Volvo Car Corporation v C & B King & Sons Pty Ltd

[2004] ATMO 38

TRADE MARKS ACT 1995

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

Re:Opposition by Volvo Car Corporation to registration of trade mark applications 821879(12) and 837688(12) - CROSS COUNTRY & CROSS COUNTRY & device - filed in the name of C & B King & Sons Pty Ltd.

Delegate:

Mary Skivington

Representation:

Opponent: Edward Heerey of counsel instructed by Allens Arthur Robinson Patent and Trade Mark Attorneys

Applicant: Peter Hastie of counsel instructed by Deacons

Decision:

Section 52 opposition -821879 - ground of opposition under section 58 established - registration refused. 837688 - grounds not established -registration allowed.

Background

1. C & B King & Sons Pty Ltd., ('the applicant'), filed trade mark application number 821879, on 1 February 2000, to register the plain word trade mark CROSS COUNTRY for goods in class 12 described as Motor vehicle components, especially suspension systems and suspension components. On 5 June 2000 the applicant filed trade mark application number 837688, to register the trade mark shown below, for Motor vehicle components.

 

1. Both applications were examined in due course and as no grounds for rejection were raised in respect of either application they were accepted. Acceptance of the applications was advertised in the Australian Official Journal of Trade Marks on 14 September 2000 and 9 November 2000 respectively.

2. Volvo Car Corporation, ('the opponent' or 'Volvo') filed notices of opposition to registration of both trade marks on 14 March 2001, citing numerous grounds of opposition under the Trade Marks Act 1995, ('the Act').

3. The evidentiary phases of the opposition process were completed with the serving of the evidence in reply on 18 November 2003. Both parties applied to be heard and, as a delegate of the Registrar of Trade Marks, I heard the matter in Canberra, on 18 March 2003.  Mr Edward Heerey of Counsel instructed by Allans Arthur Robinson, Patent and Trade Mark Attorneys appeared on behalf of the opponent. The applicant was represented by Mr Peter Hastie of Counsel instructed by Deacons.

The Evidence

1. Evidence in support

Date	Declarant	Exhibits
14 December 2001	Garen Holopikian, a Trade Mark Attorney in the employ of Allans Arthur Robinson	GH-1 to GH-2
12 December 2001	Greg Daniel Bosnich, Product and Distribution Manager at Volvo Car Australia Pty Ltd (1st Dec)	GDB-1 to GDB-7

1. Evidence in answer

Date	Declarant	Exhibits
15 October 2002	Gary John King, Managing Director of C & B King & Sons Pty Ltd.	GJK-1 to GJK-31
17 October 2002	Angeline Peta Behan, a solicitor in the employ of Ahearn Fox, Patent and Trade mark Attorneys	APB-1 to APB-58
10 October 2002	David Brandon, employee of Aussie Brake and Clutch Service Pty Ltd.(Qld)	-
14 October 2002	Douglas Scottorn, Director of 4x4 Parts Australia Pty Ltd.(Qld)	-
15 October 2002	Brendan Proudman, Director of Kimberley Exhaust and Spring. (WA)	-

1. Evidence in reply

Date	Declarant	Exhibits
19 June 2003	Philip James Stewart, Director of Stylemaster Panels Pty Ltd. (Vic)	-
23 July 2003	Denys Francis Gillespie, General Manager of Northside Volvo	DFG-1 to DFG-7
8 august 2003	Andrew Moore, Dealer Principal of Bilia Volvo in Melbourne (Vic)	AM-1 to AM-5
13 October 2003	Priscilla Suzanne Rose, a Principal of Motorline Southside, a Volvo car dealership.(Qld)	-
13 October 2003	Mark Gordon Slorach, Office Manager of H. Harvey & Co Pty Limited. (Qld)	-
13 October 2003	Glen Michael O'Donnell, Body Shop Manager of Alto BMW Artarmon,(NSW)	-
13 November 2003	Greg Daniel Bosnich, Product and Distribution Manager at Volvo Car Australia Pty Ltd. (2nd Dec)	-

Declarations in support

1. Garen Holopikian declares that he caused a search to be conducted at the Allens Arthur Robinson library to identify references to the word Volvo in connection with the words CROSS COUNTRY, in Australian newspapers and motoring magazines. Exhibit GH-1 comprises 340 pages of downloaded copies of the electronic versions of the documents found. Exhibit GH-2 comprises a selection of photocopies of newspaper press clippings.

