TRS Quality Inc. v Sydney Red Line Retailing Pty Ltd

[2010] ATMO 108

TRADE MARKS ACT 1995

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

Re:Opposition by TRS QUALITY INC. to registration of trade mark applications 1144591 (35) and 1144592 (9) - BATTERY SHACK INSPIRED TECHNOLOGY - filed in the name of SYDNEY RED LINE RETAILING PTY LTD.

Delegate:

Bianca Irgang

Representation:

Opponent: Mr Ben Fitzpatrick of Counsel, instructed by Davies Collison Cave

Applicant: Mr Peter Maddigan of Counsel, instructed by Hazan Hollander

Decision:

2010 ATMO 108

Section 52 opposition: sections 44 and 60 pressed at the hearing – s60 ground of opposition established for all goods and services –use of applicant’s trade marks likely to deceive or cause confusion - no requirement to consider other grounds - Costs awarded against the applicant.

Background

1.     Sydney Red Line Retailing Pty Ltd (‘the applicant’), filed trade mark application numbers 1144591 and 1144592 on 2 November 2006 in classes 35 and 9 respectively of the International Classification of Goods and Services (‘Nice’ classification). Current details of the applications are set out below.

Trade mark:  

Trade mark application:              1144591

Filing Date:  2 November 2006

Specification:  Class 35: Retail services; wholesale services; sales of a variety of goods via an Internet web site or computer network; advertising services; rental of advertising space on the Internet; arrangement of advertising; preparation of advertising material  

Trade mark:  

Trade mark application:              1144592

Filing Date:  2 November 2006

Specification:  Class 9: Batteries; battery leads; battery packs; battery powered beacons; battery starters; battery cables; battery adapters; dry cell batteries; lithium batteries; alkaline batteries; lead acid batteries; computers and computer apparatus; computer parts and accessories; personal digital assistants (PDA's); radios; UHF communication apparatus; VHF communication apparatus; apparatus for radios; mobile telephones; mobile data communications apparatus; MP3 players; rechargeable batteries; digital cameras; amplifiers; antennas; marine navigation apparatus

2.     Both of the applications were accepted for possible registration and the official notices of acceptance were published in the Official Journal dated 8 March 2007. Subsequently TRS Quality Inc. (‘the opponent’) filed Notices of Opposition (‘the Notices’) dated 7 June 2007 to registration of the applications. Thereafter the parties served and filed evidence in accord with the provisions of the Trade Mark Regulations 1995 (‘the Regulations’).

3.     I heard the matter in Canberra as a delegate of the Registrar of Trade Marks on 12 July 2010. The opponent was represented by Mr Ben Fitzpatrick of counsel instructed by Davies Collison Cave. The applicant was represented by Mr Peter Maddigan of counsel instructed by Hazan Hollander.

Grounds of Opposition

4.     The Notices nominated most of the grounds of opposition available under the Act.  The onus is upon the opponent to establish one or more of its grounds of opposition. Gyles J has referred to the standard of proof required in terms of a ‘balance of probabilities’.[1] His Honour’s findings upon that issue, arrived at after a consideration of the relevant authorities, have been discussed with approval by Sundberg J in Chocolaterie Guylian NV v Registrar of Trade Marks[2].

[1] Pfizer Products Inc v Karam [2006] FCA 1663; (2006) 70 IPR 599; (2006) AIPC 92-146

[2] [2009] FCA 891, (2009) AIPC 92-355; (2009) 82 IPR 13, para 22-27

5.     At the hearing the opponent advised that it was not formally withdrawing any of the grounds of opposition listed in the Notice but that it would provide submissions only on section 44 and 60 of the Act. However, the opponent has not provided any evidence specific to prosecuting the grounds under the remaining grounds of opposition. Without more information than the opponent has provided in its evidence these grounds cannot be established. 

