent must show that all of the Deka Goods are similar to one or more of the Teka Goods. … In Jellinek’s Application[12], Romer J set out the following key factors as relevant to the determination of whether goods are of the ‘same description’:

[12] 63 RPC 59

(i)the nature of the goods;

(ii)the respective use of the articles;

(iii)the trade channels through which the commodities are respectively bought and sold.

The Deka Goods are sufficiently different in nature and function from the Teka Goods that they are clearly distinguishable, as detailed below:

(i)    “Electric ceiling fans; Electric cooling fans; Fans (air-conditioning); Room fans; Table fans” in the Deka Goods are not at all similar to any of the Teka Goods. All of these Deka Goods are comprised of multiple blades, which rotate at speed to circulate air. The purpose of these devices is to provide a cooling effect by circulating air. None of the Teka Goods resemble these features in any way, and visually they are completely different, both on first impression and upon closer inspection. Likewise, there are no Teka Goods which serve a remotely similar purpose. Therefore there is no way that any of these fan-related Deka Goods could resemble, or be connected in any way with, any of the Teka Goods.

(ii)  “Heating apparatus” in the Deka Goods is most similar to “cookers”, “furnaces” and “devices and accessories […] for steam production, for cooking” in the Teka Goods. However, while these Teka Goods do generate heat, their general purpose is for cooking. On the other hand, the apparent purpose of Deka’s heating apparatus is to heat air or water, with no relation to cooking. The difference in function indicates that they are likely to be very different in appearance and nature as well.

(iii) “Cooling apparatus” is not at all similar to any of the Teka Goods. The purpose of a cooling apparatus is to provide a cooling effect, by removing heat. None of the Teka Goods does this in any way. Therefore it is hard to see how a cooling apparatus could be similar in nature or function to any of the Teka Goods.

(iv) “Apparatus for water heating” in the Deka Goods is probably most similar to “devices and accessories […] for water distribution” in the Teka Goods. The purpose of an apparatus for water heating is to heat water. It may be similar in nature to “devices and accessories […] for water distribution” insofar as they both involve the processing of water in some manner. However, distribution and heating of water are very different processes, which necessitates an entirely different structure and device. Similarly, it may be conceptually similar to “cookers”, “furnaces” and “devices and accessories […] for steam production, for cooking” insofar as they both create heat. However, the clearly different purposes for which they create and use heat will also necessitates an entirely different structure and device. Therefore it is not likely that an apparatus for water heating will resemble, or be connected in any way with, any of the Teka Goods.

(v)  “Water cooling apparatus” in the Deka Goods is probably most similar to “devices and accessories […] for water distribution” in the Teka Goods. The purpose of a water cooling apparatus is to cool water. It may be similar in nature to “devices and accessories […] for water distribution” insofar as they both involve the processing of water in some manner. However, distribution and cooling of water are very different processes, which necessitates an entirely different structure and device. Additionally, none of the Teka Goods provide a cooling effect. Therefore it is not likely that a water cooling apparatus will resemble, or be connected in any way with, any of the Teka Goods.

(vi) “Heating installations (water)” in the Deka Goods is probably most similar to “devices and accessories […] for water distribution” in the Teka Goods. The purpose of a heating installation for water is to heat water. It may be similar in nature to “devices and accessories […] for water distribution” insofar as they both involve the processing of water in some manner. However, distribution and heating of water are very different processes, which necessitates an entirely different structure and device. Similarly, it may be conceptually similar to “cookers”, “furnaces” and “devices and accessories […] for steam production, for cooking” insofar as they both create heat. However, the clearly different purposes for which they create and use heat will also necessitates an entirely different structure and device. Therefore it is not likely that a heating installation for water will resemble, or be connected in any way with, any of the Teka Goods.

(vii)   “Installations for cooling” in the Deka Goods is not at all similar to any of the Teka Goods. The purpose of a cooling apparatus is to provide a cooling effect, by removing heat. None of the Teka Goods does this in any way. Therefore it is hard to see how a cooling apparatus could be similar in nature or function to any of the Teka Goods.