1. Greg Daniel Bosnich declares that he is a product and distribution manager at Volvo Car Australia Pty Ltd and that his company is a wholly owned subsidiary of the opponent. Mr Bosnich declares that his company manages the day to day affairs of Volvo in Australia including the vehicle dealerships, advertising, liaising with the parent company and providing a supply chain from Volvo's vehicle and vehicle parts and accessories manufacturing base in Sweden to dealerships and ultimately customers. Mr Bosnich declares that his company also sources parts and accessories from a limited number of carefully selected local suppliers. Mr Bosnich declares that

Volvo first used CROSS COUNTRY as a trade mark in Australia in 1997 to identify a vehicle it proposed to launch and that the first vehicles bearing the trade mark were offered for sale in Australia in March 1998.

1. Exhibit GDB-2 is an accessories catalogue and a brochure produced for the 2000 and 2001 model vehicles. The accessories catalogue is published in four languages including English, for the European market. The brochure refers to the VOLVO CROSS COUNTRY model, or the VOLVO V70/CROSS COUNTRY and in a note at the bottom of the page following the contents page: 'The Volvo CROSS COUNTRY is referred to in this brochure with the abbreviation XC.' The catalogue also notes that the Volvo CROSS COUNTRY is referred to by the abbreviation XC. Exhibit GDB-3 comprises a brochure and copies of extracts from newspapers and magazines. The newspaper and magazine extracts post date the priority dates of the subject applications so they are of no value in this opposition. The undated brochure, produced for 2000 and 2001, is entitled Volvo CROSS COUNTRY and refers to the new VOLVO CROSS COUNTRY. A view of the back of the vehicle shows the words CROSS COUNTRY appearing below the numberplate area indicating that it was the 2000 model as the 1998 version of the V70XC carries these words above the numberplate. There was no 1999 model. Exhibit GDB-5 is a brochure published in 1998 entitled Volvo V70 XC AWD. This exhibit only refers to the vehicle as the V70 XC and reports that, 'The V70 XC is many cars in one Volvo.' Exhibit GDB-5 is a video clip of a television advertisement showing two people in fairly rugged country while a voice in the background asks 'What are you doing this weekend?' The same voice continues with the words 'THE NEW CROSS COUNTRY BY VOLVO', which also appear on the screen, with a Volvo in the background. Mr Bosnich declares that this television advertisement was shown at 'selected peak viewing times' from Novemeber 2000 to February 2001. Exhibits GDB-6 provides sales figures for the years 1998 to 2001 and GDB-7 provides advertising figures for 1997 and 1998.

Declarations in answer

1. Gary John King declares that he is the Managing Director of the applicant and that he has been associated with the applicant since 1979. Mr King declares that the applicant trades as Suspension Supplies & Service, which incorporates Suspension Supplies and Brisbane Spring Works. These entities are the 'Business' to which Mr King refers in his declaration. Mr King declares the Business manufactures goods for light trucks, trailers and 4WD vehicles that include a variety of springs, shock absorbers, dampers, shackles, bushes, pins, torsion bars, 'U' bolts and chassis brackets. He reports that the trade mark was first used in respect of these goods in July 1999. Since the date of first use, declares Mr King, the trade mark has been used continuously on goods sold throughout Australia. Mr King provides sales figures which show that the volume of sales is quite substantial. Mr King declares that the trade mark has been promoted via the print media and television, the Internet, Yellowpages™, point of sale materials, signage, stationery and on staff uniform shirts and caps. Exhibits GJK-2 to GJK-19 are samples of advertising showing the trade mark in plain word and logo format.