Evidence

6.     The evidence of the parties consists of the following declarations:

Declarant	Position	Date Made	Exhibits
Evidence in Support
Tony Victor Lolis	Attorney at Davies Collison Cave	7 April 2008	TVL-1
Robert Kilinski	Senior Vice President of Marketing and Wireless of Radioshack Corporation	1 May 2008	RK-1 to RK-5
Evidence in Answer
Atalay Bayindir	Director and Secretary of Sydney Red Line Retailing Pty Ltd	5 August 2009	AB-1 to AB-4
Evidence in Reply
Tony Victor Lolis	Attorney at Davies Collison Cave	28 October 2009	TVL-1 to TVL-2

Opponent’s Evidence

7.     The statutory declaration of Mr Robert Kilinski (‘the Kilinski declaration’) states that the opponent is a member of the RadioShack Corporation Group of Companies and is the owner of a number of registered trade marks which I will hereafter collectively refer to as the RADIO SHACK trade marks. The details of these registrations are as follows:

Trade mark:  RADIO SHACK

Trade mark registration:             260980

Filing Date:  9 August 1972

Specification:  Class 8: Hand tools including drills and saws; and all other goods in this class

Class 9:All goods included in this class

Endorsements: Registration of this trade mark shall give no right to the exclusive use of the word RADIO. The preceding endorsement(s) were recorded prior to commencement of the Trade Marks Act 1995. Linked with Trade Mark 260980

Trade mark:  RADIO SHACK

Trade mark registration:             329405

Filing Date:  22 February 1979

Specification:  Class 37: Services for repairing electrical, video and sound reproducing and transmitting equipment, and electromechanical equipment, electromechanical instruments and components therefor

Class 42: Retailing, mail order stores, industrial sales and after sal es services dealing in electronic equipment, radio and sound reproducing equipment, electrical and electronic devices, i nstrumemnts equipment and componenets and parts, mechanical devices, tools and other hardware, optical and phtographic e quipment, electrical and mechanical games and toys

Endorsements: Registration of this trade mark shall give no right to the exclusive use of the word 'RADIO'. The preceding endorsement(s) were recorded prior to commencement of the Trade Marks Act 1995. Linked with Trade Mark 329405

Trade mark:  RADIOSHACK

Trade mark registration:             701474

Filing Date:  30 January 1996

Specification:  Class 9: Radios, tuners, amplifiers, speakers, and speaker enclosures; radio receiving apparatus, microphones and switches; intercoms, wireless remote control units, and wireless room monitors; electronic communications equipment; namely, pagers, telephones and facsimile machines and parts therefor; phonograph needles and phonograph records, record players and recording tapes; electronic calculators, dry cell batteries, electrical telephone answering apparatus and telephone amplifiers; microcomputer systems comprising microprocessors, keyboards, video displays, in the nature of CRT's for use in connection with computer displays, computer memories, and data cassette recorders and cassettes having software recorded thereon; video equipment; namely, televisions and satellite TV antennas; optical goods, drafting equipment, slide rules, and drafting sets; multitesters for measuring voltage currents and resistance, voltmeters, ohmmeters, exposure meters, thickness gauges, compasses, microscopes, binoculars, combination telescopes and microscopes, microphotograph attachments, magnifying lenses, built-in test lamps for photographic flash guns, and photographic timers; radar detectors for automotive use, battery testers, DC power supplies, electronic thermometers; electrical components; namely, interference filters, connectors, wire, ground rods, clips, switches, transistors, IC gates, potentiometers, resistors, amplifiers, voltage regulators, flip-flop trigger circuits, counters/dividers for use as IC tuners, IC drivers, voltage comparators, rectifiers, diodes, capacitors, tubular electrolytes, printed circuit boards and terminals therefor, CB and scanner antennas, components for CB antennas, UHF/VHF television antennas, FM antennas, UHF convertor/tuner antenna parts, coaxial cables, twin lead cables, electric soldering irons, soldering guns, electrical engraving pencils, remote control television timer, bicycle radios, photoelectric-eye relay units, antenna rotors, AC line interference filters and battery chargers; VCR multiplying system, decoder/amplifier, video processor, camcorder/VCR dubbing processor, video selector, multiple video distribution center; namely, a system that will send signals from a cable box, VCR satellite system or antenna to several televisions in the same house with one coaxial cable, cable connector, remote control extender, video amplifier/enhancer, stud finder, automobile noise filters used to reduce ignition/alternator, engine and spark plug noise interference, automobile cigarette lighter adapter, fuses, voltage spike protectors, AC powerstrips and outlet plugs, AC extension cords, infrared floodlight security systems, magnets, torches, telephone plugs/jacks/wire/cable/ adapters/tools, satellite TV noise block convertors, wireless TV transmitters/receivers, camcorder carrying cases, tripods, microphones, video lights, cable TV converter, door chimes, AC power cords and extension cords, audio connectors, and adapters, power transformers, AC-to DC voltage adapters, AC-to-AC voltage adapters, DC power cords and extension cords, shortwave antennas, audio transformers, test equipment adapters, multiconductor cable, amateur radio antennas, components for amateur radio antennas, buzzers, relays (AC and DC), mercury switches, relay sockets, solder type printer connectors, IDC type printer connectors, infrared diodes, infrared photo transistors, infrared sensor, temperature module; namely, a thermometer with capabilities to control a buzzer, led, fan or heater at present temperatures; electronic counter module, solar kit, miniature amplifier, magnifying glasses; battery operated, electronically operated, radio controlled, remote controlled, and electrically operated controls for playing games on television screens or monitors

