Toyota Motor Corporation v Changan Automobile (Group) Liability Corp, Limited

[2008] ATMO 27

TRADE MARKS ACT 1995

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

Re:Opposition by TOYOTA MOTOR CORPORATION to registration of trade mark application No. 947,904(12) ARROWHEAD AND ELLIPSE DEVICE filed in the name of CHANGAN AUTOMOBILE (GROUP) LIABILITY CORP, LIMITED

Delegate:

Terry Williams

Representation:

Opponent: Gerard Skelly, Trade Mark Agent, of Spruson & Ferguson, Patent and Trade Mark Attorneys

Applicant: Paul Wyk, Patent Attorney, of APT Patent and Trade Mark Attorneys

Decision:

2008 ATMO 27/08

S 52 opposition: deceptive similarity not established, registration proceeding.

Background

1. Trade mark application no. 947904 comprises the following device:

1. It was filed on 21 March 2003 by Changan Automobile (Group) Liability Corp, Limited of Chongquing, China, (“the applicant”).  It claims rights in respect of the following goods: 

   Automobiles; electric vehicles; shock absorbers; suspension systems for vehicles; wheels for vehicles; vehicle chassis;  engines for land vehicles; steering wheels for vehicles; driving motors for land vehicles;  automobile bodies; windscreens.

2. The application has been examined and advertised as having been accepted for possible registration.  Toyota Motor Corporation (“the opponent”) has opposed registration.

3. The parties have used the process under Part 5 of the Trade Mark Regulations to file and serve evidence to support their respective positions.  Ultimately, the matter was set down for me to hear and decide, under delegation from the Registrar of Trade Marks.  At the hearing, Gerard Skelly, solicitor and trade mark attorney, of Spruson & Ferguson, Patent and Trade Mark Attorneys, appeared for the opponent.  The applicant was represented by Paul Wyk, patent attorney, of APT Patent and Trade Mark Attorneys.

4. The genesis of the present matter is that the opponent has variously used and registered the following trade marks:

1. Of these, the version shown on the left is the originally-registered form.  It is registered in class 12 under number 509292.  The version on the right is the one currently used in respect of the motor vehicles and services in which the opponent trades.  In this form it also features prominently in advertisements and so on and was first registered in 1999 under number 791132.  However, the difference between the two registered trade marks is not significant in what follows and, for convenience, I will refer to the opponent’s trade marks in the singular.

The Evidence

1. The parties have filed and served evidence supporting their respective position.  The opponent’s evidence in support comprises the statutory declarations of Michael Kirov, with exhibits MJK-1 to MJK-3 inclusive, and Saito Akihiko, with the Exhibits SA1 to SA10 inclusive. 

2. The applicant’s evidence in answer comprises the statutory declaration of Yun Jiaxu together with exhibits JY-1 to JY-11 inclusive.  This evidence seeks to establish that the applicant, which dates back to the nineteenth century, commenced commercial production of vehicles in 1983.  The logo which is the subject of the present application was first adopted in relation to vehicles in 1997 and it has been used in some twenty-five different countries since 2000.  The extent of usage outside China is, however, comparatively limited.  

3. The evidence of the parties can be of invaluable assistance to a Hearing Officer in understanding the relevant commercial background.  The opponent is currently the world’s third largest manufacturer of automobiles.  It enjoys a significant reputation in its established “Bull-Horn” trade mark in Australia.  The trade mark, in the form of a badge on motor vehicles, is ubiquitous in Australian car-yards and on our public roads.  However, essentially (and for reasons which will emerge) much of the detail of this material can be set aside since this decision turns not on evidentiary matters but on whether the respective marks are deceptively similar. 

Grounds of Opposition

1. At the hearing, Mr Skelly confirmed that the opponent would be relying only on grounds of opposition under Sections 44 and 60 of the Trade Marks Act1995 (“the Act”).  For that purpose he conceded that the applicant’s and opponent’s trade marks are not substantially identical.  The remaining grounds as set out in the notice of opposition were not pursued, it being common ground that my decision under the two provisions to which I have referred would entirely dispose of the opposition.

2. Sections 44 and 60 are not at all similar in their structures. However, they share a common hinge, the essential issue of “deceptive similarity”[1].  That issue will therefore decide the entire opposition.  The term in question is itself defined by s 10:

   For the purposes of this Act, a trade mark is taken to be deceptively similar to another trade mark if it so nearly resembles that other trade mark that it is likely to deceive or cause confusion.