2. Angeline Peta Behan declares that in order to ascertain the nature and extent of the opponent's use of the words CROSS COUNTRY as a trade mark in Australia she conducted searches of the opponent's official Australian web site, two of these searches being in September 2002 and one in October 2002. Ms Behan declares that her first search reveals that the Volvo vehicle is referred to in four ways, these being, VOLVO XC70, VOLVO 70XC, V70 XC and occasionally VOLVO CROSS COUNTRY. Ms Behan declares that a review of her second search shows that reference to CROSS COUNTRY has been removed from the site. Ms Behan declares that a review of her third search shows that the opponent has expanded its web page discussion of the vehicle and that she was only able to find one reference to CROSS COUNTRY in this search. Ms Behan also searched the websites of a number of Volvo dealers in the states and territories of Australia. Ms Behan declares that here she found some use of CROSS COUNTRY. She declares that from a review of the results of her searches she is able to infer that the opponent's use of CROSS COUNTRY in respect of motor vehicles is sporadic and inconsistent and that the opponent has not advised its retailers how to refer to the vehicle or, if it has, it has not enforced or promoted this usage.

3. The statutory declarations of David Brandon, Douglas Scottorn and David Proudman are trade declarations attesting to the declarants' knowledge of the applicant's trade marks and their lack of knowledge of any other entity using these marks. These are pro forma type declarations incorporating the declarants answers to several leading and inappropriate questions. Accordingly they lack merit and I place no reliance on them.

Declarations in reply

1. Philip James Stewart declares that he is a Director of Stylemaster Panels Pty Ltd, a vehicle smash repair, panel beating and vehicle repainting business and that he has been in the business since 1967. Mr Stewart declares that according to the business' records it repaired its first CROSS COUNTRY vehicle in October 1998 and that this involved ordering replacement parts from the Bilia Hawthorn Service Centre. (This entity is a Volvo Dealership). Mr Stewart declares that orders are placed by telephone with reference to the brand of the vehicle and the name of the part required.

1. Priscilla Suzanne Rose declares that she is a Principal of Motorline Southside, a Volvo passenger car dealership. Ms Rose declares that in May 2000 Motorline Southside took over the Southcity Volvo dealership and that an inspection of Southcity's records reveals that the CROSS COUNTRY station wagon was first offered for sale by the Southcity Volvo dealership in March 1998 and that CROSS COUNTRY parts and accessories have been available for sale since that date. Motorline Southside, declares Ms Rose, has continuously offered for sale CROSS COUNTRY vehicles and parts and accessories since it took over the Southcity Volvo dealership.

1. Glen Michael O'Donnell declares that he is the body shop manager of Alto BMW Artarmon, a business that includes vehicle smash repairs and repainting. Mr O'Donnell declares that this business is an approved repairer of Volvo passenger motor vehicles. He declares that when replacement parts are needed for Volvo vehicles they are ordered from Northside Volvo in Chatswood NSW. Mr Stewart estimates that his business would have repaired its first VOLVO CROSS COUNTRY in mid 1998. He declares that orders for parts are placed by e-mail or telephone and that in placing an order reference is made to the CROSS COUNTRY brand and the vehicle part.

2. Mark Gordon Slorach declares that he is the Office Manager of H Harvey & Co Pty Limited, a business whose activities include vehicle smash repair, panel beating and vehicle repainting. Mr Slorach declares that replacement parts for Volvo passenger vehicles are ordered by his business from Motorline Southside by telephone. He avers that such parts are ordered 'by reference to the brand of the vehicle (eg CROSS COUNTRY)' and the name of the part.

3. Andrew Moore declares that he is a dealer principal with Bilia Volvo which he declares is currently the leading retailer in Australia of Volvo passenger vehicles. Mr Moore declares that Bilia Volvo operates two dealerships, Bilia Hawthorn and Bilia Blackburn, both in Victoria. Mr Moore declares that the station wagon models offered for sale by Volvo are the V70, the V70 AWD and the V70XC. He reports that these models are built on the same base V70 platform which means that most of the parts and accessories are common to each vehicle. Mr Moore declares that the XC is a 'convenient abbreviation for the words 'cross country' and that these letters are readily recognised as indicating 'cross country'. Exhibit AM-1 is a staff training brochure produced in 1997 and entitled 'Volvo V70 AWD & V70 XC Features & Benefits including AWD Technology'. The only reference to CROSS COUNTRY occurs on page two where it reports, 'A brief description of the Volvo XC (Cross Country) is also included.' Mr Moore declares this brochure was made available to the Bilia Volvo dealership in late 1997 or early 1998, in advance of the launch of new Volvo vehicles. Photographs of the vehicle show the main brand VOLVO affixed at the front, to the radiator grille and at the back, it is affixed to the left hand side. On the back on the right hand side is the sub brand V70 XC with the letters AWD beneath the letters XC. The words CROSS COUNTRY are prominently displayed beneath the back window above the number plate.