There may be some large electrical or homeware retailers potentially selling goods of the same type as the Deka Goods and goods of the same type as the Teka Goods. However, these types of retailers typically differentiate between types of appliances based on their functions, and separate them into different departments. It is very likely that the Deka Goods would be sold in a different department, quite separate from the kitchen appliances, bathroom appliances, and laundry appliances which comprise the Teka Goods.

Furthermore, the evidence shows that there is presently no actual overlap in the particular parties’ trade channels.  Although such evidence is not in any way determinative of whether or not goods are “similar goods” it does indicate support for the Applicant’s argument that the trade channels for the goods in question are dissimilar.  The Opponent lists its current distributors (at paragraph 19 of the First Lopez Declaration) as Rawsons Elite Appliances, Appliance Sales Direct, and Appliance Corporation Pty Ltd. The Opponent also lists as potential future distributors (at paragraph 3 of the Second Lopez Declaration) Harvey Norman, The Good Guys, Betta Electrical, Bing Lee, Winning Appliances, Bi-Rite Home Appliances and Narta. The Applicant lists its current distributors (at paragraph 12 of the Yu Declaration) as Beacon Lighting Pty Ltd and Ventair Pty Ltd. There is clearly no overlap in the current distribution channels for Deka Goods and Teka Goods.

1. To recapitulate, the Deka Goods are: Electric ceiling fans; Electric cooling fans; Fans (air-conditioning); Room fans; Table fans; Heating apparatus; Cooling apparatus; Apparatus for water heating; Water cooling apparatus; Heating installations (water); Installations for cooling (class 11).  I do not find that any of the class 6 and class 7 goods of the Registrations are the same as or are of the same description as the Deka Goods.

2. On the other hand, those Deka Goods described as “heating apparatus” or “apparatus for water heating” or “heating installations (water)” might conflict with the class 11 goods of registration 707686 described as cookers, furnaces, devices and accessories for steam production, devices and accessories for cooking.

3. At one point the Applicant states:

   A statement of goods is intended to be clear and concise. To the extent that a prior registered trade mark contains ambiguities in the statement of goods (or services), it will be interpreted narrowly so as not to provide the owner with an unnecessarily broad or beneficial construction. If two constructions are available then the narrowest construction is preferred.

4. I might agree with those statements as matters of general principle, but to the extent that I was meant to read them as implying that the description of the class 11 goods of registration 707686 lack clarity or precision, I disagree.  I find that “devices and accessories for cooking” are either the same as or of the same description as the Applicant’s “heating apparatus” or “apparatus for water heating”.  Further, I find that “heating installations (water)” are the same as or of the same description as “devices and accessories for steam production”.

5. It follows at this point that the section 44 ground of opposition has not been established with respect to application 1664084 to the extent that it seeks protection for the remaining goods, namely;

Electric ceiling fans; Electric cooling fans; Fans (air-conditioning); Room fans; Table fans; Cooling apparatus; Water cooling apparatus; Installations for cooling.

1. Returning now to point (b) of [23] above, the remaining question under section 44 is whether the compared marks are “deceptively similar”, an expression defined by section 10 of the Act. In The Coca-Cola Company v All-Fect Distributors Ltd,[13] section 10 was considered by the Full Federal Court. In a joint judgment, Black CJ, Sundberg and Finkelstein JJ said the following at [39]:

   Section 10 of the Act provides that a trade mark is taken to be deceptively similar to another trade mark if it so nearly resembles that other mark as to be likely to deceive or cause confusion. No intention to deceive or cause confusion is required: Re Bali Brassiere Co Inc's Registered Trade Mark (1968) 118 CLR 128 at 139. The distinction between “likely to deceive” and “likely to cause confusion” lies not in some element of culpability in the user to be inferred from the word “deceive”, but in the effect of the mark on prospective purchasers. In Pioneer Hi-Bred Corn Co v Hy-Line Chicks Pty Ltd [1979] RPC 410 at 423 Richardson J, in the New Zealand Court of Appeal, said:

   “Deceived” implies the creation of an incorrect belief or mental impression and causing “confusion” may go no further than perplexing or mixing up the minds of the purchasing public … Where the deception or confusion alleged is as to the source of the goods, deceived is equivalent to being misled into thinking that the goods bearing the applicant's mark come from some other source and confused to being caused to wonder whether that might not be the case.

