Volkswagen AG v Anton David Kardos

[2010] ATMO 61

TRADE MARKS ACT 1995

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

Re:Opposition by Volkswagen AG to Trade Mark Application 1156865(37) - VOLKSWORLD - in the name of Anton David Kardos

Delegate:	Debrett Lyons
Representation:	Applicant: No representation Opponent: Martin Pollock of Spruson & Ferguson
Decision:	2010 ATMO 61 S. 52 opposition – No evidence in support of the opposition; s. 44 considered; no evidence in answer; s. 44(4) considered. Ground of opposition not established. No order as to costs.

Background

1. On 19 January 2007 (‘the Priority Date’), Anton David Kardos (‘the Applicant’) filed trade mark application number 1156865 for the word mark VOLKSWORLD (‘the Trade Mark’) in respect of ‘Maintenance or repair of automotive vehicles’ in class 37 of the Register.

2. The application was examined and accepted under the provisions of subsection 44(4)[1] for possible registration.  Acceptance was advertised in the Australian Official Journal of Trade Marks after which Volkswagen AG (‘the Opponent’) filed a Notice of Opposition to registration of the Trade Mark under section 52 of the Trade Marks Act 1995 (‘the Act’). 

   [1] See paragraph 9 below.

3. The matter subsequently came before me, Debrett Lyons, a delegate of the Registrar of Trade Marks, for a hearing on 3 May 2010, in Canberra.  At the hearing, the Applicant was not represented and did not provide written submissions.  The Opponent was represented by Martin Pollock of Spruson & Ferguson, Patent and Trade Mark Attorneys.

   Grounds of Opposition

4. The Notice of Opposition raises virtually every ground of opposition available to the Opponent under the Act. At the hearing, the Opponent pressed only those grounds of opposition under sections 42(b), 43, 44, 60 and 62A of the Act. To succeed, the opponent bears the onus of establishing at least one of those grounds on the balance of probabilities[2]. 

   [2] Pfizer Products Inc v Karam (2006) 70 IPR 599 per Gyles J.; Chocolaterie Guylian N.V. v Registrar of Trade Marks [2009] FCA 891 per Sundberg J.

   Opponent’s Evidence

5. With the possible exception of section 44, those grounds depend for their success on evidence in support of the opposition. The Opponent’s evidence in support of the opposition comprises the statutory declarations of Lance Newman Scott dated 17 July 2008 and Nicholas Anglis dated 17 July 2008. That evidence was not filed or served within the time allowed by the Trade Marks Regulations 1995 (‘the Regulations’). The Opponent applied for an extension of that time but in a decision of Hearing Officer Thompson dated 8 September 2008[3], it was found that the Opponent had not made out a proper case for more time and the Opponent’s application for additional time was refused.  Accordingly, the declarations of Lance Newman Scott and Nicholas Anglis do not form part of the written record and have not been taken into account in reaching this decision. 

   [3] Re: Opposition by Volkswagen AG to registration of trade mark application 1156865(37) - VOLKSWORLD - filed in the name of Anton David Kardos and request by Volkswagen AG for extension of time to serve evidence in support ( 2008 ATMO 79).

   Applicant’s Evidence

6. During examination of the application, the Applicant filed evidence of use of the Trade Mark in order to overcome a ground for rejection based on the existence of earlier, conflicting trade marks. The application was accepted on the basis of that evidence. The Regulations governing the conduct of opposition proceedings require each party to serve a copy of the evidence which it wishes to be considered on the other side. The Applicant did not do that and I am at liberty to disregard anything filed by the Applicant with this office during examination of the application.

   Submissions and Reasoning

7. An issue arises as to whether the Applicant has any case to answer since the Opponent’s application for further time to serve its evidence was refused.  In broad terms, earlier decisions of the Office[4] have answered that question in the negative, with the possible exception of oppositions brought under section 44. Even in such cases, it has been held that the prior application/registration relied upon should at least be listed in the Notice of Opposition.[5] It has been added that, even then, nothing more than a straightforward analysis of the section 44 case should be required.[6]

   [4] See, for example, Medley Distilling Co v Croakers Gully Australia (2000) 53 IPR 430 at 433; Wal-Mart Stores Inc v Ozark-London Ltd (2004) 62 IPR 165 at 181).

