Volvo Trademark Holding AB v Hebei Aulion Heavy Industries Co Ltd

[2009] ATMO 46

TRADE MARKS ACT 1995

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

Re:Opposition by VOLVO Trademark Holding AB to registration of trade mark applications 1109698, 1109699 (7, 12) – LOVOL AND DEVICE - filed in the name of Hebei Aulion Heavy Industries Co Ltd.

Delegate:

Jock McDonagh

Representation:

Opponent: Edward Heerey of counsel instructed by Griffith Hack patent & trade mark attorneys

Applicant: Siobhán Ryan of counsel instructed by Davies Collison Cave patent & trade mark attorneys

Decision:

2009 ATMO 46

Section 52 opposition sections 44 and 60 – substantial identity or deceptive similarity not established - registration proceeding - costs awarded against opponent

Background

1. Hebei Aulion Heavy Industries Co. Ltd. (‘the applicant’) is the applicant for registration of trade marks, current details of which are:

Application No:	1109698	1109699
Priority Date:	21 April 2006	21 April 2006
Goods:	Class 7: Harvesters; agricultural machines, road rollers; excavators; loaders; bulldozers; concrete mixers; cranes; grain threshing machines; rice transplanters Class 12: Automobiles; vehicles for transport for agricultural use; motorcycles; derrick cars; cycle cars; bicycles; electric vehicles; engines for land vehicles; fork lift trucks; concrete mixing trucks; tractors	Class 7: Harvesters; agricultural machines, road rollers; excavators; loaders; bulldozers; concrete mixers; cranes; grain threshing machines; rice transplanters Class 12: Automobiles; vehicles for transport for agricultural use; motorcycles; derrick cars; cycle cars; bicycles; electric vehicles; engines for land vehicles; fork lift trucks; concrete mixing trucks; tractors
Trade Mark:	LOVOL

1. Following examination, the application was accepted for possible registration and advertised as such in the Official Journal of Trade Marks on 24 August 2006.

2. On 25 August 2006, VOLVO Trademark Holding AB (‘the opponent’) filed a Notice of Opposition under section 52 of the Trade Mark Act 1995 (‘the Act’), objecting to the registration of the trade mark.

3. The parties served and filed evidence in support, evidence in answer and evidence in reply to the opposition. That evidence is shown below:

Declarant	Status	Date, Known as	Exhibits
Evidence in Support
Monica Dempe	Managing Director of opponent	12.02.07, Dempe	A to Z, AB to AN, AP to AZ, BA to BE
Evidence in Answer
Katherine Louise Kemp	Trade Mark searcher	29.02.07, Kemp	KLK-1 to KLK-3
Wang Jinfu	President of applicant	24.04.07, Jinfu	WJ-1 to WJ-7
Evidence in Reply
Anne Makrigiorgos	Principal, opponent’s attorneys	22.07.08, Makrigiorgos 1	AM-1
Anne Makrigiorgos	Principal, opponent’s attorneys	22.07.08, Makrigiorgos 2	AM-1

1. The opponent asked to be heard and the matter came before me as a delegate of the Registrar of Trade Marks, in Melbourne, on 27 March 2009.  The opponent was represented at the hearing by Edward Heerey of counsel instructed by Griffith Hack, patent and trade mark attorneys. The applicant was represented by Siobhán Ryan of counsel instructed by Davies Collison Cave, patent & trade mark attorneys.

2. The Notice of Opposition cited most grounds of opposition available to the opponent under the Act; however, at the hearing Mr Heerey limited his submissions to those grounds of opposition under sections 44 and 60. Further, Mr Heerey stipulated that the opponent did not press any argument that the respective marks are substantially identical, but rather relied on deceptive similarity  For the sake of completeness, I treat the remaining grounds of opposition as having been abandoned.

3. The registrations relied upon by the opponent in support of the section 44 ground are as follows:

Registration number	Trade Mark	Goods	Priority Date
164628	VOLVO	Class 12: Motor cars, engines and motors, all for motor cars, and parts of all these goods.	18.01.61
288859	VOLVO	Class 7: All goods in Class 7	16.07.75
342015	VOLVO	Class 12 Cars, buses, trucks, tractor units/prime movers, agricultural tractors, on and off road vehicles, track-laying vehicles, military vehicles, amphibious vehicles, boats; and parts and accessories for all of these items which do not pertain to other classes	17.01.80

Discussion

Section 44 Ground of Opposition

1. The relevant applicable legislation for the first ground is as follows:

Identical etc. trade marks

44.(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.

1. The definition of the term deceptive similarity is provided in the Act as follows:

Definition of deceptively similar

10. 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.