   [13] (1999) 96 FCR 107; 47 IPR 481.

1. The relevant principles to apply in considering deceptive similarity were set out in Australian Woollen Mills Ltd v FS Walton and Co Ltd[14]:

   ...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 … for which the protection … is sought.  The impression or recollection which is carried away or retained is necessarily the basis of any mistaken belief that the challenged mark or device is the same.  The effect of spoken description must be considered … The usual manner in which ordinary people behave must be the test of what confusion or deception may be expected.  Potential buyers of goods are not to be credited with any high perception or habitual caution.  On the other hand, exceptional carelessness or stupidity may be disregarded.  The course of business and the way in which the particular class of goods are sold gives, it may be said, the setting, and the habits and observation of men considered in the mass affords the standard…

   [14] (1937) 58 CLR 641.

1. In Woolworths French J found that the assessment of the likelihood of deception and confusion rested on a number of factors including what he described as a real tangible danger of confusion,  rather than a mere possibility of such.  His Honour stated that this was “another way of expressing the proposition that the trade mark is likely to cause confusion if there is a real likelihood that some people will wonder or be left in doubt about whether the two sets of products or the products and services in question come from the same source.”[15]

   [15] Op.cit. fn 9 at [50].

2. In relation to “confusion” in particular, Dodds-Streeton J noted more recently in Tivo Inc v Vivo International Corporation Pty Ltd (‘Tivo’)[16] that:

   It is well established that trade marks may be deceptively similar for the purposes of ss 44(1) and (2) of the Act even if confusion is unlikely to persist up to the point of, and contribute to, inducing sale.

   [16] [2012] FCA 252.

1. Accordingly, my task is to determine what is memorable about the compared trade marks and so decide, having regard to the similarity of impression created by the marks whether there is a real and tangible likelihood of confusion or deception.  I must be satisfied that there is a reasonable likelihood of deception or confusion among a substantial number of persons if the Applicant uses the Trade Marks normally and fairly in respect of the Deka Goods and Deka Services.

2. The Applicant’s (redacted) submissions are that:

   … there is a clear visual difference between the words DEKA and TEKA. The brevity of the word TEKA means that changing even one letter is likely to give a very different visual impression. This is particularly true where the first letter of the word is different, as the beginning of a mark is of particular importance when comparing marks.

   The tendency of persons to slur the termination of words means that the first element of the trade mark will, in many cases, be of principle importance in determining whether consumers are likely to be deceived or caused to be confused by the use of a Respondent’s trade mark.  Hence when finding that CHEEZY TWISTS was not deceptively similar to TWISTIES, Lindgren J stated in the majority in Aldi Stores Ltd Partnership v Frito-Lay Trading Co GmbH[17]:

   [17] Aldi Stores Ltd Partnership v Frito-Lay Trading Co GmbH [2001] FCA 1874 at [160].

The first syllable of "CHEEZY TWISTS" is "CHEE" and the first syllable of "TWISTIES" is "TWIS". Each is the accented syllable in its mark and there is no resemblance between them. In Conde Nast Publications Pty Ltd v Taylor [1998] FCA 864; (1998) 41 IPR 505 ("Conde Nast") at 511 Burchett J observed that the natural falling of the accent on the first syllable in "EUROVOGUE" emphasised that compound word as distinct from the registered trade mark "VOGUE". To the extent that sound is relevant in the present case, the analogous argument has greater force because, in the case of "CHEEZY TWISTS", the accented syllable is the first of two syllables in a separate word. In both Conde Nast and the present case, the first and accented syllable of the sign used by the alleged infringer bears no resemblance to the first and accented syllable of the registered mark.