   [5] See Quiksilver International Pty Ltd v s. Oliver Bernd Freier GmbH & Co. KG [2008] ATMO 14 at 15.

   [6] See Wild Marks, Inc. v Specialty Cereals Pty Ltd (2009)ATMO 54

8. Accordingly, in limited circumstances an opponent might be able to rely on the ground of opposition under section 44 of the Act even when it has not served evidence in support of its opposition. Section 44 provides that:

   Identical etc. trade marks

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

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

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

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

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

   Note 1:For deceptively similar see section 10.

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

   Note 3:For priority date see section 12.

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

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

   (a)it is substantially identical with, or deceptively similar to:

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

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

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

   Note 1:For deceptively similar see section 10.

   Note 2:For similar services see subsection 14(2).

   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.

   (3)If the Registrar in either case is satisfied:

   (a)that there has been honest concurrent use of the 2 trade marks; or

   (b)that, because of other circumstances, it is proper to do so;

   the Registrar may accept the application for the registration of the applicant’s trade mark subject to any conditions or limitations that the Registrar thinks fit to impose. If the applicant’s trade mark has been used only in a particular area, the limitations may include that the use of the trade mark is to be restricted to that particular area.

   Note:For limitations see section 6.

   (4)If the Registrar in either case is satisfied that the applicant, or the applicant and the predecessor in title of the applicant, have continuously used the applicant’s trade mark for a period:

   (a)beginning before the priority date for the registration of the other trade mark in respect of:

   (i)the similar goods or closely related services; or

   (ii)the similar services or closely related goods; and

   (b)ending on the priority date for the registration of the applicant’s trade mark;

   the Registrar may not reject the application because of the existence of the other trade mark.

   Note 1:An authorised use of the trade mark by a person is taken to be a use of the trade mark by the owner of the trade mark (see subsection 7(3)).

   Note 2:For predecessor in title see section 6.

   Note 3:For priority date see section 12.

9. The Opponent did not nominate any trade marks in its Notice of Opposition.  Nonetheless, Regulation 21.15(8) has been construed so as to allow the Registrar’s delegate to inform himself of the trade marks already on the register.  It provides:

   (8)The Registrar is not bound by the rules of evidence but may inform himself or herself on any matter that is before him or her in any way that the Registrar reasonably believes to be appropriate.

10. It has been said that reliance upon Regulation 21.15(8) brings with it a corollary obligation to abide by the rules of natural justice.[7]

    [7] See Herron Pharmaceuticals Pty Ltd v Sterling Winthrop Pty Ltd (1994) 30 IPR 309 (at 313/314) and the cases referred to therein.

11. During examination, the Opponent’s trade mark registration 1133944 for VOLKS had been raised as a ground under section 44 for rejecting the application. Registration 1133944 has a priority date of 20 December 2005 and covers, inter alia, the following class 12 goods and class 37 services:

    Class: 12 Vehicles for locomotion by land, air and/or water and their parts included in this class, including motor land vehicles and their parts, engines for land vehicles, tires for vehicle wheels, rims for vehicle wheels, complete vehicle wheels and their parts.

    Class: 37 Reconstruction, repair, servicing, dismantling, cleaning, maintenance and varnishing of vehicles and their parts and motors and their parts, including vehicle repair in the course of vehicle breakdown service; refinement and tuning of automobiles (included in this class).

12. The application was nevertheless accepted under section 44(4) because evidence of use of the Trade Mark provided by the Applicant predated the priority date of registration 1133944. The same registration is now the central plank of the Opponent’s section 44 case.