   [1] It is common ground that the original, unamended, form of s 60 is the relevant provision

Submissions

1. The opponent and the applicant both provided detailed written submissions prior to the hearing.  At the hearing Mr Skelly elaborated on the opponents written submissions.  The applicant’s representative, Mr Wyk, made oral submissions in addition to the written outline of submissions provided.

2. In providing an interpretation of the expression “deceptive similarity” and in discussing those legal principles which are applicable, Mr. Skelly identified the relevant leading authorities.  He presented appropriate extracts and quotations from same, and gave an analysis of the position at law.  By way of analogy, he then made extensive reference to decided cases as providing examples where the findings support the opponent’s position.  He then considered deceptive similarity against the background of the relevant goods and usages in the motor vehicle industry and he made the following points, namely:

   ·Motor vehicles are expensive and potential purchasers give careful consideration before purchase;

   ·The industry features commercial interests, joint ventures and co-branding between different manufacturers;

   ·Consumers might at least be caused to wonder whether the respective goods originate from the same source;

   ·It is necessary to consider all aspects of the motor vehicle market including parts and accessories, service providers, repairers and the second-hand market;

   ·The respective trade marks offer no verbal elements or cues.  The comparison comes down to visual perception with allowance for imperfect recollection;

   ·The state of the register indicates that while there are many entries containing an ellipse most of them also contain some verbal element. There are relatively few marks containing a combination of ellipses;

   ·Perception of the respective trade marks may vary depending upon each person’s awareness.  The opponent’s trade mark may be seen as a “Bull-Horn” or as an arrangement of different ellipses or ovals;

   ·The applicant’s mark is unused in the Australian market, and it would be viewed for the first time. There are no mental cues associated with it.  The first impression will have a significant bearing on how this mark is recalled, and the recollection of it is likely to be quite vague;

   ·Neither mark is likely to be recalled by reference to a known image.  They are abstract images, making them harder to recall and increasing the risk of confusion.

3. For the applicant, Mr Wyk made submissions which essentially followed his written outline.  Mr. Wyk referred to the examples of decided cases on which the opponent relied and provided two examples of his own, Wiley Publishing Inc. v. Moondance Pictures Pty. Limited (2004) ATMO 70 and Strong and Strong v.t-sugi Agency Pty. Limited (2006) ATMO 96. He then made reference to the second edition of Shanahan, Australian Law of Trade Marks and Passing Off (1990) and the relevant test of comparison in relation to elements which are a common denominator or common to the trade.

4. The applicant’s position is that the opponent’s trade mark creates an idea.  It is, argued Mr Wyk, a stylised T (presumably for “Toyota”) that can be seen within a rounded border, with the transverse section forming the top of the T.  Alternatively, the opponent’s mark could, he argued, be seen as a bull’s head, and that feature of the mark is clearly apparent.  The essential point is that the opponent’s trade mark conveys a definite idea, but he submitted that the present application is more abstract and that it does not convey the clear message of the opponent’s mark.  The presence of an elliptical border does not, he contended, have an impact.  That element is a common feature which appears in a great many trade marks.

5. Mr. Wyk pointed out that the applicant’s trade mark has been used in a number of countries where it has been able to co-exist with the opponent’s mark and without apparent conflict.  There are no instances of confusion or deception which have been raised by the opponent.

6. In reply, Mr. Skelly submitted as follows:

   ·In considering this matter we must attribute a fair and notional use to each of the two marks and we must compare them on that basis.

   ·The depiction of the opponent’s mark as a representation of the letter T stretches the mark somewhat. Rather, it needs to be seen as a series of ellipses.

   ·The respective marks should be seen as abstractions only, and they should be considered devoid of any imputed knowledge.

   ·There is concern on the part of the opponent that the intention of the applicant may be to use its trade mark rendered in the colour red.  The opponent predominantly uses the colour red, so that this element (were it to arise) would further increase the chance of confusion occurring.

Deceptive similarity – yes or no?

