Volvo Trademark Holding AB v Timken UK Limited

[2016] ATMO 91

TRADE MARKS ACT 1995

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

Re:Opposition by Volvo Trademark Holding AB to extension of protection to Australia of International Registration Designating Australia number 1392001 (7, 12, 42) (International Registration number 1053071) - REVOLVO – held by Timken UK Limited.

Delegate:	Adrian Richards
Representation:	Opponent: Siobhan Ryan of Counsel instructed by Griffith Hack Holder: Collison & Co
Decision:	2016 ATMO 91 Opposition under regulation 17A.29 of the Trade Marks Regulations 1995 (Cth) – grounds of opposition under sections 43, 44 and 60 pressed – section 44 established – honest concurrent use under section 44(3) not shown – registration refused

Background

1. This decision concerns an opposition to the extension of protection to Australia of International Registration no. 1053071. The current details of the resulting International Registration Designating Australia (‘the IRDA’) are:

   IRDA Number:  1392001

   Holder:  Timken UK Limited (‘the Holder’)

   IRDA:  REVOLVO

   Lodgement Date:                  9 September 2010

   Convention Priority Date:   7 September 2010

   Specification of Goods:       Class 7: Anti-friction bearings; bearings for industrial machines and equipment, namely mining equipment, quarrying equipment, machines used in the manufacture and processing of paper and pulp, food, beverages and metal; bearings for industrial machines and equipment used in the extraction industries; bearings for industrial machines and equipment used in the printing industry; bearings for industrial machines and equipment for power generation; bearings for industrial machines and equipment used in civil engineering projects, namely the building of railways; bearings for motors, gearboxes, and engines (excluding land vehicle motors); bearings for use in theme park rides; bearings for shafts; bearings for transmission shafts; parts and fittings therefor, namely rings for bearings, bearing brackets, bushings for bearings, discs for clutch thrust bearings

   Class 12: Anti-friction bearings; bearings for use in land, air and sea vehicles and vessels; anti-friction bearings for motors, gearboxes, and engines; release bearings for the friction clutches of land vehicles; transmission bearings for land vehicles; parts and fittings therefor, namely rings for bearings, bearing brackets, bushings for bearings, discs for clutch thrust bearings

   Class 42: Consultancy services relating to the design of anti-friction bearings; consultancy services relating to the design of bearings for industrial machines and equipment, (namely mining and quarrying equipment, machines used in the manufacture and processing of paper and pulp, food, beverages and metal, machines and equipment used in the extraction industries, the printing industry, machines and equipment for power generation, machines and equipment used in civil engineering projects) motors, gearboxes, and engines, shafts and transmission shafts; consultancy services relating to the design of bearings for use in theme park rides; design services concerning bearings for industrial machines and equipment, namely mining equipment, quarrying equipment, machines used in the manufacture and processing of paper and pulp, food, beverages and metal, machines and equipment used in the extraction industries, the printing industry, machines and equipment for power generation, machines and equipment used in civil engineering projects; design services for parts of vehicle motors, namely anti-friction bearings for motors, gearboxes, and engines, bearings for shafts and transmission shafts; design services for anti-friction bearings for use in theme park rides; design services for parts and fittings for anti-friction bearings, namely rings for bearings, bearing brackets, bushings for bearings, discs for clutch thrust bearings; computer aided design engineering services; engineering services for the design of anti-friction bearings for industrial machines and equipment, (namely mining equipment, quarrying equipment, machines used in the manufacture and processing of paper and pulp, food, beverages and metal machines and equipment used in the extraction industries, the printing industry, machines and equipment for power generation, machines and equipment used in civil engineering projects), motors, gearboxes, engines, shafts and transmission shafts and for use in theme park rides

2. Upon notification of the IRDA from the International Bureau of the World Intellectual Property Organisation, it was examined as required by reg 17A.12 of the Trade Marks Regulations 1995 (Cth) (‘the Regulations’). No grounds for refusal were raised at examination, and so the IRDA was advertised as having been accepted for possible extension of protection to Australia on 13 January 2011.

