Volkswagen AG v Tungpei Industrial Co., Ltd

[2020] ATMO 40

TRADE MARKS ACT 1995

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

Re:Opposition by Volkswagen AG to registration of trade mark application 1835817 (7, 12) – TPI (Fancy) – in the name of Tungpei Industrial Co., Ltd.

Delegate:	Nicholas Smith
Representation:	Opponent: Spruson & Ferguson Patent & Trade Mark Attorneys Applicant: Cooper Mills Lawyers Pty Ltd
Decision:	2020 ATMO 40 Trade Marks Act 1995 (Cth) - Section 52 opposition: ss 42(b), 44 and 60 considered – none established – trade mark to proceed to registration

Background

1. This decision concerns an opposition brought by Volkswagen AG (‘Opponent’) pursuant to s 52 of the Trade Marks Act 1995 (Cth) (‘Act’) to the registration of the trade mark which is the subject of the application detailed below in the name of Tungpei Industrial Co., Ltd. (‘Applicant’): 

Application Number:

1835817

Filing Date:

3 April 2017

Goods:

Class 7: Bearings (parts of machines); bearings for transmission shafts; roller bearings; anti-friction bearings for machines; ball rings for bearings; ball-bearings; roller bearings; self-oiling bearings

Class 12: Ball bearings for automotive use; bearings for vehicles; plain thrust bearings for vehicles; release bearings for friction clutches of land vehicles; transmission bearings for land vehicles; bearings for baby strollers; bearings for trolleys (mobile carts); bearings for water scooters; bearings for electric vehicles (‘Applicant’s Goods’)

Trade Mark:

(‘Trade Mark’)

1. Following the advertisement on 24 August 2017 in the Australian Official Journal of Trade Marks of the Trade Mark’s acceptance for possible registration, the Opponent filed a Notice of Intention to Oppose on 24 October 2017.  The Opponent then filed a Statement of Grounds and Particulars on 24 November 2017 (‘SGP’). The SGP raised grounds of opposition under ss 42(b), 44, 60 and 62A of the Act. The Applicant filed a Notice of Intention to Defend on 21 December 2017.

   Evidence

2. The Opponent filed the following evidence in support of its opposition:

   ·Declaration made on 3 April 2018 by Francesca Giulia Colubriale, Senior Associate at Spruson & Ferguson Patent & Trade Mark Attorneys, the legal representatives of the Opponent, with Annexures A to N (‘Colubriale 1’). Annexures B and N are marked as confidential.

3. The Applicant filed the following evidence in answer:

   ·Declaration made on 11 June 2018 by Victor Wei-Cho Ng, Director of Cooper Mills Lawyers, the representative of the Applicant, with Annexures VWN-1 and VWN-2 (‘Ng Declaration’); and

   ·Declaration made on 10 July 2018 by Wen-Chieh Chen, the President of the Applicant, with Annexures TPI-1 to TPI-10 (‘Chen Declaration’).

4. The Opponent filed the following evidence in reply:

   ·Declaration made on 20 September 2018 by Francesca Giulia Colubriale, with Annexure O (‘Colubriale 2’).

   ·Declaration made on 17 September 2018 by Martin Müller-Korf, a business lawyer for the Opponent, with Annexures 1 and 2 (‘Müller-Korf Declaration’).

5. Once the time allowed for filing evidence had ended the parties were given an opportunity to request a hearing or to file written submissions.  By letter issuing from IP Australia on 5 December 2018 the parties were notified that as a hearing had not been requested the matter would be given to a delegate of the Registrar for a decision based on the written record.  The letter indicated that the parties had one month from the date of the letter to file any written submissions upon which they wished to rely.  The Opponent filed written submissions on 10 January 2019 (‘Opponent’s Submissions’).  The Applicant did not file any submissions.

6. I am a delegate of the Registrar of Trade Marks and I am to decide the opposition as required by s 55 of the Act which provides that, unless the proceedings are discontinued, dismissed, or have lapsed under s 54A 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. 

   In doing so I take account of the written record comprised of the materials mentioned in the preceding paragraphs.

   The Opponent

7. The Opponent is a German company that is a leading automobile manufacturer which employs over 500,000 employees and sells its vehicles in over 153 countries.    

8. The Opponent is the owner of the relevant trade marks listed below (‘Opponent’s Trade Marks’).  The goods and services for which the Opponent’s Trade Marks are registered are collectively referred to as the ‘Opponent’s Goods and Services’.  Trade Marks 841970 and 841973 are collectively referred to as the ‘TDI Mark’.