4. Exhibit AM-2 is a brochure produced for Volvo's year 2000 models and entitled 'Volvo V70 & V70XC Accessories'. At the foot of page two of this brochure in small print is a note stating that, 'The VOLVO CROSS COUNTRY is referred to in this brochure with the abbreviation XC.' Page nine of the brochure is headed VOLVO CROSS COUNTRY and begins 'There is a whole range of accessories for your VOLVO CROSS COUNTRY ....'.

5. Denis Francis Gillespie declares that he is the General Manager of Northside Volvo and that the VOLVO CROSS COUNTRY vehicle was first offered for sale by the dealership in March 1998. Mr Gillespie reports that owners of CROSS COUNTRY vehicles ask for parts or accessories for their vehicles by indicating that they want a CROSS COUNTRY part or accessory. Exhibit DFG-1 is a copy of a Volvo product training brochure issued in 2000 and entitled ' Features And Benefits Volvo Cross Country'. This brochure makes numerous trade mark references to the VOLVO CROSS COUNTRY or to the CROSS COUNTRY model. Curiously, it also contains on page twenty-six the descriptive sentence, 'A Cross Country car is subjected to more harsh treatment and wear than a traditional car or estate.' Exhibit DFG-2 is a product training note pad for 2001 models that refers to the CROSS-COUNTRY model. Exhibit DFG-3 is an accessory price list effective from 1 July 2000; exhibit DFG-4 is a price list for Volvo vehicles, effective from 16 November 2000; exhibit DFG-5 is a price list for 2001 models effective from 1 August 2001 and exhibit DFG-6 is a brochure featuring the 2001 year models. All of these make reference to the CROSS COUNTRY. Exhibit DFG-7 is a photograph of a used 1998 model showing the words CROSS COUNTRY at the centre back above the number-plate area.

6. Greg Daniel Bosnich's declaration in reply, dated 13 November 2003, takes issue with claims and assertions in the King declaration and also reiterates that CROSS COUNTRY was used as a trade mark in respect of the 1998 model vehicle.

Grounds of opposition

1. At the hearing Mr Heerey pressed grounds of opposition under the provisions of sections 42, 58 and 60 of the Act. The remaining grounds under the provisions of sections 41, 43, 44, 59 and 62 were not pressed and I now find that they have not been established.

Submissions and the law

Section 58

1. Section 58 of the Act provides that the registration of a trade mark may be opposed on the ground that the applicant is not the owner of the trade mark. It is well established that the first person to use a trade mark within Australia for particular goods or services is the owner of the trade mark in Australia for those goods or services: Settef SpA v Riv-Oland Marble Co (Vic) Pty Ltd, 10 IPR 402. The opponent must show that it has used a trade mark that is at least substantially identical with the opposed trade mark, before the application date: Carnival Cruise Lines Inc. v Sitmar Cruises Limited 31 IPR 375.

2. Clearly the applicant's plain word trade mark, 821879, is substantially identical to the opponent's trade mark. The essential feature of the applicant's logo trade mark, 837688, is identical to the opponent's trade mark but this is not enough to determine that these two trade marks are substantially identical.

3. In defining the tests for substantial identity Windeyer J said, in Shell Co of Australia Ltd v Esso Standard Oil (Australia) Ltd, (1963) 109 CLR 407,

   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. Mr Heerey submitted that the primary striking feature of the applicant's logo trade mark is the name CROSS COUNTRY and that the ellipses are merely decorative background elements. He argued that the applicant's logo trade mark reproduces the distinct appearance, sound and meaning of the opponent's CROSS COUNTRY trade mark and that the trade marks should therefore be considered to be substantially identical.

