Volex Group Plc v TH & EE Tunley Pty

[2012] ATMO 86

TRADE MARKS ACT 1995

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

Re:Opposition by Volex Group plc to registration of trade mark application 1360367(9) - VOLTEX - filed in the name of TH & EE Tunley Pty.

Delegate:

Iain Thompson

Representation:

Opponent: Bill McFarlane, Trade Marks Attorney of Madderns, Patent & Trade Mark Attorneys

Applicant: Anthony Norris, Trade Marks Attorney of Collison & Co

Decision:

2012 ATMO 86

S52 proceedings: s44 - ‘notional use’, goods of the same description, whether trade marks are deceptively similar: opposition established; s60 opponent’s trade mark(s) have no reputation in Australia.

Registration possible for restricted goods.

Background

1. This matter concerns an application to register a trade mark filed under the Trade Marks Act 1995 (‘the Act’) by TH & EE Tunley Pty (‘the Applicant’) of Adelaide.  Details of this application are:

Application No: 1360367

Priority Date:  7 May 2010

Goods:Class 9: Electrical switchgear; electrical plugs; sockets, plugs and other contacts (electric connections)

Trade Mark:  VOLTEX

1. The application was examined in compliance with section 31 of the Act and advertised as accepted for possible registration in the Australian Official Journal of Trade Marks on 9 September 2010.

2. On 30 November 2010 Volex Group plc, (‘the Opponent’) of the United Kingdom served and filed Notice of Opposition (‘the Notice’) to the registration of the trade mark (hereinafter, ‘the Opposed Trade Mark’). The Notice recites most grounds of opposition available under the Act and, as the Opponent relied only on sections 44 and 60 at the hearing, for the sake of completeness, I find that those other grounds of opposition have not been established.

3. The parties served and filed evidence in support and evidence in answer and the matter duly came before me, as a delegate of the Registrar of Trade Marks, in Adelaide on 28 August 2012.  Bill McFarlane, Trade Marks Attorney of Madderns, Patent & Trade Mark Attorneys, represented the Opponent.  Anthony Norris, Trade Marks Attorney of Collison & Co, Patent & Trade Mark Attorneys, represented the Applicant.  Rod and Trevor Tunley, representatives of the Applicant, and Fiona Nguyen of Collison and Co also attended the hearing.

Onus

1. The Opponent bears the onus of establishing one or more grounds of opposition on the balance of probabilities.  See Pfizer Products Inc v Karam [2006] FCA 1663; 237 ALR 787; (2006) 70 IPR 599; [2006] AIPC 92-146 per Gyles J at [6] to [26]; Chocolaterie Guylian N.V. v Registrar of Trade Marks [2009] FCA 891; (2009) 180 FCR 60; (2009) 258 ALR 545; (2009) 82 IPR 13; [2009] AIPC 92-355 per Sundberg J at [22] to [26]; Sports Warehouse, Inc v Fry Consulting Pty Ltd [2010] FCA 664; (2010) 87 IPR 300 per Kenny J at [30] to [40]; NV Sumatra Tobacco Trading Company v British American Tobacco Services Limited [2011] FCA 1051; (2011) 198 FCR 435; (2011) 283 ALR 743 per Greenwood J at [16] to 32]; Allergan, Inc v Di Giacomo [2011] FCA 1540; (2011) 199 FCR 126; 94 IPR 541 per Stone J at [11] to [12] and most recently Tricarico v Dunn Bay Holdings Pty Ltd [2012] FCA 271 per McKerracher J at [9] to [10] and Fry Consulting Pty Ltd v Sports Warehouse Inc (No 2) [2012] FCA 81; (2012) 94 IPR 551 per Dodds-Streeton J at [13].

The Evidence

1. The evidence in support of the opposition is a statutory declaration by Matt S Nydell who is Senior Vice President, Corporate Development & General Counsel of the Opponent.