3. A notice of opposition was filed on 11 March 2011 by Volvo Trademark Holding AB (‘the Opponent’) nominating grounds of opposition under sections 39, 41, 42, 43, 44, 58, 58A, 59, 60, 61, 62 and 62A of the Trade Marks Act 1995 (Cth) (‘the Act’). The Opponent was subsequently informed of the due date for its evidence in support. Before the evidence in support fell due, the opposition proceedings were suspended by mutual consent of the parties, so they might pursue a negotiated outcome.

4. Proceedings recommenced on 29 January 2013, and a deadline for the filing of evidence in support was set. The Opponent filed evidence in support, and the Holder filed evidence in answer. On 19 December 2013 the parties asked to suspend the opposition proceedings for a second time. This second suspension remained in place for some time, with the evidence in reply due date eventually set for 19 March 2015.

5. The evidence in reply due date passed by without any more evidence from the Opponent, so the parties were invited to request to be heard or to provide written submissions in relation to the opposition. In response, the Opponent asked to be heard in person.

6. I conducted the hearing in Melbourne on 15 September 2015. In attendance on behalf of the Opponent was Siobhan Ryan of Counsel, instructed by Griffith Hack. The Holder opted not to appear, its legal representatives Collison & Co filing written submissions beforehand.

Evidence

1. The evidence filed during this opposition consists of:

   Evidence in Support

   Statutory declaration of Monica Dempe, Managing Director of the Opponent, made 16 April 2013 with exhibits A to BP (amounting to 68 exhibits).

   Evidence in Answer

   Statutory declaration of John O’Mahoney, Trade Mark Attorney for the Holder, made 24 July 2013.

2. Ms Dempe’s declaration includes evidence of the Opponent’s trade mark holdings in Australia and overseas, as well as details and history of the Opponent’s business activities and that of certain related entities including the licensees of its trade marks. It explains that the Opponent’s predecessor in title, AB Volvo, adopted a plain word trade mark of the word VOLVO on 15 May 1915. As well as plain word trade marks, the Opponent has registered trade marks for, and uses in Australia a number of variants of device trade marks that incorporate the word VOLVO, for example:

1. I have referred to these below as the ‘composite marks’, and the Opponent’s trade marks for the word VOLVO solus as the ‘plain word marks’, I refer to them all together as ‘the Opponent’s trade marks’.

2. Ms Dempe’s declaration further demonstrates that goods sold under the Opponent’s trade marks hold a large share of a number of markets in Australia, including cars, trucks, buses, construction equipment and marine engines. Significant to this opposition, this evidence also shows that the Opponent’s trade marks are used in the trade of both new and second hand parts for the aforementioned vehicles and engines. The evidence also shows that the Opponent’s trade marks are actively promoted in Australia, with an annual advertising spend commensurate with a business of its considerable size.

3. Much of Mr O’Mahoney’s declaration compares the IRDA with the plain word marks. I have outlined the relevant aspects of the Holder’s submissions on this issue in my discussion of the s 44 grounds of opposition below. Aside from this, the declaration includes a summation and critique of the evidence in support, and a statement that the Holder has sold branded goods in Australia since ‘at least 2000’ with no instances of actual confusion.

Grounds and Onus

1. The notice of opposition appears to invoke all of the grounds of opposition available under the Act. The Opponent’s outline of submissions brought with them a measure of focus, indicating that only grounds of opposition under ss 43, 44 and 60 were to be pressed. Ms Ryan subsequently confirmed this approach at the hearing. Sections 43 and 44 are available to the Opponent by virtue of reg 17A.31(1), and s 60 by way of reg 17A.31(2).[1]

   [1] Since the notice of opposition was filed prior to 15 April 2013, these were the relevant regulations at that point in time.

2. The Opponent bears the onus of establishing a ground of opposition on the balance of probabilities.[2] The rights of the parties are to be determined as at 7 September 2010, being the convention priority date.[3] To succeed in this opposition, the Opponent need only establish one of the nominated grounds of opposition. For the reasons set out in my discussion below, it has only been necessary to consider the ground of opposition under s 44.

Discussion

[2] Telstra Corporation Limited v Phone Directories Company Pty Ltd [2015] FCAFC 156, [133]; Pfizer Products Inc. v Karam (2006) 219 FCR 585, 594 [26].

[3] Southern Cross Refrigerating v Toowoomba Foundry Pty Ltd (1953) 91 CLR 592, 595.