5. I do not agree with Mr Heerey that the device elements lack importance in the mark as a whole. The two interlocking ellipses are a simple but striking feature of the logo trade mark and are, arguably, a separately registrable element of the mark. There is not 'a total impression of similarity to emerge from a comparison between the two marks' and on that basis I am unable to agree with Mr Heerey that the applicant's logo trade mark is substantially identical with the opponent's CROSS COUNTRY trade mark. The section 58 ground of opposition in respect of trade mark 837688 is therefore not established.

6. The goods of trade mark 821879 are motor vehicle components, a specification which encompasses any component for any kind of motor vehicle. Mr Heerey argued that motor vehicles should be considered 'the same kind of thing' as motor vehicle components. Mr Heerey said that although there has been no definitive judicial guidance as to what constitutes 'the same kind of thing', McDonalds Corporation v Macri Fruit Distributors Pty Limited, (2000) AIPC 91-583, provides some guidance on how the matter might be approached. The Hearing Officer said,

   The test must be, to take the respective goods of both the opponent and the applicant, and to consider the question - are these items 'the same kind of thing?' Such a test must consider the nature of the goods - the essential or inherent characteristics of the goods.

7. If this approach is taken it is obvious that a motor vehicle and motor vehicle components are not 'the same kind of thing'. The essential nature of a motor vehicle is that it is a complex, finished product comprised of numerous components that work together to transport people and goods from one place to another. The components of a motor vehicle comprise many individual parts and systems with distinctly different natures and functions, many of which are integral to the performance of the motor vehicle but none of which is capable, of itself, of performing the primary function of a motor vehicle. Motor vehicles and motor vehicle components are not 'the same kind of thing'. However motor vehicle components and motor vehicle parts are merely different ways of expressing the same idea so clearly the applicant's motor vehicle components are the 'same kind of thing' as the opponent's motor vehicle parts.

1. Mr Heerey noted that the applicant claims to have first used its trade marks in July 1999 and that it has used them continuously since that date whereas the opponent claims that first use of the opponent's trade mark, CROSS COUNTRY, in Australia, occurred in 1997. This use was by Volvo Car Australia Pty Ltd, a wholly owned subsidiary of the opponent, to identify a new station wagon which the opponent was about to launch in Australia. Mr Heerey submitted that exhibits GH-1 and GH-2 which comprise print outs of on-line newspaper reports and photocopies of press clippings respectively provide evidence, independent of the opponent, of use of the trade mark CROSS COUNTRY by the opponent, from a date early than the priority dates of the opposed applications. The first article is dated 20 November 1997. Further, argued Mr Heerey, the Rose, Moore and Gillespie declarations attest that the opponent's vehicles, parts and accessories under the trade mark CROSS COUNTRY, have been offered for sale in Australia by Volvo dealerships since March 1998. Likewise the Slorach, O'Donnell and Stewart declarations attest that replacement parts have been ordered from Volvo dealerships by reference to the trade mark CROSS COUNTRY since 1998.

2. Mr Heerey submitted that the applicant's trade marks are substantially identical with the opponent's trade mark and they have been used in respect of the same kind of goods, only from a date later than first use by the opponent of its trade mark and therefore, the ground of opposition under section 58 should succeed.

3. Mr Mastie responded by arguing that evidence demonstrated that the trade mark CROSS COUNTRY does not have a life of its own. He submitted that the exhibits, GH-1 and GH-2, from which he cited references from fifty articles dated between 19 November 1999 and 26 October 2001, show that the vehicle is referred to as the VOLVO CROSS COUNTRY. Mr Mastie noted that the bulk of the articles were for the year 2001 with significantly fewer references to CROSS COUNTRY appearing in 2000 and even fewer in 1999 and 1998. Mr Mastie submitted that in fact it was only subsequent to the release of the new model in September 2000 that the words CROSS COUNTRY were used to any significant extent. He said that prior to that time the words CROSS COUNTRY were only used to explain the letters XC in V70 XC, or to otherwise describe the vehicle. Mr Mastie referred to page 91 of exhibit GH-1 where in an article dated 24 March 2001 from the Townsville Bulletin, Karla Pincott begins,

   Swedish maker Volvo is having a serious stab at the growing cross-over vehicle sector with the latest incarnation of the XC, now named the Cross Country.