Number	Trade Mark	Priority Date	Goods and/or Services
815444	TSI (‘ TSI Mark’)	27 July 1999	Class 4: Industrial grease and oil; lubricants; fuel Class 7: Metal, wood, plastics working machines, machines for production, repair and dismantling of land, air and water vehicles, for the chemical industry, for agriculture, for mining, for the textile industry, for the beverage industry, for the construction industry, for the packaging industry; machine tools; motors other than for land vehicles, motor parts for motors of all kinds, including filters for cleaning cooling air (for engines), glow plugs for diesel engines; machine coupling and transmission components (except for land vehicles) including clutches other than for land vehicles, jacks (machines); agricultural implements other than hand- operated; incubators for eggs Class 12: Apparatus for locomotion by land, air or water including their parts; vehicles and their parts, including automobiles and their parts; engines for land vehicles Class 28: Games and playthings; gymnastic and sporting articles included in class 28 including scale model vehicles, especially scale model cars, balls, plush toys Class 37: Construction, repair, dismantling and maintenance of vehicles including vehicle repair in the course of vehicle breakdown service, cleaning, servicing and varnishing of vehicles
841970	TDI	9 June 1998	Class 7: Motors (included in class 7); machine coupling and transmission components (included in class 7) Class 37: Repair and maintenance of motors and motor vehicles including breakdown service (motor repair in the course of breakdown service)
841973	TDI	10 July 2000	Class 12: Vehicles; apparatus for locomotion by land, air or water, motors for land vehicles including diesel motors

1. The relevant claims/statements in Colubriale 1 can be summarised as follows:

   ·     The Opponent first adopted and used the TDI Mark in Germany in 1989 in respect of a turbocharged direct engine.  TDI branded vehicles have been sold by the Opponent in Australia since 2005.

   ·     The Opponent first adopted and used the TSI Mark in Germany in 2005 in respect of a twin charger engine and TSI branded vehicles have been sold by the Opponent in Australia since 2009.   

   ·     The Opponent has advertised TDI and TSI branded vehicles extensively through dealership advertisements, brochures, trade shows and internet advertising.  Sales of TDI and TSI branded vehicles in Australia have been significant.

2. The annexures to Colubriale 1 display various marketing material showing the use of the TSI and TDI Marks in various formats.  What is apparent from the annexures is that the Opponent does not sell any automobiles specifically and solely identified by the TSI or TDI Marks, rather the Opponent’s Trade Marks are used on engine decals and marketing materials to refer to the type of engines that are part of the Opponent’s vehicles across its product range.  For example, the Opponent offers a product known as a Golf Cabriolet that is advertised as containing a TSI twincharged Engine (Annexure C).  Certain vehicles are sold by reference to model numbers that contain the Opponent’s Trade Marks such as the Golf 90TSI and Golf 110TDI.  A representative example of the Opponent’s use of the Opponent’s Trade Marks is at page 321 of Colubriale 1 which is a print advertisement for the Opponent’s Tiguan product which is offered ‘with a choice of powerful TDI diesel or TSI petrol engines…’.  As such, while the Opponent’s sales and advertising expenditure in Australia is very significant, I note that these figures relate to the Opponent’s automotive products and the Opponent’s Trade Marks are generally used in relation to part of the Opponent’s automotive product offering (the engine).

3. Colubriale 2 simply annexes searches of the Australian trade marks register noting that the only marks registered or sought to be registered consisting of the exact acronyms TSI, TDI and TPI in classes 7 and 12 were the Trade Mark and trade marks owned by the Opponent and Audi AG:

4. The Müller-Korf Declaration confirms the correctness of Colubriale 1 and provides details of the Opponent’s worldwide registrations for the Opponent’s Trade Marks.

   The Applicant

5. The Applicant is a manufacturer and supplier of ball bearings, established in 1966 and based in Taiwan.   

6. The relevant claims/statements in the Chen Declaration can be summarised as follows:

   ·     The Applicant employs over 1,400 employees and has an annual turnover of US$150 million.  The Applicant has registered the Trade Mark in numerous countries since as early as 1994.  The Applicant adopted the Trade Mark in 1983 and the mark is derived from the Applicant’s name and the Applicant’s 3 corporate principles of Technology, Precision and Innovation.

