Toyo Tire & Rubber Co Ltd v Jim Souvaliotis & Theo Kourtis

[2003] ATMO 37

TRADE MARKS ACT 1995

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

Re:Opposition by Toyo Tire & Rubber Co., Ltd to registration of trade mark application 752482 (7, 12) - NITTO - filed in the name of Jim Souvaliotis & Theo Kourtis.

Date of Decision:

19 June 2003

Delegate:

Hearing Officer Jock McDonagh

Representation:

Opponent - Mr Michael Kirov of Spruson & Ferguson

Applicant - ( no appearance)

Decision:

ss.44 and 59 grounds dismissed

s.58 ground allowed unless application amended within 14 days to exclude tyres

No award of costs

Background

1. The applicants Jim Souvaliotis and Theo Kourtis filed trade mark application number 752482 on 12  January 1998, for the trade mark nitto, in respect of the following goods:

   Class 7: Exhaust manifolds, exhaust systems, mechanical superchargers, turbochargers, filters

   Class 12: Alloy aluminium rims, steel rims, suspension springs, fittings for suspensions, shock absorbers, steering wheels, and other spare parts and accessories (all being parts of automobiles) in this class including tyres, filters and brake pads

2. Acceptance of the application was advertised in the Official Journal of Trade Marks on 20 April 2000.  On 19 July 2000 a notice of opposition, listing numerous grounds of opposition, was filed on behalf of the opponent, Toyo Tire & Rubber Co., Ltd, by its trade mark attorneys, Spruson & Ferguson.

3. Evidence in support was duly filed with the Trade Marks Office and served on the applicant.  The applicant has not filed or served evidence in answer. The hearing was in Sydney on 12 March 2003 before me as a delegate of the Registrar of Trade Marks.  The opponent was represented by Mr Michael Kirov of Spruson & Ferguson, Attorneys. The applicant did not appear or put in written submissions.

4. Three grounds of opposition were relied on at the hearing, being sections 44, 58 and 59 of the Trade Marks Act 1995 (“the Act”).

The Evidence

1. The evidence consists of the following statutory declarations.

Date		Declarant	Description	Annexes
Evidence	in Support
1.6.2001		Michael RUMORE	Private Enquiry and Commercial Agent	N/A
14.8.2002		Shingo MATSUOKA	Director-Marketing Tyre Division Toyo Tyre & Rubber Australia Ltd	SM1 to SM4

1. No evidence has been furnished by the applicant.

2. Mr Rumore’s declaration states that he was a private enquiry and commercial agent who had visited the applicants’ business premises. Mr Rumore observed no trade mark use of the applied for mark. He also says that he spoke to both applicants, separately, and that both stated that they had not used the nitto mark and that Mr Souvaliotis stated that they did not intend to use the mark until it was registered and that they had no interest in tyres or related products made by the opponent.

3. Mr Matsuoka’s declaration states that he is a director of a subsidiary company of the opponent and had previously been a manager of the opponent from 1977 to 2000. He is aware that tyres bearing the nitto mark were sold in Australia between 1968 and 1979. Although the mark continued on tyres sold in other countries, it was not used for the Australian market from 1980. He states that the tyres were advertised in magazines available in Australia between 1980 and 1998. He also stated that the opponent’s website, accessible in Australia, features nitto branded tyres.

Grounds, Submissions and Discussion

1. The opponent’s representative made a preliminary submission regarding the situation where a party was not represented at a hearing. He stated that where an opponent has raised matters that require an answer and the applicant has not put anything to answer the, the Registrar should not act as an advocate for the applicant. He cited Camelot Design Industries Group Pty Ltd v Bernard Leser Publications P/L (1987) 9 IPR 596 and Eno v Dunn (1990) 7 RPC 311.

2. I accept that position. Indeed, on first principles, for a decision maker to act as advocate for a party would breach the rules of natural justice. However, the applicant’s absence from the hearing does not alter the evidentiary onus on the opponent to make its case.

3. Mr Kirov also advised that the opponent would only proceed on grounds 4, 6 and 7. I formally dismiss the remaining grounds of opposition.

Ground 4 - Section 44, Deceptive Similarity

1. So far as is relevant, section 44 states:

Identical etc. trade marks

44.(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) it 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.

1. The opponent cited trade mark 508317 - nitto nitto kohki co ltd and device -having a priority date of 10 April 1989, which is earlier than the applicant's priority date. The registration is for Class 6 goods, being All goods included in class 6 including pipe joints. The trade mark is as follows:

1. 
   The opponent is not the owner of the cited mark. This is not requirement for an opponent to succeed under section.