Class 16:Catalogs, reference books in the field of electronics

Class 28:Toys, games and playthings; namely, toy metal detectors; and nonelectronic toys; namely, balls

Class 35: Rendering technical aid and assistance in establishing and operating retail stores specialising in electronic and related equipment

Class 37:Construction and repair; namely, computer repair services

Class 42: Retail store services and mail order retail services in the field of radio and sound reproduction equipment; namely, stereo systems, speakers, phonographs, amplifiers, tuners, public address amplifiers, electronic keyboards, entertainment lighting, microphones, wireless microphones, headphones, mixers, blank audio and video tape, compact discs, stereo cartridges and stylus; equalisers, compact disc players, radios, receivers, rack systems; electrical and electronic devices; namely, alternate current and direct current power adapters, connectors, fuses, integrated circuits, multitesters, power supplies, switches, test equipment and wire and cable; computer hardware, furniture, software and peripherals for school, home, science and business usage; antennas; namely, television, auto, citizens band and satellite; laser vision players; satellite receivers, feedhorns, low-noise blocks and low-noise amplifiers for satellites; antenna mounting hardware; television/video switching distribution equipment; audio/video signal processors; cellular telephones; telephones and telephone accessories; pagers; home security systems; auto security systems; scanners; calculators; hand tools; batteries; battery chargers; electronic and radio-controlled toys; video cassette recorders; video camera recorders; office equipment; namely, facsimile machines, pencil sharpeners and copiers; remote control systems, remote control switches; intercoms; televisions; radar detectors; automobile compact disc players; amateur radio transceivers and accessories, marine radio transceivers and accessories, citizens band radios, transceivers and receivers; flashlights; databanks; owner and/or operating manuals and books; testing equipment; vacuum tubes; and metal detectors