2. Mr Nydell declares that the Opponent owns a number of Australian trade mark registrations which incorporate the word VOLEX which it relies on in this matter.  These are:

Registration No:              1032558

Priority Date:  2 December 2004

Goods:Class 9: Electrical, electronic and fibre optic cable assemblies, subassemblies and harnesses and electrical power cords, but excluding cable sold independently of connectors, terminators, adaptors, power distribution units, electrical plugs, passive and/or active components or other componentry

Trade Mark:  

Registration No:              1032559

Priority Date:  2 December 2004

Goods:Class 9: Electrical, electronic and fibre optic cable assemblies, subassemblies and harnesses and electrical power cords, but excluding cable sold independently of connectors, terminators, adaptors, power distribution units, electrical plugs, passive and/or active components or other componentry

Trade Mark:  VOLEX GROUP

Registration No:              1032560

Priority Date:  2 December 2004

Goods:Class 9: Electrical, electronic and fibre optic cable assemblies, subassemblies and harnesses and electrical power cords, but excluding cable sold independently of connectors, terminators, adaptors, power distribution units, electrical plugs, passive and/or active components or other componentry

Trade Mark:  VOLEX CABLE ASSEMBLIES

Registration No:              1032561

Priority Date:  2 December 2004

Goods:Class 9: Electrical, electronic and fibre optic cable assemblies, subassemblies and harnesses and electrical power cords, but excluding cable sold independently of connectors, terminators, adaptors, power distribution units, electrical plugs, passive and/or active components or other componentry

Trade Mark:  VOLEX ASIA

Registration No:              1032557

Priority Date:  2 December 2004

Goods:Class 9: Electrical, electronic and fibre optic cable assemblies, subassemblies and harnesses and electrical power cords, but excluding cable sold independently of connectors, terminators, adaptors, power distribution units, electrical plugs, passive and/or active components or other componentry

Trade Mark:  

1. Concerning the Opponent’s alleged use of its trade marks in Australia, Mr Nydell states in his declaration:

   My Company operates the well known “Volex Group”, headquartered in London but with offices throughout the world. Attached to this Declaration and marked as Exhibit XX1 are print-outs from my Company’s website at of various pages some of which include Our Locations web pages.

   […]

   The brands “VOLEX”, “VOLEX V” and “VOLEX GROUP” and “VOLEX CABLE ASSEMBLIES” and “VOLEX ASIA” are very important to Volex Group Plc as the products they promote worldwide are gaining recognition in Australia. I was therefore concerned to hear that an application had been filed to register the trade mark “VOLTEX” for goods which directly overlap with those included in our existing registered Australian trade marks and used on other related goods in our extensive product offering. The marks “VOLEX” and “VOLTEX” are at least deceptively similar in appearance and pronunciation, and are also similar in idea or concept to those who sell and more importantly those that purchase the relevant goods.

2. The evidence in answer is a statutory declaration by Mr Roderick P Tunley who is Managing Director of the Applicant. Virtually the whole of Mr Tunley’s declaration (apart from information identifying him and his position) is claimed as being confidential and I note that none of this evidence goes to subsections 44(3) or 44(4) of the Act. However, as much as Mr Tunley’s declaration might be served and filed to rebut the evidence of Mr Nydell, it is obviously impossible for me to discuss this at all without breaking the confidentiality which the Applicant seeks.

Section 44

1. Section 44 of the Act relevantly provides:

   44Identical etc. trade marks

   (1)Subject to subsections (3) and (4), an application for the registration of a trade mark (applicant’s trade mark) in respect of goods (applicant’s goods) must be rejected if:

   (a)the applicant’s trade mark is substantially identical with, or deceptively similar to:

   (i)a trade mark registered by another person in respect of similar goods or closely related services; or

   (ii)a trade mark whose registration in respect of similar goods or closely related services is being sought by another person; and

   (b)the priority date for the registration of the applicant’s trade mark in respect of the applicant’s goods is not earlier than the priority date for the registration of the other trade mark in respect of the similar goods or closely related services.

   Note 1:For deceptively similar see section 10.

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

   Note 3:For priority date see section 12.

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

2. Accordingly, in order to found this ground of opposition, (and relevant to the circumstances of this opposition) the Opponent needs to establish the existence of each of the following:

   ·            A registered trade mark (or trade marks) having

   ·            earlier priority date(s) than that of the opposed trade mark and which

   ·is/are registered in the name of a person other than the Applicant

   ·in respect of goods which similar to those in respect of which registration is sought and

   ·being trade mark(s) which is/are substantially identical or deceptively similar to that for which registration is sought.

3. Here the Opponent relies on its own registered trade marks (detailed at paragraph 7, above) which have earlier priority dates than that of the opposed application.

4. Three questions thus remain for my consideration:

   1.Are the goods of the parties similar goods? And, if so,

   2.Are the trade marks of the parties substantially identical? If not,

   3.Is the opposed trade mark deceptively similar to any of the trade marks on which the Opponent relies?