4. I think it would be generally acknowledged that the expression 'cross country' is one commonly used in relation to a characteristic of 4WD vehicles, that is, their ability to be driven over rugged country to reach otherwise inaccessible places. When Volvo produced its V70 XC model it also branded it CROSS COUNTRY to show that it was endeavouring to expand its reach into a new and different market. Additionally, to emphasise the vehicle's capabilities it set about educating consumers that the XC in its new model, means cross country. Perhaps because of this, press reports generally overlooked the fact that the vehicle carried the trade mark CROSS COUNTRY and focussed on explaining the XC. For example the following extracts have been taken from exhibit GH-1.

• ...the V70 XC is just one of five new models to hit our streets next year. ...XC - Volvo speak for 'cross country'. The Australian 20 November 1997

• The addition of the V70XC all-wheel-drive to the Volvo stable is one more step in the company's state by progression from stodge to style. The XC (that's cross country to most folk) ...The Canberra Times 27 March 1998

• Volvo's V70 XC (for cross country) wagon ...Sunday Telegraph 29 March 1998

• The V70 XC is Volvo's most recent arrival in Australia .... Volvo concedes the cross country wagon ... West Australian 4 April 1998

• Witness the recent release of the Volvo V70 XC (XC meaning Cross Country) ...The Age 8 May 1998

• Chunky looks, big wheels and purposeful roof bars mark out the V70 Cross Country, or XC, as Volvo badges its newest all-wheel-drive wagon ...The Australian  9 July 1998

• Volvo is projecting the XC (the marques shorthand for Cross Country ...Sunday Mail 5 July 1998

• Volvo has a new four wheel drive, the V70 Cross-Country AWD. ....The V70XC is more a conventional ...The Courier Mail 1 April 1998

• Volvo is promising a greener kinder future for four wheel drives starting with its new V70XC wagon. The cross country wagon is the latest in ...Herald Sun 3 April 1998

• Volvo has developed the V70 AWD as well as the V70 XC (which is a cross country vehicle) ...Australian Financial Review 15 August 1998

• Premier Motors, the winners of the national Volvo Dealer of the Year Award, will have on display at Mingenew the Volvo V70 all-wheel-drive cross country model. ...West Australian 9 September 1999

• In September the XC (for Cross Country) version of the V70, offering a part-time 4WD capability, arrives in Australia. ...The Canberra Times 3 March 2000.

1. However some writers such as Paul Gover, did appear to appreciate the significance of CROSS COUNTRY as a trade mark. In an article in the Herald Sun of 12 June 1998 he writes:

   The CROSS COUNTRY promises the ability ...

   The CROSS COUNTRY looks like a V70 ...

   The CROSS COUNTRY is a softly-softly style of car.

1. The opponent did not promote the trade mark CROSS COUNTRY in any significant way before the year 2000. I note that prior to 2000 its printed materials only refer to the V70 XC. It was only after the release of the 2000 model, that the vehicle was promoted as the Volvo CROSS COUNTRY in its printed brochures. Nonetheless, the evidence shows that the trade mark, CROSS COUNTRY, was applied to the vehicles offered for sale in Australia in March 1998. The evidence of the motor vehicle dealers, (Rose, Moore and Gillespie declarations) is that the vehicle was referred to as the CROSS COUNTRY. Likewise the evidence shows that the tradespersons who repair Volvo vehicles, (O'Donnell, Slorach and Stewart declarations) commonly identified and referred to the V70 XC as the CROSS COUNTRY from as early as mid 1998.

2. While the opponent has not ensured, as assiduously as it might, that use of the words CROSS COUNTRY in respect of the V70 XC model is trade mark use, I am satisfied that the opponent did use these words as a trade mark when the 1998 model was launched and I am satisfied that the opponent has continued to use these words as a trade mark in respect of its motor vehicles and their parts and accessories. I find that consumers identify the words CROSS COUNTRY as an indicator of the origin of the goods.