13. Paying regard to the relevant case law and applying the rules of natural justice I have come to the view that the appropriate course in this case is to consider the Opponent’s section 44 arguments ( premised as they essentially are on its rights in registration 1133944 for VOLKS) but also take into account the sworn material filed by the Applicant during examination of the case, namely, the statutory declaration of the Applicant dated 21 February 2007, giving that material the weight it deserves bearing in mind that it was not served on the Opponent in these opposition proceedings.

14. In reaching this view I am mindful that the Registrar is keen to avoid situations where a party is potentially ambushed by unseen material which should have been served and filed in accordance with the Regulations. In this case the Applicant specifically addressed the Opponent’s prior registration during examination and its existence is no surprise to him, notwithstanding the lack of reference to it in the Notice of Opposition and the absence of any evidence in support of the opposition.

15. Moreover, analysis of the Opponent’s section 44 case is devoid of complexities. The priority date of registration 1133944 predates the priority date of the application. For the purposes of this Act, services are similar to other services if they are the same as the other services or if they are of the same description as those other services. There is no doubt that the class 37 services of the application are identical to at least some of the services of registration 1133944 and so the only remaining issue so far as section 44 is concerned is whether the respective trade marks are substantially identical. “Deceptive similarity” is defined in section 10 of the 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”.  I am guided by the decision of Hearing Officer Zars in Isuzu-General Motors Australia Ltd v Jackeroo World Pty Ltd [1999] ATMO 39 where the trade marks JACKEROO and JACKEROO WORLD & Device were under comparison. That opposition succeeded under section 60 at a time when section 60 required the trade mark to be deceptively similar. For much the same reasons, which do not need to be repeated here, I find that VOLKS and VOLKSWORLD are deceptively similar trade marks.

16. The Opponent had no submissions in relation to section 44(4). Nonetheless, natural justice would lead me to think that if I am to take account of the Opponent’s registration 1133944, then I should take account of the Applicant’s declaration dated 21 February 2007. Furthermore, the decision of Hearing Officer Thompson mentioned earlier[8] makes it clear to me that the Opponent obtained a copy of the Applicant’s 21 February 2007 declaration under the Freedom of Information Act and so was aware of it long before this matter came before me.  The Opponent’s written submissions refer to that declaration for the purpose of showing the reason why the Applicant chose the trade mark VOLKSWORLD, but they make no reference to the use of that Trade Mark by the Applicant before the priority date of registration 1133944.  It would have been open to them to do so.

    [8] Footnote 3 supra.

17. I turn then to consider the Applicant’s 27 February 2007 declaration and the section 44(4) case.

18. The Applicant declares that it first used the Trade Mark in relation to the services of the application in May 1976.  The supporting evidence consists, firstly, of a Victorian Business Name registration certificate from January 1972.  The Applicant’s name appears as proprietor of the business name however there has been an obliteration of what appear to have been other names connected with ownership of the business name.  Second, there are copies of invoices directed to the Applicant from “Yellow Pages” and other business directories for advertisements which feature the Trade Mark.  Many predate the priority date of registration 1133944, 20 December 2005.  Third, there are miscellaneous indicia that the Applicant has continuously carried on a business of servicing and repairing Volkswagen cars under the Trade Mark from a time well before 2005.

19. I am satisfied on the balance of this evidence that, for the purposes of section 44(4), the Applicant has continuously used the Trade Mark for a period beginning before the priority date of registration 1133944 and in respect of similar services, such use extending beyond that date. I so find that the Opponent has not established its opposition under section 44 of the Act.

    Decision

20. Section 55 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)Without limiting subsection (1), if the application was opposed on the ground specified in paragraph 62(a) (that the application, or a document filed in support of the application, was amended contrary to this Act), the Registrar may revoke the acceptance of the application and examine the application again under section 31.

    Note:For examine and this Act see section 6.

21. As I have found no grounds of opposition have been established, it is my decision that trade mark application 1156865 may proceed to registration one month from the date of this decision.  If the Registrar is served with a notice of appeal before the trade mark is registered, I direct that registration shall not occur until the court so orders or the appeal has been discontinued.

    Debrett Lyons
    Hearing Officer
    Trade Marks Hearings
    14 July 2010