Section 44

1. Relevant to the parties’ submissions and my discussion below, s 44 of the Act provides:

   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)   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…

   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.

2. To succeed under this ground, the Opponent must therefore:

   ·   identify a trade mark with an earlier priority date

   ·   which claims similar goods/services or closely related services, and

   ·   is substantially identical with, deceptively similar to the IRDA

3. If the Opponent establishes all of this, one of the ways the Holder can still obtain registration would be for the Holder to demonstrate that there has been honest concurrent use of the IRDA and the earlier trade mark.

A Trade Mark with an Earlier Priority Date

1. In relation to this ground of opposition, the Opponent has relied upon 15 of its registered trade marks, 11 of which consist of the plain word VOLVO. The other four are composite marks which incorporate the word VOLVO, as in the examples I reproduced above in my discussion of the evidence.

2. All of the Opponent’s trade marks have an earlier priority date than the IRDA, so the requirements of ss 44(1)(b) and 44(2)(b) have been satisfied.

Similar/Closely Related Goods and Services

1. As is apparent from the introductory paragraph to this decision, the IRDA’s specification of goods and services is lengthy and fine grained. Helpfully, the parties agree that the claimed goods can be more succinctly described as ‘bearings and anti-friction bearings’, and the claimed services as ‘consultancy and engineering services relating to the design of bearings and anti-friction bearings’.

2. Beginning with class 7 goods in the specification for the IRDA, the Opponent has nominated registered trade mark no. 288859 for the plain word VOLVO which claims ‘all goods in class 7’. Such a broad claim encompasses the IRDA’s claim in this class. On top of this, the Opponent has nominated more specific claims for its other trade marks, submitting that the claim for parts of motors and transmissions in registered trade mark no. 534543 (composite) encompasses bearings for motors and transmissions, and that registered trade mark no. 1211455 (composite) includes a similar claim. A claim for parts in these contexts would include a claim for bearings. Having read through the specification for registered trade mark no. 1211455, I also note that specification includes specific claims for ‘bearings’, ‘slide bearings’ and ‘roller bearings’. Given all of this, the goods in class 7 are similar within the meaning given in s 14(1) of the Act.

3. The Opponent also submits that the IRDA’s claims for goods in class 12 are also similar to the following goods in the specification of its earlier trade marks:

• 164628 for car engine/motor parts (plain word)

• 342015 for land, air and sea vehicle parts (plain word)

• 534544 for vehicle, engine and transmission parts (composite)

• 1211455 for vehicle parts (composite)

1. In line with my findings in relation to class 9, I also find that the goods claimed in class 12 of the IRDA are similar to the four sets of goods above.

2. The Opponent submits that the IRDA’s claims for services in class 42 are similar to the specification for trade mark no. 990356 (plain word), which among other things claims ‘technical consultation and preparation of expert opinions’, and ‘engineering services’. This broad claim to ‘engineering services’ encompasses the IRDA’s claims to specific aspects of engineering services. Further, I consider that ‘technical consultation and preparation of expert opinions’, another broad claim, are services which are of the same description as the various consultancy services that the IRDA claims in class 42.

3. The Holder has not contradicted the Opponent’s submissions on the apparent similarity of goods and services, and appears to have conceded this point in its written submissions, stating that it ‘acknowledges at least some of the Opponent’s cited marks are registered in respect to similar goods or closely related services to the [IRDA]’.

4. To sum up on the similarity of goods and services, all of the goods claimed by the IRDA are similar to goods claimed by trade mark nos. 164628, 288859, 342015, 534543, 534544 and 1211455, and all of the services claimed by the IRDA are similar to the services claimed by trade mark no. 990356. Further, while the composite marks encompass aspects of the goods claimed by the IRDA, the plain word marks 164628, 288859, 342015 and 990356 go a step further, encompassing all of the goods and the services claimed by the IRDA. Therefore, I have only needed to focus on the plain word marks in my discussion below. At any rate, if I were to find that the IRDA is not deceptively similar to the word VOLVO, it would follow that the IRDA would not be deceptively similar to the Opponent’s composite trade marks.

Substantially Identical and/or Deceptively Similar

1. The parties agree that none of the Opponent’s trade marks are substantially identical to the IRDA. The test for substantial identity requires a side-by-side comparison conveying ‘a total impression of resemblance’.[4] On such a comparison there is a marked visual difference between REVOLVO and VOLVO, being the prefix RE-. As such I find that these trade marks are not substantially identical.