   ·     The Applicant’s ball bearing products are supplied to major manufacturers including automobile, bike, machine tools, electric motor and IT manufacturers.    

   ·     The Opponent adopted its trade marks several years after the Applicant adopted its Trade Mark.  The Opponent’s Trade Marks are abbreviations for Turbocharged Direct Injection and Turbo Straight/Stratified Injection.  The TDI designation has been used by other manufacturers not related to the Opponent.

   ·     The Applicant is not aware of the Opponent supplying bearings under the Opponent’s Trade Marks or any other instances of customer confusion concerning the Applicant’s use of the Trade Mark.

7. The Ng Declaration simply annexes searches of the WIPO Global Brand Database for trade marks including TDI and TSI in classes 7 and 12 which indicate that there are a considerable number of such marks.

   Grounds of Opposition, Onus and Standard of Proof

8. As indicated above in the SGP the Opponent nominated grounds of opposition under ss 42(b), 44, 60 and 62A of the Act however in its submissions it indicates (wisely, given the evidence of when the Applicant adopted the Trade Mark) that it does not press the ground under s 62A of the Act. To successfully oppose the application the Opponent needs to establish one of the remaining grounds.

9. The onus of proof in an opposition rests upon the Opponent.[1]  The relevant standard of proof is the ordinary civil standard based on the balance of probabilities.[2]  The date at which the rights of the parties are to be determined is 3 April 2017 (‘relevant date’), being the priority date of the application in Australia.[3]

   [1] Food Channel Network Pty Ltd v Television Food Network GP [2010] FCAFC 58, [32].

   [2] Following Pfizer Products Inc v Karam (2006) 70 IPR 599, [6]-[26], and Telstra Corporation Limited v Phone Directories Company Pty Ltd [2015] FCAFC 156, [133].

   [3] Southern Cross Refrigerating Co v Toowoomba Foundry Pty Ltd (1954) 91 CLR 592, 595, see also s 29(1) Trade Marks Act 1995 (Cth).

   Discussion

   Section 44

10. The relevant provisions of the Act with respect to the ground of opposition pursuant to s 44 are reproduced below:

    Section 44 - 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)it is substantially identical with, or deceptively similar to:

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

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

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

    Note 1: For deceptively similar see section 10.
    Note 2: For similar goods see subsection 14(1).

    (2)…

    (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.

    Section 10 - Definition of deceptively similar

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

11. To successfully oppose the application pursuant to s 44 of the Act the Opponent must establish the requirements of s 44(1), i.e. that at least one of the trade marks upon which it relies, being a trade mark registered by a person other than the Applicant:

    ·     has a priority date which is earlier than that of the Trade Mark (‘the first requirement’);

    ·     is substantially identical with or deceptively similar to the Trade Mark (‘the second requirement’); and

    ·     is in respect of similar goods, and/or services which are closely related to, the Applicant’s Goods (‘the third requirement’).

12. In the event that each of these requirements is satisfied by the Opponent it may still be possible for the Registrar to accept the application (or allow it to proceed to registration) if the Registrar is satisfied, pursuant to ss 44(3) and 44(4) of the Act, that there has been honest concurrent use of the Trade Mark, other circumstances which would make registration of the Trade Mark proper, or that the Applicant has continuously used the Trade Mark beginning before the priority date of the Opponent’s relied upon marks.

13. The Opponent has particularised the ground of opposition in the SGP by reference to the Opponent’s Trade Marks.  Each of the Opponent’s Trade Marks has a priority date that is earlier than the priority date of the Trade Mark.  The first requirement is satisfied.

14. The Applicant’s Goods are ball bearings and various goods related to ball bearings, such as bearings for vehicles.  Ball bearings are specialised engineering products that are used for a wide variety of manufactured products to support various loads.  A variety of manufactured products use ball bearings including electric motors and motor vehicles.  The TSI Mark is registered for ‘vehicles and their parts, including automobiles and their parts’.  This definition would include ball bearings.  The TDI Mark is registered for goods including ‘machine coupling and transmission parts’.  Again this definition would include ball bearings, being parts for motor vehicles and machine coupling.  I find that the Opponent’s Trade Marks are registered for similar goods as those for which the Trade Mark is sought to be registered and hence the second requirement has been established.