Trade mark:  RadioShack

Trade mark registration:             706434

Filing Date:  16 April 1996

Specification:  Class 9: Radios, tuners, amplifiers, speakers, and speaker enclosures; radio receiving apparatus, microphones and switches; intercoms, wireless remote control units, and wireless room monitors; electronic communications equipment; namely, pagers, telephones and facsimile machines and parts therefor; phonograph needles and phonograph records, record players and recording tapes; electronic calculators, dry cell batteries, electrical telephone answering apparatus and telephone amplifiers; microcomputer systems comprising microprocessors, keyboards, video displays, in the nature of CRT's for use in connection with computer displays, computer memories, and data cassette recorders and cassettes having software recorded thereon; video equipment; namely, televisions and satellite TV antennas; optical goods, drafting equipment, slide rules, and drafting sets; multitesters for measuring voltage currents and resistance, voltmeters, ohmmeters, exposure meters, thickness gauges, compasses, microscopes, binoculars, combination telescopes and microscopes, microphotograph attachments, magnifying lenses, built-in test lamps for photographic flash guns, and photographic timers; radar detectors for automotive use, battery testers, DC power supplies, electronic thermometers; electrical components; namely, interference filters, connectors, wire, ground rods, clips, switches, transistors, IC gates, potentiometers, resistors, amplifiers, voltage regulators, flip-flop trigger circuits, counters/dividers for use as IC tuners, IC drivers, voltage comparators, rectifiers, diodes, capacitors, tubular electrolytes, printed circuit boards and terminals therefor, CB and scanner antennas, components for CB antennas, UHF/VHF television antennas, FM antennas, UHF converter/tuner antenna parts, coaxial cables, twin lead cables, electric soldering irons, soldering guns, electrical engraving pencils, remote control television timer, bicycle radios, photoelectric-eye relay units, antenna rotors, AC line interference filters and battery chargers; VCR multiplying system, decoder/amplifier, video processor, camcorder/VCR dubbing processor, video selector, multiple video distribution center; namely, a system that will send signals from a cable box, VCR satellite, system or antenna to several televisions in the same house with one coaxial cable, cable connector, remote control extender, video amplifier/enhancer, stud finder, automobile noise filters used to reduce ignition/alternator, engine and spark plug noise interference, automobile cigarette lighter adapter, fuses, voltage spike protectors, AC powerstrips and outlet plugs, AC extension cords, infrared floodlight security systems, magnets, torches, telephone plugs/jacks/wire/cable/adapters/tools, satellite TV noise block convertors, wireless TV transmitters/receivers, camcorder carrying cases, tripods, microphones, video lights, cable TV converter, door chimes, AC power cords and extension cords, audio connectors, and adapters, power transformers, AC-to-DC voltage adapters, AC-to-AC voltage adapters, DC power cords and extension cords, shortwave antennas, audio transformers, test equipment adapters, multiconductor cable, amateur radio antennas, components for amateur radio antennas, buzzers, relays (AC and DC), mercury switches, relay sockets, solder type printer connectors, IDC type printer connectors, infrared diodes, infrared photo transistors, infrared sensor, temperature module; namely, a thermometer with capabilities to control a buzzer, led, fan or heater at present temperatures; electronic counter module, solar kit, miniature amplifier, magnifying glasses; battery operated, electronically operated, radio controlled, remote controlled, and electrically operated controls for playing games on television screens or monitors

Class 16:Reference books in the field of electronics

Class 28:Toys, games and playthings; namely, toy metal detectors; and nonelectronic toys; namely, balls

Class 37:Construction and repair; namely, computer repair services

Class 42:Retail store services and mail order retail services in the field of radio and sound reproduction equipment; namely, stereo systems, speakers, phonographs, amplifiers, tuners, public address amplifiers, electronic keyboards, entertainment lighting, microphones, wireless microphones, headphones, mixers, blank audio and video tape, compact discs, stereo cartridges and stylus; equalisers, compact disc players, radios, receivers, rack systems; electrical and electronic devices; namely, alternate current and direct current power adapters, connectors, fuses, integrated circuits, multitesters, power supplies, switches, test equipment and wire and cable; computer hardware, furniture, software and peripherals for school, home, science and business usage; antennnas; namely, television, auto, citizens band and satellite; laser vision players; satellite receivers, feedhorns, low-noise blocks and low-noise amplifiers for satellites; antenna mounting hardware; television/video switching distribution equipment; audio/video signal processors; cellular telephones; telephones and telephone accessories; pagers; home security systems; auto security systems; scanners; calculators; hand tools; batteries; battery chargers; electronic and radio-controlled toys; video cassette recorders; video camera recorders; office equipment; namely, facsimile machines, pencil sharpeners, and copiers; remote control systems, remote control switches; intercoms; televisions; radar detectors; automobile compact disc players; amateur radio transceivers and accessories, marine radio transceivers and accessories; citizens band radios, transceivers and receivers; flashlights; databanks; owner and/or operating manuals and books; testing equipment; vacuum tubes; and metal detectors  

8.     The RadioShack group also has significant registered trade mark rights for the RADIO SHACK trade mark in a number of other countries. Exhibit RK-2 accompanying the Kilinski declaration contains details of these overseas registrations.