5. The trade marks of the parties are to be compared in the context of the goods – this suggests that the consideration of any similarity of the goods occurs prior to a consideration of the similarity of the trade marks otherwise the comparison of the trade marks is in danger of being an abstract comparison.  In Registrar of Trade Marks v Woolworths Limited [1999] FCA 1020; (1999) 45 IPR 411; (1999) AIPC 91-499 [1999] FCA 1020, French J stated:

   Apposite to the present case is the question whether a retailer of various classes of goods provides a service to customers which warrants the description of the goods for sale as “closely related goods” in respect of that service. The characterisation of the relationship between services and goods in this way is evaluative. The logic of subs 44(2) suggests that the determination whether goods are closely related to the services in question is logically antecedent to the determination whether the trade mark in respect of the services is deceptively similar to that in respect of the goods. Wilcox J at first instance in this case saw the questions as “conceptually distinct” but accepted that one could not be addressed in isolation from the second …

6. Accordingly I will first consider the question of whether the relevant goods of the parties are similar.

7. The expression ‘similar goods’ is defined by subsection 14 of the Act which relevantly provides:

   14Definition 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.

8. And the expression ‘goods of the same description’ has been considered at length by the Australian Courts.  In Southern Cross Refrigerating Co v Toowoomba Foundry Pty Ltd [1954] HCA 82; (1954) 91 CLR 592 the Court stated:

   The fact that examination of the nature of the applicant’s goods may, by itself, induce an observer to conclude that they are different in character from those of an opponent, and designed to serve different purposes, is by no means conclusive. Nor is the fact that the applicant’s goods are not specified by the regulations as being within the same class of goods: see In re The Australian Wine Importers Ltd. (1889) 41 Ch D 278, at p 291 and Reckitt & Colman (Australia) Ltd. v. Boden per Latham C.J. [1945] HCA 12; (1945) 70 CLR 84, at p 90 . There may be many matters to be considered apart from the inherent character of the goods in respect of which the application is made and some indication of what matters are relevant to this inquiry was given by Romer J. in In re Jellinek’s Application (1946) 63 RPC 59. Romer J. thought it necessary to look beyond the nature of the goods in question and to compare not only their respective uses but also to examine the trade channels through which the commodities in question were bought and sold. Shortly after the decision in Jellinek’s Case (1946) 63 RPC 59 the Assistant-Comptroller elaborated on the observations of Romer J. in the following manner: “In arriving at a decision upon this issue the reported cases show that I have to take account of a number of factors, including in particular the nature and characteristics of the goods, their origin, their purpose, whether they are usually produced by one and the same manufacturer or distributed by the same wholesale houses, whether they are sold in the same shops over the same counters during the same seasons and to the same class or classes of customers, and whether by those engaged in their manufacture and distribution they are regarded as belonging to the same trade. In the case of Jellinek’s Application (1946) 63 RPC 59, [‘Jellinek’] Romer J. classified these various factors under three heads, viz., the nature of the goods, the uses thereof, and the trade channels through which they are bought and sold. No single consideration is conclusive in itself, and it has further been emphasized that the classifications contained in the schedules to the Trade Marks Rules are not a decisive criterion as to whether or not two sets of goods are ‘of the same description’”: In re an Application by John Crowther & Sons (Milnsbridge) Ltd. (1948) 65 RPC 369, at p 372. Much the same considerations are evident in the observation of Dixon J. (as he then was) in Reckitt & Colman (Australia) Ltd. v. Boden (1945) 70 CLR 84 when he said: “What forms the same description of goods must be discovered from a consideration of the course of trade or business. One factor is the use to which the two sets of goods are put. Another is whether they are commonly dealt with in the same course of trade or business. In the present case, the goods are quite different, their uses are widely separated and they are not commonly sold in the same kinds of shops or departments” (1945) 70 CLR, at p 94. (at p607)

9. More recently, in E & J Gallo Winery v Lion Nathan Australia Pty Ltd [2009] FCAFC 27; (2009) 175 FCR 386; [2009] AIPC 92-337 at [71] the Full Federal Court stated:

   In the context of goods sold in the course of trade to the public, the question of whether the alleged infringement has arisen by the affixing of a deceptively similar trade mark is not divorced from the question of whether the alleged infringement has arisen by doing so in relation to goods of the same description. One would have thought both questions necessarily require consideration of what members of the consuming public might perceive as a result of the use of the alleged infringing mark on the goods in question and whether they might be led to believe they were goods of the registered owner. In this way, the following observations of Burchett J, relied on by Gallo, in Polo Textile Industries Pty Ltd v Domestic Textile Corporation Pty Ltd [1993] FCA 203; (1993) 42 FCR 227 at 240 are relevant to the present enquiry, even though made by reference to provisions concerning the removal of a trade mark:

   In my opinion, the application of a principle so broadly stated requires some concentration upon the object which s 23(2) exists to serve. That object seems plainly to be the avoidance of confusion and deception in the market place, which would be likely to arise should a mark become available for use by two or more different companies, which are unrelated, upon goods of the same description. From that point of view, the expression “goods of the same description” is generally to be understood in such a sense that, if two different items are held not to fall within the expression, their sale under the same mark by different companies is not likely to lead to confusion or deception. That approach would seem to me to accord with the common sense business view recommended by Lord Evershed.

10. The goods of the parties are of some technical complexity and are in reality used for different purposes.  However, the goods of the parties are to be considered with regard to the full breadth of the registrations on which the Opponent relies as well as that of the specification of goods of the opposed application.  French J in Registrar of Trade Marks v Woolworths [1999] FCAFC 1020; [1999] FCA 1020; (1999) 93 FCR 365; (1999) 45 IPR 411; [1999] AIPC 91-499 (‘Woolworths’) observed at [88]:

    The test to be applied is that proposed by Evershed J in Re An Application by Smith Hayden & Co Ltd (1945) 63 RPC 97 at 101. That test may be paraphrased for the purposes of this appeal as follows. Assuming use by the proprietor of the cited trade marks in a normal and fair manner for any of the goods or services covered by the registrations of trade marks, is the Court satisfied that there is a reasonable likelihood of deception or confusion among a substantial number of persons if the applicant for registration also uses its mark normally and fairly in respect of services covered by the proposed registration.

11. The goods under comparison here are:

    Electrical switchgear; electrical plugs; sockets, plugs and other contacts (electric connections).

And

Electrical, electronic and fibre optic cable assemblies, subassemblies and harnesses and electrical power cords, but excluding cable sold independently of connectors, terminators, adaptors, power distribution units, electrical plugs, passive and/or active components or other componentry.

1. The opposed application, when considered with regard to the ‘notional use’ test in Smith Hayden, above, implicitly includes ‘electrical plugs and sockets for domestic purposes’ and the expression ‘other contacts (electrical connections)’ within that specification is wide enough to include ‘domestic plug-in power-boards’.  Additionally, the expression ‘electrical power cords’ within the specifications of goods on which the Opponent relies includes ‘electrical extension cables’ with a plug and socket at either end.

2. When the goods ‘electrical plugs and sockets for domestic purposes’ and ‘domestic plug-in power-boards’ on the one hand and ‘power cords having sockets and plugs (extension cords)’ on the other hand are considered in the light of the test in Jellinek, they are sold in the same hardware stores, department stores, supermarkets or electrical suppliers, they are commonly sold side by side and, in my observations of the world, made by the one trader.  They come onto the market through the same trade channel and are purchased by the same class of customer.

3. Accordingly, the specifications of goods within the registrations on which the Opponent relies contain goods of the same description as at least some of the goods in respect of which registration of the opposed trade mark is sought.

Similarity of the Trade Marks

1. The expression ‘substantially identical’ was discussed in Shell Company of Australia Ltd v Esso Standard Oil (Australia) Ltd [1963] HCA 66; (1963) 109 CLR 407 (‘Shell’) where Windeyer J said at [12]:

   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. “The identification of an essential feature depends”, it has been said, “partly on the Court’s own judgment and partly on the burden of the evidence that is placed before it”: de Cordova v. Vick Chemical Co. (1951) 68 RPC 103, at p 106. Whether there is substantial identity is a question of fact: see Fraser Henleins Pty Ltd v. Cody [1945] HCA 49; (1945) 70 CLR 100, per Latham C.J. (1945) 70 CLR, at pp 114, 115, and Ex parte O’Sullivan; Re Craig (1944) 44 SR (NSW) 291, per Jordan C.J. (1944) 44 SR (NSW), at p 298, where the meaning of the expression was considered. Judging by the eye alone, as I think is proper for the determination of substantial identity …