Furthermore, the word TEKA gives rise to an idea, whilst the word DEKA does not.  Confusion between two trade marks will be less likely when one mark gives rise to an idea in the mind of consumers that is absent from the other mark.  One of the dominant features of the word TEKA is its similarity to the word ‘tech’ which is commonly used as an abbreviated form of the word technology. The Teka Trade Marks would leave consumers with the subliminal idea that the goods and services of Teka are created with, or contain, cutting edge advanced technology. No doubt this is a favourable connotation, which the Opponent is happy to benefit from, whether it was intentionally created or not. The Opponent’s own evidence (see paragraph 13 of the First Lopez Declaration) shows that this idea of technical innovation is a key part of their brand. However, the public are not likely to draw any such connotation from the word DEKA, as it has no resemblance at all to the word ‘tech’ or any similar term. As a result, consumers would draw different ideas from seeing the two trade marks.

The DEKA Logo Mark features a stylised version of the word DEKA written in capital letters, with a logo device sitting above the word. The logo device is comprised of a square and two red triangles, which together form a larger triangle.

The Teka Trade Marks feature a stylized version of the word TEKA written in a mix of capital and lower case letters, with the horizontal portion of the letter ‘T’ extended across the whole of the word, and a prominent circle sitting over the letter ‘T’ as well.

The overall appearance of the marks is very different. The font and style in which the respective marks are written is clearly very different. The additional visual elements in the respective marks – the triangle device in the DEKA Logo Mark, and the circle in the Teka Trade Marks – look nothing alike, and give very different visual impressions.

Even without taking into account these other distinguishing features, there is a clear visual difference between the words DEKA and TEKA, as discussed above in relation to the Deka Australia Word Mark.

Furthermore, one of the trade marks conveys an idea to the consumer whilst the other does not, as discussed above in relation to the Deka Australia Word Mark. The Teka Trade Marks are likely to be subliminally linked with some kind of technological superiority, while no similar connotation would be inferred from the DEKA Logo Mark.

…

Neither the Deka Goods nor the Teka Goods are goods that would be purchased at a whim.  They are certainly not in the same category as fast moving consumer goods, and deceptive similarity is less likely to occur with such higher priced goods with technical specifications as consumers will take longer to consider the purchase.[18] The provision of these goods occurs in the context of significant consideration by the consumer, who is likely to receive documentation and take a significant time in considering whether to purchase the Teka Goods. According to paragraph 20 of the First Lopez Declaration, the products sold by Teka in Australia range from three hundred dollars to thousands of dollars. Similarly, the Deka Goods represent a significant investment by consumers which means that the consumer will take particular care and diligence. This context dictates that the risk of confusion will be low.

[18] See Hypertec Pty Ltd v. Kabushiki Kaisha Tec [1996] ATMO 20

1. As I said at the hearing, it had not occurred to me to give meaning to the Opponent’s Mark based on some connotation it might derive from “tech” or a similar word.  Nonetheless, I concede that some persons may see the Opponent’s Mark as coloured in that way and so perceive a conceptual difference between the marks, or rather, the one mark having some suggestive quality and the other mark having none, and so detect a point of distinction that way. 

2. However, I am not so persuaded to treat the word “AUSTRALIA” as a point of differentiation.  On the contrary, I would think that if confusion between TEKA and DEKA is likely, then that confusion is not diminished by addition of a country name.