1. The decision in this instance hinges on the interpretation of the expression “deceptively similar”.  The relevant principles which are applicable are oft-quoted, familiar and well-established.  The principles which can be distilled from the relevant authorities and which are of assistance in the present matter are as follows:

   a)    To show that a trade mark is deceptively similar to another it is necessary to show a real tangible danger of deception or confusion occurring.  A mere possibility is not sufficient.

   b)   A trade mark is likely to cause confusion if the result of its use will be that a number of persons are caused to wonder whether it might not be the case that two goods come from the same source. It is enough if the ordinary person entertains a reasonable doubt.

   c)    In considering whether there is a likelihood of deception or confusion all surrounding circumstances have to be taken into consideration.  These include the circumstances in which the marks will be used, the goods will be bought and sold, and the character of the probable customers.

   d)   The question of deceptive similarity must be considered in respect of all goods coming within the specification in the application and in respect of which registration is desired, not only in respect of those goods on which it is proposed to immediately use the mark. The question is not limited to whether a particular use will give rise to deception or confusion. It must be based upon what the applicant can do if registration is obtained.

   e)   An attempt should be made to estimate the effect or impression produced on the minds of potential customers by the mark or device for which the protection is sought.

   f)    In deciding the question, the marks ought not to be compared side by side.  It is sufficient if persons who only know one of the marks and perhaps have an imperfect recollection of it are likely to be deceived.

   g)    The impression or recollection which is carried away and retained is necessarily the basis of any mistaken belief that the challenged mark or device is the same.

   h)   The usual manner in which ordinary people behave must be the test of what confusion or deception may be expected.

   i)    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.

   j)    The course of business and the way in which the particular class of goods are sold gives the setting, and the habits and observation of men considered in the mass affords the standard.

   k)    Evidence of actual cases of deception, if forthcoming, is of great weight.

   l)    The question of whether one trade mark so resembles another mark as to be likely to deceive is, in substance, a two stage test.  First, do the marks really look alike, either in part or as totalities?  Secondly if they do, is the resemblance likely to deceive?  The contention that it would be sufficient that the two marks simply convey the same idea has been rejected.

Those factors set the fundamental principles for my comparison of the applicant’s and opponent’s trade marks. 

1. The opponent’s evidence, and in particular the statutory declaration of Mr. Kirov, was relied upon at the hearing as establishing that there are relatively few trade mark registrations which contain a combination of ellipses.  That may well be, however the evidence also serves to indicate the commonality and widespread occurrence in the relevant class (class 12) of device marks which feature the element of an ellipse.  Beyond this, I am aware from my own observations and knowledge that ellipses are common as borders in trade marks on a diverse range of products. 

2. It has been suggested that the applicant’s mark might represent a stylized hat or sombrero but it is hard to see how widespread such a conceptualisation might be.  It might be said that the applicant’s device is otherwise likely to be perceived as comprising an outer ellipse or ring forming a border and surrounding a second element which could variously be depicted as an arrowhead, a stylized chevron, or perhaps a stylized letter D standing on end.  A fair but somewhat unsatisfactory conclusion might be that the applicant’s device is what it is, and does not look particularly much like anything else.

3. The form of device on which the opponent relies includes, as does the applicant’s, an outer ellipse or ring forming a border.  That ellipse surrounds or encloses two additional elements, both being further ellipses, one of which is arranged horizontally and forms the upper portion of the device and the other of which stands vertically and appears compressed or narrowed in its relative proportion.  The opponent’s mark has been portrayed by Mr Wyk as being a stylized representation of the letter “T” but for my part I have difficulty in regarding that element in this way.   The opponent has submitted that its device mark is a representation of a bull’s head or bull’s horns, or alternatively that it may be viewed as an arrangement of interlocking ellipses of different orientation. 

4. I should, I believe, also note the fact that the opponent’s device mark is established and well known to the motoring public, and to those who buy spare parts and accessories or service motor vehicles.  It is familiar – a known quantity, as it were.  Because of that familiarity, consumers and traders may well have a better basis to approach the comparison, so that instances of confusion or deception are less likely to occur.  It remains true, of course, that I must allow for ordinary degrees of imperfect recollection or inattention on the part of a person knowing of the opponent’s trade mark and confronted only with that of the applicant.  However, a person in that position is not approaching the matter in a vacuum.  If I were to draw an analogy with word marks, this would not be a case of the comparison of two strange and abstract invented words; rather, it would be a comparison of a known, everyday word on one hand and a newly-coined word on the other.

5. Motor vehicles are expensive and customers are careful in their considerations.  Similarly, the purchase of spare parts, while perhaps done by busy tradespeople, is not the sort of rushed activity that might be compared to the purchase of a bag of sweets in a supermarket[2].  Typically, at least some level of attention to detail is required such that the right part is selected for the right model and the right year of manufacture. 