9.     Mr Kilinski states that the RadioShack group was founded in 1921 in Boston, Massachusetts by Theodore and Milton Deutschmann. Mr Kilinski states at paragraph 11 of his declaration:

… The Deutschmann brothers opened a one-store retail and mail-order operation in the heart of downtown Boston. They chose the name RadioShack after the small wooden structure which housed a ship’s radio equipment, The Deutschmann brothers thought that the name was appropriate for a store which would supply the needs for radio officers aboard ships as well as ham radio operators.

10.   After its inception RadioShack underwent a number of changes to become the entity it is today. In 1963, RadioShack was purchased by the Tandy Corporation and renamed Tandy RadioShack & Leather. Tandy RadioShack & Leather eventually divested itself of its non-electronic product lines and reverted to the name Tandy Corporation. In May 2000 the Tandy name was dropped completely and instead, the opponent opted for the RadioShack name.

11.   According to Mr Kilinski, RadioShack issued its first catalogue in the early 1940s and then branched out and entered the music industry. Mr Kilinski asserts that the next stage in the evolution of the company involved a move to make the RADIO SHACK brand international. Tandy Corporation, through its InterTAN subsidiary operated a chain similar to RadioShack in the United Kingdom under the TANDY brand in the 1970s. InterTAN also commenced operations in stores in Canada, France and Belgium. During this period RADIO SHACK branded goods are asserted to have entered the Australian market.

12.   Mr Kilinski asserts that the RADIO SHACK group entered the Australian market in November 1973 with the establishment of the first Tandy Store. RadioShack proceeded to open other stores until the Tandy chain of stores developed into one of Australia’s largest electronic retailers. Exhibit RK-3 accompanying the Kilinski declaration demonstrates that RADIO SHACK branded goods have been offered for sale in Australia since at least 1998.  

13.   According to Mr Kilinski, Woolworths Limited acquired the Tandy business in 2001. Despite already owning the Dick Smith Electronics chain, Woolworths Limited continued to operate the Tandy stores as a separate entity. There are over 200 Tandy stores operating throughout Australia in metropolitan and regional areas while approximately 90 dealers located in small regional areas stock a wide range of products found in Tandy stores. Mr Kilinski avers that there are similar numbers of Dick Smith Electronic stores operating across Australia.

14.   The Kilinski declaration states that RadioShack branded goods have been sold through the Tandy stores (and more recently through the Dick Smith Electronic stores) for over 30 years. Both Tandy and Dick Smith Electronic stores maintain websites where customers can view and buy the same products available in their stores. Mr Kilinski asserts that the opponent has for many decades sold batteries and that batteries are a core product of its retail operations. Mr Kilinski states that Australian consumers can purchase items such as RADIO SHACK branded four-way audio/video selectors, cordless headphones, infrared door beam alarms, book lights, keyboard stands, answering machines, analogue sound level meters from Tandy and Dick Smith Electronic stores.

15.   The Kilinski declaration also outlines the approximate wholesale value of RADIOSHACK branded goods sold with Australia from 1986. This figure is very substantial.

Applicant’s Evidence  

16.   In his declaration (‘the Bayindir declaration’) Mr Atalay Bayindir states that on 16 July 2001, he registered the business name BATTERY SHACK. Mr Bayindir avers that he wanted to sell batteries and other electronic goods under this name. Mr Bayindir states that in 2004 he commenced selling batteries and other electronic goods under and by reference to the name BATTERY SHACK on the internet at the website: and through the online auction website eBay® under the name “batteryshack”.

17.   Mr Bayindir says, on 11 September 2006, the BATTERY SHACK business name he previously traded under was changed to Sydney Red Line. Mr Bayindir states that the opposed trade marks were designed by him and Bilal Aydemir, a graphic designer, shortly before the trade mark applications were filed by the applicant.