1. The trade marks cited by the opponent have earlier priority dates and are for arguably similar goods. The key issue in this ground – and for the section 60 ground - is thus whether or not the applicant’s marks are deceptively similar to the cited marks, since as mentioned, the opponent does not argue that the marks are substantially identical.

2. Both parties cited the well accepted tests for determining deceptive similarity as discussed in Shell Co of Australia Limited v Esso Standard Oil (Australia) Limited (1963) 109 CLR 407 at 414 and Australian Woollen Mills Ltd. V FS Walton & Co. Ltd. (1937) 58 CLR 641 at 658.

3. Counsel for the opponent directed my attention to a large number of word marks recently found to be deceptively similar by the Federal Court and by this Office. While I shall not list them here, I have taken them into account in making my decision.

4. Counsel for the opponent highlighted the following considerations, which he submitted clearly demonstrated that the marks were deceptively similar:

a.visually the marks are similar, particularly in the common use twice of the letter O and the central use of the letter V;

b.aurally the marks are similar in the use of common V, O and L sounds, merely rearranged;

c.otherwise, a meticulous comparison of the two marks to pick out differences between them is inappropriate for determining deceptive similarity;

d.the rearrangement of VOLVO into LOVOL might be interpreted (consciously or subconsciously) as a play on the word VOLVO, much like OVLOV or “pig Latin”; and

e.taking these considerations into account, combined with a consumer’s imperfect recollection of VOLVO, there is clearly a danger that a significant number of consumers will wonder as to the source of the goods, even if they are merely perplexed or mixed up, or entertain a reasonable doubt.

1. On the other hand, counsel for the applicant argued that the judicial tests mentioned in paragraph 12 above supported the applicant’s case that the parties’ respective marks were sufficiently different to avoid a finding of deceptively similarity. The following factors were highlighted:

a.the word LOVOL the applicant’s marks is a palindrome, reading the same backwards as forwards;

b.the visual symmetry of the word LOVOL is striking, especially the “book-ending” of the letter V by the letters OL;

c.VOLVO has no symmetry and has the two letters V visually dominant;

d.the obvious differences between the devices of the competing marks;

e.the marks are pronounced very differently, particularly in Australian accents;

f.“Volvo” is Latin for “I roll” or “I turn” while the opponent’s mark is an invented word;

g.there is no common idea shared by the marks; and

h.there is no pattern of the opponent varying or playing with the VOLVO mark to suggest a series of VOLVO derivative marks.

1. In considering the similarity or otherwise of the parties’ marks, I have taken the statutory definition into account as well as the judicial authorities cited by the parties, including those I have mentioned above.

2. Having also considered the evidence filed and served by both parties, I am not satisfied that the applicant’s trade mark is deceptively similar to the opponent’s cited marks. In the circumstances that the goods will be bought or sold, I do not consider that there is a real and substantial risk that the use of the LOVOL marks will be that a reasonable person, or a number of persons in the relevant class of likely purchasers, will be caused to wonder whether it might not be the case that the two products come from the same source.

3. This ground of opposition has not been established.

Section 60 Ground of Opposition

1. The applications were filed before the Trade Marks Act Amendment Act 2006 amendment to section 60 commenced. Accordingly, the unamended version of section 60 applies[1], which requires that the applicant’s mark be substantially identical with or deceptively similar to the opponent’s prior marks as a threshold issue to be determined before considering reputation.

   [1] Apple Computer Inc v Gundy Computer Services Pty Ltd [2008] ATMO 33 (20 May 2008)

2. Counsel for the opponent had conceded in his submissions that both grounds of oppositions would stand or fall on this threshold issue. As I have already determined that the marks are not deceptively similar, and it was conceded that the marks were not substantially identical, this ground is not established.

Decision

1. Section 55 of the Act provides:

   Decision

   55. 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. I have found that the opponent has been unsuccessful under each of the grounds listed on the Notice of Opposition.

3. The trade mark applications may then proceed to registration one month from the date of this decision.  If the Registrar has been served with a notice of appeal against this decision, I direct that registration shall not occur until any appeal has been decided or discontinued and that the disposition of the application be in accordance with the Court’s direction or order.

Costs

1. The parties sought their costs in this matter. However, it is usual for costs to follow the event, and I see no reason here to deviate from that course. I award costs, according to the official scale, against the unsuccessful opponent with costs for the second of the two oppositions to be assessed as set out in the table attached to the Hearing Officer’s decision in James Hardie & Co Pty Ltd v Hume Industries (Malaysia) Berhad (2001) 53 IPR 591.

Jock McDonagh

Hearing Officer

Trade Marks Hearings

30 June 2009