3. Nor do I regard the stylisation of either the trade mark of application 1664084, or of the Opponent’s Mark, to amount to very much.  Instead, for all purposes of comparison I consider the only live question to be whether the word elements “teka” and “deka” are similar and I regard them as very similar.  They are both short, to many people at least, invented words with identical, hard, second syllables.  They differ by one letter.  To the extent that in many cases the beginning of trademarks are stressed, here the letters ‘T’ and ‘D’ are both plosives and are similar aurally and very capable of being misheard.[19]  Looked at in another way, they are both set apart from the stock of ordinary English language words by the unusual use of a letter “k” to signal what in English are the “ck” or “ch” phonemes and by a second syllable, “ka”, which is an essentially unused termination element of English words.[20]

   [19] Regarding aural use, see section 7(2) of the Act which states: “To avoid any doubt, it is stated that, if a trade mark consists of the following, or any combination of the following, namely, any letter, word, name or numeral, any aural representation of the trade mark is, for the purposes of this Act, a use of the trade mark.”

   [20] All of which distinguishes the comparison here from the reasoning in London Lubricants (1920) Limited's Application to Register a Trade Mark (1925) 42 RPC 264 where Sargant J noted at p. 279 “the tendency of persons using the English language to slur the termination of words also has the effect necessarily that the beginning of words is accentuated in comparison, and, in my judgment, the first syllable of a word is, as a rule, far the most important for the purpose of distinction.”

4. In Tivo, Dodds-Streeton J said:

   In my opinion, however, the TiVo and Vivo trade marks are deceptively similar.

   Save for the different commencing letter, which is pronounced differently in English, according to Dr Cox’s evidence, ordinary Australians would probably pronounce the identical components of each word (the “-IVO” element) in the same way as “ee” and “voh”.  Thus, each word consists of two syllables, the second of which is identical, while the first is distinguished in spelling and aurally (in the most probable pronunciation) only by a single initial consonant.

   The cases are not entirely consistent in relation to whether, and if so, which parts of words are more likely to be slurred, emphasised or misheard, and much appears to depend on the particular circumstances of, and the evidence led in, individual cases.

   In Aristoc, Viscount Maughan considered that a first letter (if an “a”) was more likely to be slurred. In Unichema, the Senior Examiner considered that the first syllable would be pronounced with more care and would be more likely to be fixed in the mind. In Prefel, the Senior Examiner considered that the first syllable of a word would generally be the most important for the purposes of distinction.

   The authorities consistently recognise, however, that as a matter of common experience, people often do not read words carefully and do not pronounce them distinctly.

   In the present case, there was no expert evidence that people tend to pronounce initial syllables more carefully or distinctly and indeed, the marks at issue do not commence with different syllables but only with different consonants.  While Dr Cox’s uncontradicted evidence was that “T” and “V” would be pronounced quite differently, there was nothing to suggest that ordinary speakers would place particular emphasis on the initial consonant of each of the words or articulate it with particular care relative to other parts of the word.

   “-IVO”, the component common to both marks, appears dominant as it comprises almost the entirety of each mark.  It is not descriptive of the relevant goods and services for which the marks are registered.  It has no apparent meaning and the substantial common element of the marks is thus distinctive, thus, as Gyles J observed in Pfizer Products, inviting attention to sound as well as sight. It is identically spelt and probably identically pronounced, and the impact of the aural similarity of the distinctive, dominant component is likely to be very strong, particularly when allowance is made for careless pronunciation, cursory reading and imprecise articulation in the context of imperfect recollection.

   In contrast to Pfizer Products, there was no evidence that audio visual products are commonly supplied under trade marks which are identical save for a single commencing letter, which could reduce the likelihood of confusion. While Vivo relied on the registration of five marks incorporating “IVO” in class 9 (NVIVO, RIVO, AQIVO, EVOKE VIVO and ACTIVO), the marks were either registered in respect of goods unknown or goods other than audio visual and (save for a single mark) had two added consonants, added syllables or added words.