1. On a side by side comparison, each of the trade marks on which the opponent relies very obviously lacks identity with the trade mark VOLTEX.  Each of the Opponent’s trade marks which include the word VOLEX also includes some other integer.  When the differences between the Opponent’s trade marks and the opposed trade mark are considered in the light of decisions such as Pelican Trade Mark [1978] RPC 424 (PELICAN and PELIKAN); “Otrivin” Trade Mark [1967] RPC 613, ( OTRIVIN and OTRIVINE); and, particularly Lonza Ltd v Kantfield Pty Ltd (T/A Martogg & Co) (1995) 33 IPR 396 (FORTEX and FOREX), the elements VOLEX and VOLTEX fall well short of being substantially identical in themselves. Notwithstanding the ratio in PB Foods Ltd v Malanda Dairy Foods Ltd [1999] FCA 1602; 47 IPR 47; [1999] AIPC 40,117, the differences between the opposed trade mark and the Opponent’s registered trade marks are further magnified when the material other than the word VOLEX in the Opponent’s trade marks is included in the comparison.

2. The trade marks under consideration are not substantially identical.

3. Deceptive similarity is to be assessed according to the tests set out in Shell at [13] per Windeyer J:

   On the question of deceptive similarity a different comparison must be made from that which is necessary when substantial identity is in question. The marks are not now to be looked at side by side. The issue is not abstract similarity, but deceptive similarity. Therefore the comparison is the familiar one of trade mark law. It is between, on the one hand, the impression based on recollection of the plaintiff’s mark that persons of ordinary intelligence and memory would have; and, on the other hand, the impressions that such persons would get from the defendant’s television exhibitions. To quote Lord Radcliffe again: “The likelihood of confusion or deception in such cases is not disproved by placing the two marks  side by side and demonstrating how small is the chance of error in any customer who places his order for goods with both the marks clearly before him . . . . It is more useful to observe that in most persons the eye is not an accurate recorder of visual detail, and that marks are remembered rather by general impressions or by some significant detail than by any photographic recollection of the whole”: de Cordova v. Vick Chemical Co (1951) 68 RPC, at p 10. And in Australian Woollen Mills Ltd v. F.S. Walton & Co. Ltd. (1937) 58 CLR 641 Dixon and McTiernan JJ. said: “In deciding this question, 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 or device for which the protection of an injunction is sought. 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” (1937) 58 CLR, at p 658

4. In Australian Woollen Mills Limited v F S Walton and Company Limited, within the above quote, Dixon and McTiernan, JJ continued, concerning this comparison:

   The effect of spoken description must be considered. If a mark is in fact or from its nature likely to be the source of some name or verbal description by which buyers will express their desire to have the goods, then similarities both of sound and of meaning may play an important part. 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. Evidence of actual cases of deception, if forthcoming, is of great weight.

5. Subsequently, in the same case, they said:

   It depends on a combination of visual impression and judicial estimation of the effect likely to be produced in the course of the ordinary conduct of affairs.

6. As I have observed above, the comparison of the trade marks is to take place in the context of the marketplace for the goods with regard to the likely purchasers and mode of sale that are found there.  In In Re Application by Pianotist Company (1906) 1A IPR 379 at 380; 23 RPC 774 at page 777, Parker J said:

   You must take the two words. You must judge of them, both by their look and by their sound. You must consider the goods to which they are to be applied. You must consider the nature and kind of customer who would be likely to buy those goods. In fact, you must consider all the surrounding circumstances; and you must further consider what is likely to happen if each of those trade marks is used in a normal way as a trade mark for the goods of the respective owners of the marks.

7. Further, the process is moderated by the factors discussed in Woolworths at [50] by French J who said:

   In Southern Cross Refrigerating Co v Toowoomba Foundry Pty Ltd (1954) 91 CLR 592 at 594-5, which concerned the 1905 Act, Kitto J set out a number of propositions which have frequently been quoted and applied to the 1955 Act. The essential elements of those propositions continue to apply to the issue of deceptive similarity under the 1995 Act. Applied also to service marks and absent the imposition of an onus upon the applicant they may be restated as follows:

   (i) 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.

   (ii) 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 the two products or closely related products and services come from the same source. It is enough if the ordinary person entertains a reasonable doubt.

   It may be interpolated that this is 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.

   (iii) 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 circumstances in which the goods or services will be bought and sold and the character of the probable acquirers of the goods and services.

   (iv) The rights of the parties are to be determined as at the date of the application.

   (v) The question of deceptive similarity must be considered in respect of all goods or services coming within the specification in the application and in respect of which registration is desired, not only in respect of those goods or services 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.