    Substantially identical and/or deceptively similar

15. I will now consider whether the Trade Mark is substantially identical to the Opponent’s Trade Marks.  When considering ‘substantial identity’ in Shell Co of Australia Ltd v Esso Standard Oil (Australia) Ltd Windeyer J said:

    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.[4]

    [4] (1963) 109 CLR 407, 414.

16. The Trade Mark and the Opponent’s Trade Marks are set out below:

    TDI   TSI

17. On a side by side comparison there are clear differences between the respective trade marks being the replacement of the ‘p’ in the Trade Mark with a ‘d’ or an ‘s’.  Given that the marks are pronounced as acronyms, with each letter viewed and pronounced separately, this is a significant difference which is  sufficient for me to conclude that the respective trade marks are not substantially identical.  I move then to consider whether the Trade Mark and Opponent’s Trade Marks are deceptively similar.

18. The principal authority for guidance in determining whether trade marks are deceptively similar also comes from the judgment of Windeyer J in Shell Co (Aust) Ltd v Esso Standard Oil (Aust) Ltd:

    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 [trade mark].[5]

    [5] Ibid [13].

19. Jacobson J in Millennium & Copthorne International Limited v Kingsgate Hotel Group Pty Ltd summarised the principles of deceptive similarity with reference to the authorities as follows:

    Without seeking to reformulate the various statements of principle stated in the Full Court authorities, it is sufficient for present purposes to identify the critical elements which seem to me to inform the issue of deceptive similarity in the present case. There are nine elements.

    First, the judgment of likelihood of deception is a practical one. It requires an assessment of the effect of the challenged mark on the minds of potential customers: Woolworths[6] at [49]; Australian Woollen Mills[7] at 658.

    Second, the question of deceptive similarity is not to be decided by a side-by-side comparison. It is to be determined by a comparison of the impression based on recollection of the opponent’s mark that persons of ordinary intelligence and memory would have, and the impression that those persons would get from the opposed trade mark: Crazy Ron’s[8] at [73]; Shell Company of Australia Ltd v Esso Standard Oil (Australia) Ltd [1963] HCA 66; (1963) 109 CLR 407 at 415 per Windeyer J.

    Third, allowance must be made for imperfect recollection: Crazy Ron’s at [74].

    Fourth, the effect of the spoken description must be considered: Woolworths at [49]; Crazy Ron’s at [75]; Australian Woollen Mills at 658.

    Fifth, it is necessary to show a real tangible danger of deception or confusion: Woolworths at [43] and [50]; Crazy Ron’s at [76]; Southern Cross Refrigerating[9] at 594 – 595.

    Sixth, 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 the two products come from the same source: Woolworths at [50]; Southern Cross Refrigerating Co at 595. This test sets a lower threshold than that which is required to establish that conduct is likely to mislead or deceive under s 18 of Schedule 2 of the Competition and Consumer Act 2010 (Cth): see McWilliam's Wines Pty Ltd v McDonald's System of Australia Pty Ltd [1980] FCA 159; (1980) 33 ALR 394 at 398 per Smithers J.

    Seventh, all surrounding circumstances must be taken into consideration. The circumstances include those in which the marks will be used, and in which the goods or services will be bought and sold, as well as the character of the probable acquirers of the goods and services: Woolworths at [50]; Crazy Ron’s at [86] – [89]; Southern Cross Refrigerating at 595.

    Eighth, the question of whether there is a likelihood of confusion is not to be answered by reference to the manner in which a party has used the mark, but by reference to what an applicant can do. That is to say, the use to which it can properly put the mark if registration is obtained: Woolworths at [50]; Berlei Hestia Industries Ltd v The Bali Company Inc [1973] HCA 43; (1973) 129 CLR 353 at 362 per Mason J.

    Ninth, if a registered trade mark includes words which can be regarded as an ‘essential feature’ of the mark, another mark that incorporates those words may cause a tangible danger of deception or confusion by reason of consumers retaining an imperfect recollection of those words: Crazy Ron’s at [79]. However, care must be taken to not too readily characterise words in a composite trade mark as an ‘essential feature’ because to do so may effectively convert a composite mark into something different: Crazy Ron’s at [100].[10]

    [6] Registrar of Trade Marks v Woolworths Ltd [1999] FCAFC 1020.

    [7] Australian Woollen Mills Ltd v FS Walton & Co Ltd [1937] HCA 51; (1937) 58 CLR 641.

    [8] Crazy Ron’s Communications Pty Ltd v Mobileworld Pty Ltd [2004] FCAFC 196; (2004) 209 ALR 1.