   [2] See, for example, LANCER Trade Mark [1987] R.P.C. 303

6. In relation to the present matter, no verbal elements or cues are involved and the respective trade marks are entirely visual in their appeal.  No issues of pronunciation or aural similarity can arise.  There is no one clear verbal “label” that would be likely to suggest itself to a wide group of people as an appropriate way of describing, in particular, the applicant’s trade mark.  Whatever each of the respective marks might be seen as depicting has little bearing on the outcome of this matter.  These trade marks are devices and it is likely, I think, that they will be recalled and compared as such, without the assistance of verbal labels that might be appended to them.

7. Visually, the respective trade marks possess significant points of difference:

   ·     The ellipse border of the opponent’s mark encloses two additional elements.  In the applicant’s mark, only one additional component appears within the ellipse.

   ·     The outer ellipse or border of the opponent’s mark is unbroken, complete and uninterrupted.  By contrast, the elliptical border of the applicant’s mark is broken and incomplete.

   ·     The additional elements of the opponent’s mark are fully enclosed within the elliptical border and those elements are entirely surrounded and encompassed by that border.  In the applicant’s mark the enclosed element protrudes or extends in an upward direction outside the ellipse and beyond that border.

   ·     The opponent’s mark can be seen to take on a three-dimensional effect or impression, perhaps like a rendition of a ring or a bowl.  If that effect is created by the applicant’s mark, it is to a much lesser degree.  

   ·     The lines of visual flow of the applicant’s mark run very strongly vertically and the eyes of the observer are drawn vertically.  That effect is clearly less pronounced in the opponent’s mark, and arguably the opponent’s device is perceivable as an elliptical device with a horizontal flow.

8. However, such a painstaking analysis is not necessarily appropriate.  I am mindful of the need for the respective trade marks to be considered in their entirety.  It is not sufficient merely to seize upon and compare the differences between the respective marks but rather one must give due regard to the overall impression.  As was said in Australian Woollen Mills v FS Walton, 58 CLR 641 at p 658:

   One must bear in mind the points of resemblance and the points of dissimilarity, attaching fair weight and importance to all, but remembering that the ultimate solution is to be arrived at, not by adding up and comparing the results of such matters, but by judging the general effect of the respective wholes'. 

9. Typically, this will come down to a matter of “first impression”, at issue in cases as diverse as Jafferjee v Scarlett, and Dial an Angel v Sagitaur Services Systems Pty Ltd[3].  In the present matter, for any one of a number or reasons among those I have set out, the first impression of one mark will simply be very different to the first impression of the other.  There is nothing about the two marks that would give rise, in my view, to any significant level of confusion. 

   [3] (1937) 57 CLR 115 and 1990 AIPC 90-687 respectively.

10. Nor is there sufficient to give rise to any reasonable doubt that the applicant’s device may indicate some sort of corporate connection with the opponent.  The latter is something that Mr Skelly argued might be inferred from the limited degree of resemblance that is present.  However, having considered this, I think it unlikely.  There is no evidence that the elements in common, such as they are, would invite such an inference.  The likelihood that inference would arise is, I think, very slight.

1. Consistently, I note the evidence that the applicant’s trade mark is used extensively in China, where it coexists with that of the opponent.  The evidence of concurrent use elsewhere in the world is less striking since most of the applicant’s business is quite clearly aimed at its own domestic market.  There is, however, no evidence of any confusion or difficulty in any country to date in relation the use of the applicant’s trade mark.

2. In the course of submissions, Mr Skelly argued that it is likely the applicant would render its trade mark in red.  He saw such use as conflicting with the opponent’s established use of the colour red in relation to the word TOYOTA.  In deference to that argument, I have approached the comparison from the standpoint that there is no basis for assuming that the two trade marks would be used in differing colours, and that, notionally, there is a reasonable prospect that a common colour might arise, and might be red. 

3. After due consideration of all the material before me, I am not satisfied that the applicant’s trade mark is deceptively similar to the opponent’s.  Even on the assumption of an imperfect recollection of the opponent’s trade marks, I do not believe that members of the public, on seeing the trade mark of the applicant, would be either confused or deceived in any way. 

CONCLUSION

1. The opponent has failed to establish deceptive similarity between its trade mark and that of the opponent.  This failure in turn means that none of its grounds of opposition has been established.  Accordingly, I direct that the application 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 shall not occur until either the appeal has been discontinued or, otherwise, the court orders that registration proceed.

2. I direct that the opponent pay the applicant’s costs, subject to the scale.

Terry Williams

Hearing Officer

15 April, 2008