   In respect of the last proposition, Mason J observed in Berlei Hestia Industries Ltd v The Bali Company Inc [1973] HCA 43; (1973) 129 CLR 353 at 362:

   “...the question whether there is a likelihood of confusion is to be answered, not by reference to the manner in which the respondent has used its mark in the past, but by reference to the use to which it can properly put the mark. The issue is whether that use would give rise to a real danger of confusion.”

8. The Opponent submits:

   [T]he terms VOLEX and VOLTEX are clearly deceptively similar when considering their visual and aural similarity and the idea and overall impression of the mark.

   In Aristoc Ltd v Rysta Ltd (1943) 60 RPC 87 at 108, it was stated on the issue of deceptive similarity:

   “...Whether the sound of one word resembles too nearly the sound of another must nearly always depend on first impressions for, obviously, a person who is familiar with both words will neither be deceived or confused. It is the person who only knows one word, and has perhaps an imperfect recollection of it, who is likely to be deceived. A court must allow for imperfect recollection and the effect of careless pronunciation and speech.”

   In particular, careless pronunciation renders these two marks virtually indistinguishable.

   It is noted that each of the Opponent’s registrations includes an additional feature — eg a V device, or words such as GROUP, ASIA, or CABLE ASSEMBLIES. We submit that each of these features is insufficient to substantially alter the overall impression of the mark, which is predominantly based on the term VOLEX. Indeed, the Opponent’s registrations including the ‘V’ device (the symbol for a VOLT) simply reinforce that the respective marks have the same idea or impression.

9. For its part, the Applicant submits that:

   Reference is made to the application for registration of the words “Rain King” in the case of Cooper Engineering Co Pty Ltd v Sigmund Pumps Ltd (1952) 86 CLR 536. In that case the opponent’s mark was RAINMASTER.

10. The Applicant also referred me to some of the relevant cases quoted above.

11. In Crazy Ron’s Communications Pty Limited v Mobileworld Communications Pty Limited [2004] FCAFC 196; (2004) 209 ALR 1 at [77], the Full Federal Court reiterated the House of Lords’ unanimous approval in Aristoc Ltd v Rysta Ltd [1945] AC 68 (“Aristoc”) at 86 of Luxmoore LJ’s recognition in Re Rysta Ltd’s Application [1943] 1 All ER 400 at 407 that the court must allow for consumers who know only of one of the marks and have an imperfect recollection” of it when encountering the other trade mark, and that accordingly:

    [l]ittle assistance... is to be obtained from a meticulous comparison of words, letter by letter, and syllable by syllable, pronounced with the clarity to be expected from a teacher of elocution. The court must be careful to make allowance for imperfect recollection and the effect of careless pronunciation and speech on the part not only of the person seeking to buy under the trade description, but also of the shop assistant ministering to that person’s wants.

12. On the other hand, the cases caution against effectively implying a monopoly in an element of a trade mark (here, the Opponent submits, the word ‘volt’) which lacks any inherent adaptation to distinguish.  Where the common element lacks inherent adaptation to distinguish, the focus shifts to other features (Coca- Cola Co. (Canada ) Ltd. v Pepsi-Cola Co. (Canada ) Ltd. (1942) 59 RPC 127 particularly Lord Russell at page 134), and in Frigiking” Trade Mark [1973] RPC 739: Whitford J, having concluded that, although the word “King” shared by both the trade marks under consideration was not common to the trade, it was nonetheless a word without high inherent adaptation and therefore, in that case, the trade marks FRIGIKING and THERMO-KING could co-exist on the Register for refrigeration apparatus.

13. The Opponent here submits that it has a monopoly in the word ‘volt’ (and it argues a conceptual similarity because of that word’s inferred presence) while the word ‘volt’ does not actually appear within the Opponent’s trade mark.

14. The Opponent whilst arguing also that the element VOL- is an obvious shortform or abbreviation for the word ‘volt’ has not provided any evidence to substantiate this assertion and I have never been aware of the element VOL’s use as an abbreviation or shortform for the word ‘volt’ although it is obviously a widely recognised abbreviation for the word ‘volume’.

15. Thus I do not agree that the trade marks of the parties have a commonality of idea: the word ‘volt’, which is claimed to give rise to that commonality of idea, is not present in the element VOLEX within the Opponent’s trade marks.