   Nor, in my view, did the evidence establish that Vivo had any meaning which, as an aide memoire, would materially reduce the likelihood of confusion amongst consumers.  While TiVo is a non‑word and Vivo has some uses as a word in English, Dr Cox did not contend that Vivo was itself an English word.  The uses she instanced were, as she acknowledged, relatively infrequent, and in my view, relatively esoteric.  There was nothing to suggest that the Latin, musical or acronym usage was sufficiently widespread within the broad class of purchasers of audio visual products to accord it much weight.

   In my opinion, the identical two syllable “ee voh” termination of each mark, which has no meaning and is distinctive, rather than descriptive, of the goods and services within the scope of registration, creates a marked aural similarity, which is not displaced by the different initial consonants or any heightened likelihood of distinction on recollection due to the meaning of the word “Vivo” as a foreign word or acronym.

   While the identical letters “‑ivo” in each mark creates some visual similarity, I do not think the marks deceptively similar on a visual comparison, as they include a visually different initial letter and, as Vivo is a device mark, are differently represented.  Nevertheless, in the context and circumstances of sale, the difference in appearance would not preclude the likelihood of confusion, as in my view, in a substantial proportion of cases, the aural effect and impression of the mark are likely to be of greater significance that the visual effect and impression.[21]

   [21] At [161]-[173].

1. Lopez 1 refers to confusion between the trade marks in Malaysia[22] but there is no helpful detail in relation thereto.  At the time Lopez 2 was signed, more than a year after the Priority Date, the range of products distributed in Australia by the Opponent was detailed as being ovens, microwave ovens, coffee machines, hobs, hoods, dishwashers, washing machines, dryers, fridges and sinks.[23]

   [22] Lopez 1, [6].

   [23] Lopez 2, [8], Annex. 1.

2. The Deka Goods described as “heating apparatus” or “apparatus for water heating” might be urns or hobs or kettles or any one of a range of larger or smaller, fixed or portable, domestic or commercial, items. Those goods may very well be sold through the same retail outlets and side by side with the goods described in Lopez 2, or more precisely for the purposes of section 44, “devices and accessories for cooking”. Applying the test I have outlined and taking account of the resemblance of the trade marks, my finding is that the likelihood of confusion or deception is significant.

3. With respect to application 1664084, I find that the Opponent has established its opposition under section 44 of the Act in relation to “heating apparatus”, “apparatus for water heating” and “heating installations (water)”.

4. With respect to application 1664085, I now return in the context of this enquiry into deceptive similarity to the Applicant’s submission, made earlier at [30], that “it is uncommon for the manufacturers of home appliances to provide retail services”.  There is no compelling evidence of that assertion.  Lopez 1 shows that the Opponent does not itself sell its goods in Australia.  Instead, the evidence is that the Opponent’s goods are sold through major retail chain stores.  In my observation many of those stores sell their goods online.  From the perspective of notional use of the DEKA AUSTRALIA trade mark, I find that a significant number of persons seeking to avail themselves of the Applicant’s retail services under the DEKA AUSTRALIA trade mark would be cause to wonder whether goods bearing the Opponent’s Mark had the same source.  I find, further, that this cause for wonderment would be even greater in the context of wholesale services.

5. In the result, the section 44 ground of opposition has been partially established, that is, in relation to all of the services of application 1664085, and in relation to those goods of 1664084 being “heating apparatus”, “apparatus for water heating” and “heating installations (water)”.

Section 60

1. Section 60 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.

1. The Opponent’s success under section 60 is contingent upon proof of a reputation in the Opponent’s Mark in Australia before the Priority Date. In McCormick & Co Inc v McCormick [2000] FCA 1335; (2000) 51 IPR 102; [2000] AIPC 38-192 (‘McCormick’) at [81] Kenny J said of reputation:

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

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

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

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

2. For the purposes of section 60, the question is whether consumers will have cause to wonder whether the Trade Marks signify that the Deka Goods and/or the Deka Services emanate from the Opponent. In practical terms, that requires that I assess the likelihood of deception or confusion resulting from the combined effects of the reputation of the Opponent’s Mark, the degree of similarity of the trade marks and finally, the nexus of the goods and services.