18.   Since September 2006, according to Mr Bayindir the applicant has conducted business selling batteries and other electronic goods under the name BATTERY SHACK in the same manner as mentioned above in paragraph 16. Mr Bayindir asserts that the applicant sells a wide range of electronic goods including batteries, telephones, navigation systems, UHF CB radios, digital cameras, routers, door bells, surveillance systems and fish finders. Exhibit AB-3 accompanying the Bayindir declaration contains print outs of pages from the BATTERY SHACK internet address mentioned earlier. However, all of these print outs are dated after the priority date of the applications.

19.   Exhibit AB-3 purportedly demonstrates that the applicant has sold goods under and bearing the opposed trade mark. However, a careful consideration of the applicant’s evidence does not reveal any goods branded with the BATTERY SHACK trade marks. While it is clear that the applicant has been retailing goods under the BATTERY SHACK trade marks there is no evidence to suggest it has ever sold any class 9 goods actually bearing the trade marks. Indeed, at the hearing the representative for the applicant, Mr Peter Maddigan, conceded that the applicant did not apply the BATTERY SHACK trade marks to any goods.

20.   The Bayindir declaration outlines the gross revenue generated from the retailing of goods under the opposed trade mark for a number of financial years commencing from 2003 and going until 2009. Given the various start dates and assertions of business actions relating to the opposed trade mark the opponent raised concerns regarding the validity of the figures provided by the applicant. However, regardless of the totals claimed the gross revenue generated shows a distinct increase over the years.

Discussion

1. Trade mark similar to trade mark that has acquired a reputation in Australia

   21.   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.

   22.   To establish the ground of opposition under section 60, the opponent must demonstrate:

   ØThat, at the priority date of the opposed applications, another trade mark had acquired a reputation in Australia; and

   ØThat because of the reputation of the second trade mark, use of the applicant’s trade mark would be likely to deceive or cause confusion.

   23.   Unlike sections 44 or 58 of the Act, section 60 does not require that the goods and services upon which the opponent uses its trade mark be of a specified standard of similarity with the goods and services of interest to the applicant, nor is there a requirement that the trade marks be substantially identical or deceptively similar. Therefore, it is now for me to determine if the opponent has acquired a reputation in Australia for its RADIOSHACK trade marks which is sufficient to establish that use of the opposed trade marks would be likely to deceive or cause confusion.

   24.   I note that the applicant asserts that the opposed trade mark was designed shortly before the trade mark applications were filed. The applicant has not demonstrated use of the opposed marks prior to 2 November 2006, the priority dates of the applications. While Mr Bayindir has demonstrated that he registered the business name “BATTERY SHACK” on 16 July 2001 in his name, this does not constitute use of the opposed trade mark (exhibit AB-2).

   25.   I turn now to the evidence put forward by the opponent. The opponent is relying on its RADIO SHACK trade marks (registration no(s). 260980, 329405, 701474 and 706434). All of these trade mark registrations have earlier priority dates to those of the opposed trade marks. Mr Kilinski states that the opponent has used its RADIO SHACK trade marks in Australia through Tandy stores for over 30 years. The earliest advertisement provided in the evidence which contains the RADIO SHACK trade mark is a Tandy Electronic catalogue dated 1998/99 (exhibit RK-3). It is clear from this evidence that the opponent has been using its RADIO SHACK trade mark before the priority date of the opposed trade marks.  

   26.   It is now up to the opponent to demonstrate that a reputation existed in Australia before the priority date of the opposed mark such that use of the opposed mark would be likely to deceive or cause confusion. This is more than merely indicating prior use, the opponent’s trade mark needs to be “associated in the minds of the Australian public”[3].

   [3] Seven Up Co v OT Ltd (1947) 75 CLR 203 at 211

   27.   In relation to reputation Justice Kenny states in McCormick & Co Inc. v McCormick, 51 IPR 102, at 128:

   In ConAgra Inc v McCain Foods (Aust) Pty Ltd (1992) 33 FCR 302 at 343; 23 IPR 193 at 234, Lockhart J said:

   [R]eputation within the jurisdiction may be proved by a variety of means including advertisements on television or radio, or in magazines and newspapers within the forum.