3. The applicant claims to have first used the trade mark in July 1999, later than the date of first use by the opponent of its trade mark. Exhibit GJK-20 is an extract from the Brisbane Yellowpages™ for the year 2000 showing the CROSS COUNTRY trade mark in use. As telephone directories require a two to three month lead-in time before production this evidence demonstrates that the trade mark was in use at least as early as late 1999. I am satisfied that when the applicant adopted its trade marks it did so honestly and without an awareness of the opponent's trade mark. It is just an unfortunate coincidence that the two separate entities separately thought of the same trade mark for the same goods.

4. I find that the opponent was in fact the first user of the trade mark and that it is, in consequence, the owner of the trade mark. The ground of opposition under the provisions of section 58 of the Act has been established in respect of trade mark number 821879.

Section 60

1. In order to satisfy a ground of opposition under the provisions of section 60 of the Act, the opponent must establish that the applied for trade mark is substantially identical with or deceptively similar to another trade mark that has acquired a reputation in Australia before the priority date of the applied for trade mark and, because of that reputation, use by the applicant of its trade mark, would be likely to deceive or cause confusion. Section 60 does not require the trade mark on which the opponent relies to be registered or the subject of an application for registration nor does it require the relevant goods or services to be the same or closely related although, in this case, the relevant goods are the same.

2. I have already found that the applicant's trade mark number 821879 is substantially identical with the opponent's trade mark. I now find that if the well known tests for determining deceptive similarity, as defined by Dixon and McTiernan JJ in Australian Woollen Mills Ltd v F S Walton & Co Ltd (1937) 58 CLR 641 at 658 are applied to trade mark number 837688 there can be no doubt that this trade mark is deceptively similar to the opponent's trade mark.

3. The reputation in Australia cannot be assumed - it must still be established as a question of fact: Lockhart J in Conagra Inc v McCain Foods (Aust) Pty Ltd, 1992 33 FCR 302. The evidence shows that the opponent's expenditure on advertising for the years 1997 to 1998 was low and sales prior to the priority dates of both applications were also low. While press reports may contribute to the garnering of a reputation I am not satisfied that in respect of the opponent's trade mark they did assist in establishing a reputation. The majority of press reports before the priority dates indicate that the writers themselves did not appear to appreciate that any trade mark significance attached to the words CROSS COUNTRY. I have no other evidence in support of the opponent's claim to possessing a substantial reputation in the trade mark. All in all I am not satisfied that the opponent had acquired the requisite reputation in its trade mark before the priority dates of either of the subject applications. This ground of opposition has not been established.

Section 42(b)

1. Subsection 42(b) of the Act provides that an application for the registration of a trade mark must be rejected if its use would be contrary to law. The Registrar is obliged, when assessing whether use would be contrary to law to take into account the operation of laws and legislation other than the Trade Marks Act 1995.

2. Mr Heerey submitted that following the decision of Madgwick J in Advantage Rent-a-Car Inc v Advantage Car Rental Pty Ltd, (2001) 52 IPR 24, a ground of opposition may be found on a finding that the applicant's use of its trade mark would amount to passing off or deceptive or misleading conduct in terms of sections 52 or 53 of the Trade Practices Act 1974, (TPA).

3. Conduct that causes mere confusion or uncertainty in the minds of the purchasing public, in the sense that purchasers may wonder if the two products or services originate from the same source is not sufficient to breach the TPA. The threshold to be met under section 52 of the TPA is higher than that set by sections 44 and 60 of the Act. Shanahan's Australian Law of Trade Marks and Passing Off, 3rd Edition, 2003 at page 598 states:

   "Misleading conduct does not merely cause confusion; it actually directs a person towards the wrong choice".