16. The element VOLEX appearing within the Opponent’s trade marks presents itself as an invented word as discussed by Parker J in Philippart v William Whitely Ltd (1908) 25 RPC 565 at page 569:

    To be an invented word within the meaning of the Act a word must not only be newly coined in the sense of not being already current in the English language, but must be such as not to convey any meaning, or, at any rate any obvious meaning, to ordinary Englishmen. It must be a word having no meaning or no obvious meaning until one has been assigned to it.

17. The trade mark VOLTEX, however, does not strike my eye as being invented – its origins in the English language are manifest: Howard Auto-Cultivators Ltd v Webb Industries Pty Ltd [1946] HCA 15; (1946) 72 CLR 175 per Dixon J:

    The employment of a word in such use, with a diminutive or a short and meaningless syllable added to it, or a mere combination of two known words, would not be an invented word; and a word would not be invented which, with some trifling addition or very trifling variation, still leaves the word one which is well known or in ordinary use, and which would be quite understood as intended to convey the meaning of such a word: Eastman Photographic Materials Co. v. Comptroller-General of Patents, Designs, and Trade-marks (1898) A.C. 571, at p. 585; 15 R.P.C. 476, at p. 487.

18. As an invented word, the element VOLEX is more likely to be remembered and recalled by reference only to itself and not by reference to the English word ‘volt’ which does not occur within it or the Opponent’s trade marks.  In contradistinction, the opposed trade mark is more likely to be remembered and recalled by reference to the word ‘volt’ which does form the larger part of the opposed trade mark.  In my consideration this considerably diminishes the likelihood that the Opponent’s trade marks might be recalled and imperfectly remembered for the opposed trade mark as the elements VOLEX and VOLTEX are conceptually distinct.

19. Further, in In the Matter of London Lubricants (1920) Limited’s Application to Register a Trade Mark (1925) 42 RPC 264 at 279, Sargant LJ stated:

    “But 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.”

20. It is not likely because the similar beginnings of the element VOLEX and the trade mark VOLTEX that a person requesting goods by reference to the trade marks would blur or slur the first syllable of either, such that confusion becomes likely.  It is difficult to state with any certainty what the first syllable of the element VOLEX is: it could be ‘vo-’, with an emphasis on the suffix ‘-lex’, or it might be ‘vol’ or ‘vole-’ followed by the suffix ‘-ex’.  The latter conclusion might be more likely amongst those of English origin who are aware that a vole is a small mouse-like rodent.  It is possible that both VOLEX and VOLTEX would be enunciated with a stress on the last syllable –LEX or –TEX.  However, I consider it to be more likely that the opposed trade mark is likely to be relatively well enunciated as the known word ‘volt’ followed by the suffix ‘-ex’.  The likelihood that first syllable of either the element VOLEX or the trade mark VOLTEX might be slurred to the extent that they might be confused for each other thus appears to be low.

21. Set against the above considerations is the strong visual similarity of the element VOLEX and the trade mark VOLTEX with the only visual difference between these integers being the alphabetical letter T which occurs in the middle of the words where it is less likely to be noticed on a casual inspection by members of the public. 

22. In the retail environments I have referred to above, such as hardware stores, department stores, supermarkets or electrical suppliers, the consumers are the general public who are inexpert and not likely to be aware of the wide range of suppliers of electrical equipment and the trade marks under which such goods sold.  Further, the minor visual dissimilarity between the integers VOLEX and VOLTEX is unlikely to be noticed by the general public in the context of the purchase of relatively inexpensive power cords, extension cables and domestic plug-in power-boards when all of the usual factors at play in retail stores are taken into consideration: Re Stuart Alexander and Co (Interstate) Pty Limited and Douwe Egberts Koninklijke Tabaksfabriek-Koffiebranderijen-Theehandel NV v Blenders Pty Limited [1981] FCA 152; (1981) 53 FLR 307. In such environments, the conceptual differences between the trade marks are less likely to be noticed by the ordinary consumer and the visual similarity is more likely to guide the purchase of such goods.

23. In view of the above factors, I am on balance satisfied that confusion or deception arising from the concurrent use of the parties’ trade marks is a reasonable likelihood in relation to power cords, extension cables and plug-in power-boards sold for household or domestic purposes.