   At 129 Justice Kenny continues:

   In practice, it is commonplace to infer reputation from a high volume of sales, together with substantial advertising expenditures and other promotions, without any direct evidence of consumer appreciation of the mark, as opposed to the product: …

   28.   The opponent’s evidence demonstrates that goods bearing its RADIO SHACK trade mark have been sold to Australian consumers since at least 1998. The Kilinski declaration outlines that since 1986 the wholesale value of goods sold to Australian distributors for sale in the Australian marketplace is very significant. Mr Maddigan correctly pointed out that while the figure is impressive, the Kilinski declaration states that it is ‘estimated that the majority of these products were branded with the RADIO SHACK house mark’. Based upon the Kilinski declaration, Mr Maddigan is correct is suggesting that this wholesale figure is likely to include goods which did not bear a RADIO SHACK trade mark.

   29.   However, as Mr Fitzpatrick pointed out at the hearing ‘a majority is still to be considered to be at least 50% of the wholesale total which is still very impressive’. I agree that the wholesale value of the goods sold within Australia even at 50% of the total mentioned in the Kilinski declaration is still very significant.  Particularly when I note that well over 200 stores around Australia retail RADIO SHACK branded goods.

   30.   Paragraphs 17 and 18 of the Kilinski declaration suggest that the RADIO SHACK brand has entered into the realms of popular culture. While I cannot comment on the truth of this statement, I am aware that RADIO SHACK is one of the largest electronics chains in the world and that it has a very impressive reputation overseas. Indeed, Mr Fitzpatrick’s submissions advise that the opponent employs up to forty thousand people around the world with net sales of almost five billion dollars.

   31.   I note that the RADIO SHACK brand has been mentioned or has appeared in a number of popular movies and television programs including Short Circuit 2, Diehard 2, The Simpson’s Tree House of Horror, Ally McBeal and Oceans Eleven. All of these movies and television programs are likely to have been watched by a considerable number of Australians. The opponent has also (in the past) been a joint sponsor of the Samsung/Radioshack 500 Nascar Nextel Cup series held at the Texas Motor Speedway. Taken with the opponent’s considerable wholesale value of RADIOSHACK branded goods sold to Australian distributors, I am satisfied that the opponent had a significant reputation in Australia for its RADIOSHACK trade marks before the priority date of the opposed trade marks. However, it needs to be determined if, given this reputation in Australia, use of the applicant’s trade marks would be likely to deceive or cause confusion.

   32.   Mr Maddigan argued at the hearing that the applicant’s use of its trade marks is in respect of its online business and that deception and confusion cannot arise between the parties because the applicant does not have a physical retail store which is how the opponent sells its goods. However, I am not persuaded by Mr Maddigan’s reasoning.

   33.   For the necessary comparison, I would put the matters as follows. I am not to be overly influenced by the evidence that the disputing parties use their trade marks in ways that, at the moment, may be quite different. I am to consider any of the modes of business that would be within the scope of the registration, should it be granted in the terms presently sought. The applicant has claimed all retail and wholesale services not just online retail services. In essence, the question comes down to my being satisfied that there is a “finite and non-trivial” risk of deception or confusion[4], based on the proper allowance for the possibility of imperfect recollection of one trade mark at a time when only the other competing trade mark is present.

   [4] Registrar of Trade Marks v Woolworths Limited (1999) AIPC 91-499 at 36, 697-8 (per Justice French) and 39, 703-4 (per Justice Branson)

   34.   As mentioned earlier, section 60 does not require that the goods upon which the opponent uses its trade mark be of a specified standard of similarity with the goods and services of interest to the applicant, nor is there a requirement that the trade marks be substantially identical or deceptively similar. However, in this particular case, I believe it is necessary to consider the similarities between the trade marks. This is because there is more likely to be deception and confusion in the market place in the situation where the respective marks are applied to the same or similar goods and services[5] and the trade marks share a commonality of features.