    [9] Southern Cross Refrigerating Co v Toowoomba Foundry Pty Ltd (1954) 91 CLR 592.

    [10] [2012] FCA 1022, [38]-[46].

1. As noted in paragraph 26 above, the respective trade marks are all acronyms that are likely to be referred to as the letters T-S-I’ ‘T-D-I’ and ‘T-P-I’.  There are a limited number of three-letter acronyms and consumers are accustomed to distinguishing between acronyms that differ by one letter, especially in circumstances, such as the current one, where the change in letter results in a difference in pronunciation.  This is especially the case when considering the industry (machinery and automotive) that the parties operate in, which contains a significant number of companies or products commonly referred to by acronyms, such as VW, BMW and MX-5.  Furthermore the Applicant’s Goods are goods purchased with some care and consideration; they are not goods purchased on impulse.  I consider that, on balance, I am satisfied that the distinctions between the Trade Mark and the Opponent’s Trade Marks are sufficient that when considered as a whole in the context of the goods, even allowing for imperfect recollection, it is unlikely that the use of the Trade Mark will deceive or cause confusion among a substantial number of persons because of any similarity it has to the Opponent’s Trade Marks.

2. I find that the Opponent has failed to establish the ground of opposition pursuant to s 44 of the Act.

   Section 60

3. Section 60 of the Act is reproduced below:

   Section 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.

4. To establish a ground of opposition under s 60 an opponent must demonstrate that as at the relevant date there was another trade mark which had acquired a reputation in Australia amongst a significant or substantial number of persons in the relevant market such that use of the trade mark would be likely to deceive or cause confusion.[11]

   [11] The present paragraph and the following paragraphs summarising the requirements under s 60 of the Act are paraphrased from the decision of the Registrar’s Delegate in Australian Boutique Markets Pty Ltd v Rachael Zelensky and Jeffrey Zelensky [2013] ATMO 97.

5. In McCormick & Co Inc v McCormick, Kenny J considered what is intended by the word ‘reputation’ as used in s 60. Her Honour consulted the Macquarie Dictionary and on the basis of the definition provided concluded that it was ‘the recognition of the [trade mark] by the public generally’.[12]  Her Honour quoted with approval the following words of Lockhart J in Re ConAgra Inc v McCain Foods (Aust) Pty Ltd:

   [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. It may be established by showing constant travel of people between other countries and the forum and that people within the forum, (whether residents there or persons simply visiting there from other countries) are exposed to the goods of the overseas owner …[13]

   [12] [2000] FCA 1335, [81].

   [13] (1992) 33 FCR 302, 343.

6. On the subject of reputation Kenny J also referred to the Hugo Boss decision, where the Registrar’s delegate observed:

   [I]t is true that the assessment of the reputation of a trade mark goes far beyond mere examination of sales or turnover of goods sold under that trade mark and contemplation of the advertising and promotional figures.

   As regards a trade mark, its reputation derives both from the quantum of sales under that mark and also its esteem, or image, projected by that trade mark. The quantum of sales, advertising and promotion contributes to the ‘recognition’ component of the trade mark’s reputation. The credit, image and values projected by a trade mark attaches to the ‘esteem’ component of the reputation as do the public events and other trader’s marks with which [the] owner of the trade marks in question chooses to associate the trade marks via sponsorships, cross-promotions, ‘contra deals’ and so forth.

   It follows that a trade mark used in relation to goods with comparatively low sales may have a high and strong reputation by virtue of the high credit or esteem in which it is held, or, conversely, that a trade mark which has very high sales may have a strong reputation notwithstanding the lack of esteem that attaches to it. The particular popular images, or sets of values, that attach to the trade mark are also, therefore, important parts of the reputation of the trade mark and may be as strong an associative force in the minds of the public as the association of the trade marks with the goods or services themselves.[14]

   [14] Hugo Boss AG v Jackson International Trading Co Kurt D Bruhl Gesellschaft MbH & Co KG (1999) 47 IPR 423, 426.