24. However, with regard to the remainder of whatever goods other than power cords, extension cables and domestic plug-in power-boards within the specifications of goods of the parties and are not sold in department stores, supermarkets, hardware stores and the like, but are sold through specialist electronic or electrical supply houses, I am not satisfied on balance that the goods are goods of the same description or that the integers VOLEX and VOLTEX are deceptively similar in relation to those specialist technical goods.  The purchasers of such goods are generally to be taken to have some expertise, and the purchase of such goods is more likely to occur after careful consideration of what is available on the market.  Under such circumstances the conceptual differences between the integers VOLEX and VOLTEX and the different purposes of the goods themselves are more likely to enable a ready distinction between the trade marks.

25. Thus I am not satisfied in relation to goods other than power cords, extension cables and plug-in power-boards sold for household or domestic purposes, that the trade marks are deceptively similar or that the goods are goods of the same description.  In Blount Inc v Registrar of Trade Marks (1988) 40 IPR 498 at 504, Branson J observed:

    Where the Act requires the Registrar to be “satisfied” of any matter, it is to be understood as requiring that he or she be persuaded of the matter according to the balance of probabilities (Rejfeck v McElroy (1965) 112 CLR 517 at 521). That is, that the Registrar be persuaded, having given proper consideration to those factors and circumstances that the Act requires him or her to give consideration to, that such matter is more probable than not.

26. The Opponent has established that the trade marks on which it relies are deceptively similar to the opposed trade mark in relation to power cords, extension cables and plug-in power-boards sold for domestic household purposes but not in relation to the remainder of the goods in respect of which registration is sought.

Section 60

1. Section 60 of the Act provides:

   60Trade mark similar to trade mark that has acquired a reputation in Australia

   The registration of a trade mark in respect of particular goods or services may be opposed on the ground that:

   (a)another trade mark had, before the priority date for the registration of the first‑mentioned trade mark in respect of those goods or services, acquired a reputation in Australia; and

   (b)because of the reputation of that other trade mark, the use of the first‑mentioned trade mark would be likely to deceive or cause confusion.

   Note:For priority date see section 12.

2. To found its ground under section 60 of the Act, the Opponent must establish that the reputation of its trade mark (or trade marks) is such in Australia that the use of the opposed trade mark would deceive or cause confusion.

3. In McCormick & Company Inc v McCormick [2000] FCA 1335, (2000) 51 IPR 102, Kenny J said, at [81]-[82]:

   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?

1. In support of its allegation that its trade mark(s) has/have a reputation in Australia the Opponent has evidenced the content of its Internet website and has alleged that its trade marks are used worldwide and are gaining recognition in Australia.  There is no corroborative material to support the allegation that the trade marks are used worldwide, or of sales revenues and marketing expenditure, or that the trade mark(s) have been used in Australia or that they are gaining recognition here.

2. It is not necessary to evidence reputation in Australia by way of sales of goods to or within Australia ConAgra Inc v McCain Foods (Aust) Pty Ltd [1992] FCA 159; (1992) 33 FCR 302; 106 ALR 465; (1992) 23 IPR 193; [1992] AIPC 90-892; [1992] ATPR (Digest) 46-095; [1992] ASC 56-159 at [116] to [118]. However, while the Opponent seemingly claims reputation of its trade mark(s) elsewhere in the world and spillover reputation in Australia, this allegation is unsupported by any objective evidence.

3. And, while the Opponent’s Internet website may be accessible from Australia, there is no evidence that the website has been accessed from Australia, or that sales to Australia are possible from it, or that such sales have occurred.

4. The Opponent has not established that its trade mark(s) has/have a reputation in Australia.

5. Accordingly, the Opponent cannot establish its opposition under section 60 of the Act.

Decision

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

   55Decision

   (1)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.

   Note:For limitations see section 6.

2. The Opponent has established its ground of opposition under section 44 of the Act in relation to power cords, extension cables and domestic plug-in power-boards for domestic/household purposes.

3. I therefore refuse to register application 1360367.

4. However, if the applicant seeks within two weeks of the date of this decision to amend its specification of goods to that below, the application may proceed to registration one month from the date of this decision.  If the Registrar has been served with a notice of appeal by either party before the elapse of that month, I direct that registration shall not occur until the appeal has been decided or discontinued and that the disposition of the application be in accordance with the Court’s order or direction:

   Electrical switchgear; and other contacts (electric connections); none of the aforesaid being for domestic/household purposes.

Costs

1. The Opponent, having been successful, is entitled to its costs which I award at the official scale against the Applicant.

Iain Thompson

Hearing Officer

Trade Marks Hearings

5 October 2012