3. In this case I find that the section 60 ground falters for want of proof of a specific reputation in Australia at the Priority Date of the Trade Marks. The Opponent’s Australian sales commenced in 2007[24] with goods being made available via its local distributor, Teka Australia Pty Ltd.  Prior to that date (and since) the Opponent has sold its goods internationally.  Much of the evidence provided in Lopez 1 goes towards establishment of reputation overseas.   Confidential sales figures are given but they are not indicative of burgeoning Australian sales over the years leading up to the Priority Date.  Moreover, there is some ambiguity as to how those confidential figures relate to goods bearing the Opponent’s Mark.  The same can be said of the evidence of Australian promotional expenditure by the Opponent.

   [24] Lopez 1, [18] et.seq.

4. Further, given my earlier observations in relation to section 44, I would in general terms agree with the Applicant’s submission that “[a]ny reputation enjoyed by the Opponent would be confined to the range of kitchen and laundry appliances provided by it under the TEKA brand.”

5. I find that the Opponent’s Mark had a limited reputation at the relevant time. The danger of confusion or deception is already clear from what I have said in regard to section 44. I need not find that the section 60 ground of opposition fails, only that it would not rise any higher than the section 44 ground and the findings that I have made already in connection therewith.

Section 42(b)

1. In the absence of reasoned argument from the Opponent I must treat this ground of opposition rather mechanically. Section 42(b) provides that an application for the registration of a trade mark must be rejected if its use would be contrary to law. This ground is most frequently argued on the basis of potential breaches of tort law (passing-off) or contravention of consumer protection legislation.

2. So, for example, section 18 of the Australian Consumer Law (‘ACL’) within Schedule 2 of the Competition and Consumer Act 2010 provides:

   18  Misleading or deceptive conduct

   (1)  A person must not, in trade or commerce, engage in conduct that is misleading or deceptive or is likely to mislead or deceive.

   (2)  Nothing in Part 3‑1 (which is about unfair practices) limits by implication subsection (1).

   Note:          For rules relating to representations as to the country of origin of goods, see Part 5‑3.

3. Subsection 29(g) of the ACL provides:

   29  False or misleading representations about goods or services

   (1)  A person must not, in trade or commerce, in connection with the supply or possible supply of goods or services or in connection with the promotion by any means of the supply or use of goods or services:

   […]

   (g)  make a false or misleading representation that goods or services have sponsorship, approval, performance characteristics, accessories, uses or benefits;

   […]

   Note 1:       A pecuniary penalty may be imposed for a contravention of this subsection.

   Note 2:       For rules relating to representations as to the country of origin of goods, see Part 5‑3.

4. The principles which apply are those enunciated in relation to the corresponding provisions in the predecessor of the ACL – the Trade Practices Act 1974 – in particular section 52.  In Re Equity Access Pty Limited v Westpac Banking Corporation and Westpac Savings Bank Limited and Challenge Bank Limited [1989] FCA 506; 16 IPR 431 Hill J at said [41]:

   1. For conduct to be misleading or deceptive the conduct must convey in all the circumstances of the case a misrepresentation: Taco Bell[25] at 202. In the present case the misrepresentation on the part of the respondents is said to be that the financial product advertised and marketed by each of them is the product of the applicant or that there is some business relationship between the applicant and each of the respondents or that the applicant has endorsed the respective product of the respondents.

   2. There will however be no contravention of s.52(1) of the Act unless error or misconception results from the conduct of the corporation and not from other circumstances for which the corporation is not responsible: Puxu[26] per Gibbs CJ at p 6 and per Mason J at p 15, Global Sportsman Pty Ltd v. Mirror Newspapers Ltd [1984] FCA 180; (1984) 55 ALR 25, at p 34.