2. The matters for determination are:

   (a)whether the applicant's mark is deceptively similar to the registered trade mark cited by the opponent in that it so nearly resembles that mark that it is likely to deceive or cause confusion (Section 10); and

   (b)whether the trade mark cited by the opponent is registered in respect of similar goods; that is, the same goods or goods of the same description.

3. Having considered the tests for deceptive similarity as restated by French J in Registrar of Trade Marks v Woolworths (1999) 45 IPR 411, I am satisfied that, subject to the relationship between the competing goods, the competing marks are deceptively similar.

4. However, I am not satisfied that the goods are similar. I accept the principle that goods in one class may be similar to goods in another, as submitted by Mr Kirov for the opponent. In this case, when considering the nature of goods specified by the applicant as compared to those in class 6, the uses of the respective goods and the trade channels through which they are bought and sold, I am not satisfied that they are similar goods. The applicant’s goods are clearly automotive spare parts and accessories, whereas the cited registration relates to a general range of pipes and tubes of metal and nuts, bolts and washers.

5. I find this ground of opposition is not established.

Ground 6 - s58, Applicant not Owner of Mark

1. Section 58 provides that the registration of a trade mark may be opposed on the ground that the applicant is not the owner of the trade mark. In order to establish this ground, it is incumbent upon an opponent to show that the applicant is not the first user in trade in Australia of the applied-for trade mark. To do so, the opponent must show, at a minimum, that not only is the applied-for trade mark substantially identical to the older trade mark, but that it is applied to the same kind of goods: Re Hicks’ Trade Mark (1897) 22 VLR 636 at 640.

2. The opponent has filed evidence from Mr Matsuoka, a director of a subsidiary company of the opponent and previously a manager of the opponent from 1977 to 2000. He declared that he was aware that tyres bearing the nitto mark were sold in Australia between 1968 and 1979. Although the mark continued on tyres sold in other countries, it was not used for the Australian market from 1980. He states that the tyres were advertised in magazines available in Australia between 1980 and 1998. He also stated that the opponent’s web site, accessible in Australia, features nitto branded tyres.

3. Mr Matsuoka’s evidence satisfies me that the opponent was the first user in trade in Australia of the applied-for trade mark in respect of tyres. This is the same thing as one of the specified goods applied for in class 12.

4. However, its is patently not the same kind of thing as the class 7 goods, and questionable in respect of the remaining goods specified under class 12.

5. The opponent submitted that tyres were the same kind of thing as alloy aluminium rims and steel rims. It was further submitted that both the applicant’s and the opponent’s goods are parts of motor vehicles, and such goods would be marketed in a similar way to the same type of people.

6. In Bob Jane Corporation Pty Ltd v Silverstone Tire and Rubber Co SDN BHD [1998] ATMO 26 (5 June 1998), Hearing Officer Williams discussed in detail how “”the same kind of thing” was a narrower definition than “goods of the same description”, and concluded that “[t]he differing inherent natures of wheels, made of metal, and tyres and tubes, made of rubber ... are very different things made by different people.” I agree with both the reasoning and conclusion. I find that, with the exception of tyres, the opponent’s goods are not the same kind of thing as the remaining goods in the applicant’s statement of goods.

7. I am satisfied that the opponent has established this ground in respect of tyres in class 12 only. I am not satisfied that the ground has been otherwise established.

Ground 7 - s59 - Applicant not intending to use trade mark

1. Mr Kirov submitted that the statement by the applicants, Messrs Kourtis and Souvaliotis, to Mr Rumore evidenced that they did not intend to use the mark.

2. While it is true that Mr Souvaliotis appears to demonstrate an intention not to use the mark in respect of tyres, the remaining evidence merely suggests an unwillingness on the part of the applicants to use the mark until it is registered. An applicant is entitled to wait until registration before using an applied for mark without penalty.

3. I am not satisfied that the opponent has established this ground.

Decision

1. A ground of opposition has been established.  I am required by s 55 to now decide on an appropriate action. 

2. My decision is to refuse to register the application as it stands, but that if within 14 days from the date of this decision the application is amended to delete from the statement of goods in class 12 "tyres," it may proceed to registration after one month from the date of this decision. If the Registrar has been served with a notice of appeal before that time, I direct that registration of the application shall not occur until the appeal has been decided or discontinued.

3. Either way, I decline to make an award of costs. Each party is to bear its own.

Jock McDonagh

Hearing Officer

Trade Marks Hearings

19 June 2003