7. As stated above, in assessing reputation under s 60, what constitutes a significant or substantial number of persons in the relevant market must be considered. The case of Le Cordon Bleu BV v Cordon Bleu International Ltee[15] was decided under s 28(a) of the (now repealed) Trade Marks Act 1955.  That provision did not refer to ‘reputation’ at all, only that use of the impugned trade mark would be ‘likely to deceive or cause confusion’.  Nevertheless the words of Heerey J provide some guidance:

   What is ‘significant’ or ‘substantial’ will depend on the nature of the goods or services in question. For some highly specialised products, awareness among a few thousand persons, or even less, might be sufficient … We are here concerned with foodstuffs sold in supermarkets, delicatessens, milk bars and other retail outlets. The relevant market is virtually the entire Australian population from early teenage years onwards.[16]

   [15] (2000) 50 IPR 1.

   [16] Ibid 20. Heerey J’s decision was overturned on appeal to the Full Federal Court, although not on the point quoted. Indeed the court specifically noted that his approach contained no error; see Renaud Cointreau v Cordon Bleu International Ltee [2001] FCA 1170, [75].

8. Furthermore, in practice, once the requisite reputation is demonstrated, the likelihood of deception or confusion increases the more closely the trade marks resemble each other.[17]

   [17] Qantas Airways Limited v Edwards [2016] FCA 729, [142].

9. The Opponent has particularised the ground of opposition in the SGP in the manner set out below: 

   The Opponent is a German automobile manufacturing group. Its major subsidiaries include well-known car brands such as AUDI, BENTLEY, SKOA, LAMBORGHINI, BUGATTI, SEAT and the brand VOLKSWAGEN itself. It also owns Volkswagen Commercial Vehicles and SCANIA. The Volkswagen business was founded in 1937 as a public concern by the German government to sell the VOLKSWAGEN BEETLE car.

   The Opponent has used the trade mark TSI in Germany since at least as early as 2005 and the trade mark TDI in Germany since at least as early as 1989. The trade marks TSI and TDI have been used by the Opponent in relation to a wide range of goods and services, including but not limited to, motorised land vehicles, vehicle parts and accessories, retail and wholesale services relating to motor vehicles, and vehicle repair services.

   The Opponent’s Marks have been extensively used throughout the world including Australia. The goods and services offered for sale under the Opponent’s Marks are promoted widely throughout Australia, including on the Opponent’s website at In addition, the Opponent has over 130 dealerships located across all states and territories of Australia.

   As a result of the Opponent’s continuous and extensive use of the TSI and TDI trade marks in Australia and around the world, it has acquired a significant reputation in those marks such that use of the Opposed Mark is likely to deceive or cause confusion.

10. I am satisfied on the evidence before me (including the evidence of sales and advertising) that the TSI and TDI Marks had, before the relevant date, acquired a reputation in respect of vehicle engines sufficient for the requirements under s 60(a) of the Act. However I note the limitations of that reputation, with the TSI and TDI being used almost exclusively to describe the type of engines manufactured by the Opponent and used in its vehicles (and not, on the evidence before me, sold separately from the Opponent’s vehicles).

11. It is not sufficient that the Opponent merely establishes that its trade marks have a reputation; the Registrar must also be satisfied that because of that reputation the use of the Trade Mark would be likely to deceive or cause confusion. Discussions and decisions on the subjects of deception and confusion are legion and a good number provide relevant comments in relation to a consideration of deception and confusion for the purposes of s 60. In a case concerning infringement and passing off, Australian Woollen Mills Limited v F S Walton and Company Limited, Dixon and McTiernan JJ said the following:

    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 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 observations of men considered in the mass affords the standard.[18]

    [18] (1937) 58 CLR 641, 658.

12. In Registrar of Trade Marks vWoolworths Ltd French J highlighted the following further matters concerning confusion:

    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.

    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.[19]

    [19] (1999) 45 IPR 411, 428. These considerations by French J are based on principles set out by Kitto J in Southern Cross Refrigerating Co v Toowoomba Foundry Pty Ltd (1954) 91 CLR 592, 594-5.

13. In Pottle Productions Inc v Rute Ithalat Ve Ihracat Anonim Sirketi the delegate observed that:

    The assessment of the likelihood of deception or confusion under section 60 is informed by the strength of the reputation of the Opponent’s trade mark(s), the inherent distinctiveness thereof, the degree of similarity between the trade marks under consideration and the nexus or connection between the goods and/or services of the parties. Each of these is a variable and it is possible that a trade mark’s reputation might be sufficiently strong and the degree of similarity to an opposed trade mark be so great (particularly where the trade marks are inherently distinctive) that confusion or deception will be a likelihood where very little, if any, nexus or connection exists between the goods and/or services under consideration.[20]

    [20] [2012] ATMO 124, [40].