   3. Conduct will be likely to mislead or deceive if there is a “real or not remote chance or possibility” of misleading or deception regardless of whether it is less or more than 50%: Global Sportsman at p 34. The question of whether conduct is misleading or deceptive or likely to mislead or deceive is an objective question which the Court must determine for itself. Hence evidence that persons in the relevant class have been misled will, although admissible, not be determinative. In some cases however such evidence will be very persuasive: Puxu per Gibbs CJ at pp 198-9.

   4. Conduct of a corporation causing mere confusion or uncertainty in the minds of the public in the sense that they may be caused to wonder whether two products may have come from the same source is not necessarily coextensive with misleading or deceptive conduct: Puxu at p 100; Bridge Stock Brokers v. Bridges [1984] FCA 391; (1984) 57 ALR 401 at p 413 per Lockhart J. Since actual deception need not be shown the Court must consider whether a reasonably significant number of potential purchasers would be likely to be misled or deceived: Weitmann v. Katies Ltd (1977) 29 FLR 336, 343. The test in passing off cases is usually expressed as being whether a “substantial number of persons likely to become purchasers ... are liable to be deceived by the defendant’s use of the name. On the other hand it is not necessary to show that all, or substantially all, persons in the market associate the name with the plaintiff’s goods, if this can be shown of a substantial proportion of persons who are probably purchasers of the goods of the kind in question.” (per Wilberforce J, as he then was, in Norman Kark Publications Ltd v. Odhams Press Ltd (1962) RPC 163 at 168 and see Saville Perfumery v. June Perfect Ltd (1941) 58 RPC 147 at 175-6, 10th Cantanae Pty Ltd v. Shoshana Pty Ltd (1987) 79 ALR 299 at 315 per Gummow J).

   5. In a case such as the present the applicant must establish that it has acquired the relevant reputation in the name, that is to say that the name had become distinctive of the applicant’s business in a particular country or geographical area: Sheraton Corporation of America v. Sheraton Motels Ltd (1964) RPC 202; BM Auto Sales Pty Ltd v. Budget Rent A Car System Pty Ltd (1976) 12 ALR 363. However at least in some circumstances very slight activities may be found to be sufficient to establish that a name has become distinctive of a person’s business in a particular country: Miki Shoko Co Ltd v. Merv Brown Pty Ltd (1988) ATPR 40-858.

   6. Section 52 is not confined to conduct which is intended to mislead or deceive: Puxu per Gibbs CJ at p 197 and a corporation which acts honestly and reasonably may none the less engage in conduct that is likely to mislead or deceive: Yorke v. Lucas [1985] HCA 65; (1985) 61 ALR 307 at p 309.

   [25] Taco Company of Australia Inc v. Taco Bell Pty Ltd [1982] FCA 136; (1982) 42 ALR 177

   [26] Parkdale Custom Built Furniture Pty Ltd v. Puxu Pty Ltd [1982] HCA 44; (1981-2) 149 CLR 191

5. For many of the same reasons I have already given in relation to sections 44 and 60, there is nothing before me to suggest that use of the Trade Marks would be contrary to the provisions of the ACL, nor any misrepresentation that might enliven a successful claim of passing-off. This ground of opposition has not been established.

Decision

1. Section 55(1) of the Act provides:

   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:For limitations see section 6.

2. My decision is to refuse to register both application 1664084 and application 1664085.

3. If, within 14 days of the date of this decision, the Applicant makes application to amend application 1664084 to remove “heating apparatus”, “apparatus for water heating” and “heating installations (water)” therefrom, then application 1664084 can proceed to registration one month thereafter.

Costs

1. In the event that it was the successful party, the Applicant made submissions as to why it might be entitled to an award different from the amount ordinarily calculated in accordance with Schedule 8 of the Trade Mark Regulations 1995 premised on the Opponent’s failure to engage in the hearing or outline its case by way of written submissions.  Absent those submissions there has been no claim for costs by the Opponent and I think it fitting that there be no award in these circumstances.

Debrett Lyons

Hearing Officer

Trade Marks Hearings

24 May 2017