4. Mr Heerey submitted that in Equity Access Pty Limited v Westpac Banking Corporation, (1989) 16 IPR 431, Hill J formulated a number of propositions relevant to a determination of whether a contravention of section 52 was made out and which in respect of this opposition could be summarised as follows:

   (a)The applicant's use of its marks must convey in all the circumstances of the case a misrepresentation;

   (b)the error or misconception must result from the conduct of the applicant, and not from other circumstances for which the applicant is not responsible;

   (c)conduct will be likely to mislead or deceive if there is a ‘real or not remote chance or possibility’ of misleading or deceiving, regardless of whether it is less than 50%;

   (d)conduct causing mere confusion or uncertainty is not necessarily co-extensive with misleading or deceptive conduct. ... actual deception need not be shown ....the delegate must consider whether a substantial number of likely purchasers are likely to be deceived;

   (e)the opponent must establish that is has acquired the relevant reputation in the name, CROSS COUNTRY;

   (f)It is not necessary for the opponent to prove that the applicant intended to mislead or deceive.

5. Mr Heerey argued that the opponent has a substantial reputation in the trade mark CROSS COUNTRY and that the applicant's use of an identical trade mark and an aurally identical trade mark, in the same market for goods which are commonly ordered by telephone must weigh heavily towards a conclusion that use of the applicant's trade mark would mislead or deceive consumers.

6. Mr Mastie did not agree. He said that Volvo parts are ordered from Volvo dealerships and thus it is impossible to see how deception could occur.

7. In Dairy Vale Metro Co-Operative Limited v Brownes Dairy Pty Limited, (1981) 54 FLR 243 Toohey J. said:

   For the public to be misled or deceived it seems to me that there must be in the minds of the relevant public some established truth against which the notion of misleading or deceptive conduct can be measured.

8. I recognise that the trade mark VOLVO has a considerable reputation, achieved through long use in respect of luxury vehicles, however, I am not satisfied that the reputation extends to CROSS COUNTRY. The evidence does not support this claim. While taking into account that sales of luxury vehicles will always be much lower than those for more ordinary vehicles, I do not think the sales in respect of the CROSS COUNTRY vehicle have been sufficient to have established a substantial reputation. Nor do I consider that the marketing of goods under the trade mark has been vigorous enough to establish a substantial reputation in the trade mark.

9. The applicant's goods are made for heavy and light trucks, trailers and 4WD vehicles and a customer seeking to purchase a CROSS COUNTRY part from the applicant must identify the main brand, sub-brand, model and year of the vehicle for which s/he wants a replacement part: (exhibit GJK-30). Volvo makes most of its own replacement parts although it sources some parts from a strictly limited number of carefully selected local suppliers: (Bosnich declaration of December 2001). The evidence shows that it is usual for tradespersons servicing or repairing Volvo vehicles to source replacement parts from the service centres of Volvo dealerships, and that they identify the part required by reference to the CROSS COUNTRY brand in order to differentiate the part from other Volvo vehicle parts. Here there is no likelihood of deception because the opponent maintains full control over the goods it stocks. Should a tradesperson seek to purchase a generic part for a Volvo CROSS COUNTRY from the applicant, s/he would need to provide the appropriate information to the applicant, and thus would not be directed towards the wrong choice. Moreover, I do not believe that any purchaser would be misled into a belief that in seeking a generic part in a generic parts outlet s/he could expect to purchase a genuine VOLVO CROSS COUNTRY part. Finally, I consider it quite unlikely that the owner or repairer of a vehicle other than a Volvo would seek to purchase a CROSS COUNTRY trade marked part from a Volvo service centre.

10. There may be some circumstances in which use by the applicant of its trade marks could be conduct that is misleading or deceptive or likely to mislead or deceive, but I am not so satisfied that it would be so. This ground of opposition as not been established.

Decision

1. The opponent has succeeded in establishing its ground of opposition under the provisions of section 58 of the Act in respect of trade mark 821879. Therefore in accordance with section 55 of the Act, I refuse to register trade marks 821879.

1. None of the grounds of opposition have been established in respect of trade mark number 837688. Therefore, trade mark number 837688 may proceed to registration 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 the appeal has been decided or discontinued.

Costs

1. As the outcome of this hearing is that the opponent has been successful in establishing a ground of opposition in respect of the plain word trade mark, 821879 and the applicant has been successful in terms of its logo trade mark, 837688, in that none of the grounds of opposition has been established, I direct that each party shall be responsible for its own costs.

Mary Skivington

Hearing Officer

Trade Marks Hearings

30 June 2004