14. While it is not necessary to show that the marks are deceptively similar for the purposes of an opposition under s 60, as stated in Qantas Airways Limited v Edwards, ‘the degree of similarity between the allegedly conflicting marks will be a relevant consideration to be taken into account when considering the likelihood of confusion resulting from use of the opposed mark.’[21]

    [21] [2016] FCA 729, [142].

15. I note my comments in paragraph 29 above in which I found that, given the nature of the goods for which it is to be used and the differences between the marks, the Trade Mark was not deceptively similar to the TSI and TDI Marks.  I consider that, notwithstanding the reputation of the TSI and TDI Marks, it is highly unlikely that any confusion will arise.  Acronyms and three letter acronyms in particular are common in the automotive and vehicle parts industry and the consumer base for the Applicant’s Goods is sufficiently sophisticated to be unlikely to confuse the respective acronyms simply because they share a first and last letter.  A further relevant factor is the reputation of the TDI and TSI Marks, which is limited to a type of engines manufactured by the Opponent.  This is different to the Applicant’s Goods, which are ball-bearings and related products.  Given the matters above I am not satisfied that the use of the Trade Mark would be likely to cause confusion as a result of the reputation of either the TSI or TDI Mark.   

16. I find that the Opponent has failed to establish the ground of opposition pursuant to s 60 of the Act.

    Section 42

17. Section 42 of the Act is reproduced below:

    42 - Trade mark scandalous or its use contrary to law

    An application for the registration of a trade mark must be rejected if:
    (a) the trade mark contains or consists of scandalous matter; or
    (b) its use would be contrary to law.

18. The Opponent pressed this ground of opposition solely on the basis that the use of the Trade Mark would be contrary to law (s 42(b)).  The onus is on the Opponent to establish that use of the Trade Mark by the Applicant would be, rather than could be, contrary to law on the balance of probabilities.[22]  The relevant time for assessing whether an application is contrary to law is at the relevant date but ‘looking forward to prospective conduct after registration’.[23]

    [22] Advantage Rent-a-Car Inc v Advantage Car Rental Pty Ltd [2001] FCA 683.

    [23] Time Warner Entertainment Co LP v Stepsam Investments Pty Ltd [2004] 59 IPR 343, 353.

19. The Opponent has particularised the ground of opposition in the SGP as follows: 

    Based on the use of the Opponent’s Marks in Australia and globally, use of the Opposed Mark for the goods claimed by Application No. 1835817 will constitute passing off and/or misleading or deceptive conduct in breach of the Australian Consumer Law.

20. As previously stated the Opponent has failed to establish a ground of opposition under s 60 of the Act. The test for misleading or deceptive conduct under s 18 of the Australian Consumer Law (‘ACL’) is a more stringent one than that for deception or confusion under s 60,[24] and consequently I find that the Opponent has also failed to establish that the Applicant’s use of the Trade Mark would be contrary to s 18 of the ACL.

    [24] See, e.g.: Ownit Homes Pty Ltd v Ownit Conveyancing Pty Ltd [2005] ATMO 47, [36]; Parkdale Custom Built Furniture Pty Ltd v Puxu Pty Ltd (1982) 149 CLR 191, 198.

21. Hill J in Re Equity Access Pty Ltd v Westpac Banking Corporation also addressed the relationship between s 52 of the superseded Trade Practices Act 1974 (Cth) and passing off. His Honour considered that:

    The scope for the operation of s 52 will thus be broader than that involved in the tort of passing off so that in a case such as the present where the claim is for the protection of the reputation in a name against the use of that name by another, failure to succeed under s 52 or s 53 will invariably mean that proceedings for passing off would likewise fail.[25]

    [25] [1989] FCA 506, [40] (citations omitted).

22. For these reasons I am not satisfied that use of the Trade Mark by the Applicant would be contrary to law. Therefore, the Opponent has failed to establish the ground of opposition under s 42(b).

    Decision

23. The Opponent has failed to establish any of the grounds of opposition it nominated in the SGP.  Trade mark application number 1835817 may proceed to registration not less than one month from the date of this decision.  If the Registrar has been served with a notice of appeal before that time, I direct that registration shall not occur until either the appeal is withdrawn or discontinued.  Otherwise the disposition of the application should be in accordance with the Court’s order or direction.

    Nicholas Smith
    Hearing Officer
    Delegate of the Registrar of Trade Marks
    19 March 2020