   [5] Shachihata Industrial Co Ltd v. Magic Market Corp (1984) 3 IPR 519

   35.   There can be little doubt that many of the respective goods and services claimed by the parties are similar. Indeed, the evidence of both parties demonstrates that they both retail a wide range of electronic goods. I am satisfied that the applicant and the opponent are likely to sell their electronic goods through the same trade channels to the same type of customer ie. those looking to purchase electronic goods.

   36.   A comparison of the respective trade marks reveals that the most striking features of the trade marks are the terms BATTERY SHACK and RADIO SHACK. While the applicant’s trade mark also has the additional words “INSPIRED TECHNOLOGY” and a graphic device, the most prominent feature of the trade mark is the words BATTERY SHACK which are depicted in a large and eye-catching font.

   37.   Both Mr Maddigan and Mr Fitzpatrick made submissions on whether or not deception or confusion was likely to occur between the marks. Mr Fitzpatrick argued that due to the nature of the goods claimed by both the applicant and the opponent, the respective words BATTERY and RADIO were descriptive of class 9 electronic goods and also descriptive of goods the subject of the services in class 35. Mr Fitzpatrick stated that this descriptiveness is reflected in the endorsements to registration nos. 260980 and 329405. These endorsements state that registration of the opponent’s RADIO SHACK trade marks shall give no right to the exclusive use of the word RADIO. Therefore, Mr Fitzpatrick submitted that the most distinctive part of the respective trade marks was the word SHACK which was a very distinctive word when applied to the respective electronic goods and services.

   38.   Mr Maddigan posed a counter argument as would be expected. He stated that the whole of the trade mark must be considered and he is correct. However, I am in agreement with Mr Fitzpatrick that the most visually striking and prominent feature of the trade mark is BATTERY SHACK and it is likely that consumers will remember and refer to the trade mark by these terms and not by “BATTERY SHACK INSPIRED TECHNOLOGY” as suggested by Mr Maddigan.

   39.   Given the very distinctive nature of the word SHACK, Mr Fitzpatrick also raised questions why and how the applicant chose to use such a term for its goods and services. The applicant did not explain how it chose the BATTERY SHACK trade mark and nor was it necessary to do so. However, given that the applicant is engaged in the retail of electronics and the opponent is one of the largest electronic retail chains in the world and has been in existence for a considerable amount of time, I would be very surprised if the applicant was unaware of the RADIO SHACK electronics brand when it adopted its trade marks.

   40.   Overall, I consider that, given the reputation evidenced by the opponent in its RADIOSHACK trade mark both overseas and in Australia, a significant number of consumers would at the very least experience a reasonable doubt[6] as to the existence of some sort of connection between the RADIO SHACK trade mark and the applicant’s BATTERY SHACK trade marks, particularly when these trade marks are applied to similar electronic goods and services. 

   [6] Southern Cross Refrigerating Co v Toowoomba Foundry Pty Ltd (1954) 91 CLR 592 at 594-5

   41.   I am satisfied that the opponent has established the section 60 ground of opposition in relation to all the applicant’s goods and services. Having found in favour of the opponent in terms of section 60 there is no need for me to discuss the other grounds set out in the notice although this ground or any others in the Act may also be relied on in the event of an appeal from this decision.

   Decision

   42.   Section 55 of the Act provides:

   Decision

   Unless the proceedings are discontinued or dismissed, 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.

   43.   I find that the opponent has met the onus upon it, in terms of the grounds of opposition under section 60 argued at the hearing. Accordingly, I refuse to register trade mark applications 1144591 and 1144592.

   Costs

   44. It is usual for costs to follow the event, and I see no reason to depart from that principle here. I award costs, according to the official scale set out in Schedule 8 of the Trade Marks Regulations 1995, against the unsuccessful trade mark applicant Sydney Red Line Retailing Pty Ltd.

Bianca Irgang

Hearing Officer

Trade Marks Hearings

29 October 2010