   [4] Shell Co of Australia Ltd v Esso Standard Oil (Aust) Ltd (1963) 109 CLR 407, 414.

2. I now turn to whether the trade marks VOLVO and REVOLVO are deceptively similar. Section 10 of the Act provides that ‘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’. The decided cases make clear that the comparison for present purposes is not a side-by-side one, instead requiring that I consider the impression on the minds of the relevant consumers applying what is often described as a test of imperfect recollection:

   …the comparison is…between, on the one hand, the impression based on recollection of the [earlier trade mark] that persons of ordinary intelligence and memory would have; and, on the other hand, the impressions that such persons would get from the [opposed trade mark].  To quote Lord Radcliffe again [de Cordova v Vick Chemical Co (1951) 68 RPC 103 at 106; 1B IPR 496 at 499]:

   The likelihood of confusion or deception in such cases is not disproved by placing the two marks side by side and demonstrating how small is the chance of error in any customer who places his order for goods with both the marks clearly before him … It is more useful to observe that in most persons the eye is not an accurate recorder of visual detail, and that marks are remembered rather by general impressions or by some significant detail than by any photographic recollection of the whole.[5]

   [5] Shell Co of Australia Ltd v Esso Standard Oil (Aust) Ltd (1963) 109 CLR 407, 415.

3. I deal with the parties’ detailed submissions on the likelihood of deception or confusion below. For now, on balance I consider that it likely that, when recalling ‘general impressions’ or ‘some significant detail’ customers of bearings and related consultancy services would appreciate a visual resemblance between VOLVO and REVOLVO. The question then becomes whether that resemblance in the mind of the consumer translates into a likelihood of deception or confusion.

4. Deception represents the higher standard, having been held to imply ‘the creation of an incorrect belief or mental impression’.[6] On the other hand, confusion merely requires a likelihood 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.’[7] Confusion can be established ‘even if [the] confusion is unlikely to persist up to the point of, and contribute to, inducing sale’.[8] The relatively low bar that confusion represents has been noted by the Full Bench of the Federal Court:

   …the threshold for confusion is not high. Courts must compare the marks visually and aurally in the context of how the marks are used, and decide if there is a reasonable probability that the ordinary person to whom the marks are targeted, entertains a reasonable doubt as to the relationship between the marks.[9]

   [6] Pioneer Hi-Bred Corn Co v Hy-line Chicks Pty Ltd [1979] RPC 410, 423.

   [7] Southern Cross Refrigerating Co v Toowoomba Foundry Pty Ltd (1954) 91 CLR 529, 595.

   [8] Tivo Inc v Vivo International Corporation Pty Ltd [2012] FCA 252, [105].

   [9] Australian Postal Foundation Corporation v Digital Post Australia Pty Ltd (2013) 308 ALR 1, 14 [70].

1. The level of certainty that the decision maker should have in assessing the likelihood of confusion has been expressed as a ‘real, tangible danger of its occurring’.[10]

   [10] Southern Cross Refrigerating Co v Toowoomba Foundry Pty Ltd (1954) 91 CLR 529, 595.

2. Regarding the likelihood of deception or confusion, the Holder places emphasis on the nature of the relevant consumer of bearings and anti-friction bearings. The Opponent has made no submissions on this issue. In essence the Holder seeks to limit the field of customers for the goods claimed in classes 7 and 12 to engineers and technicians, and submits they would make their selection of these goods ‘with significant care…particularly those in safety critical applications’. The Holder has not made submissions in respect of customers of the engineering and consultancy services.

3. While there is nothing in evidence that would support or refute the Holder’s submissions as to the customers of these goods, it is for me to form my own view. I accept that customers of bearings and anti-friction bearings would include technicians and engineers, but it seems to me unlikely that they would represent the full the extent of the market for these goods for several reasons. While a company might require an engineer to develop a new product and in doing so specify the use of certain bearings, once that product has come to be manufactured at scale, the ordering of such parts seems to me less likely to be done by such a specialist. Similarly, stockists of these goods at the wholesale and retail level will not necessarily be technicians or engineers. I accept the Holder’s submission that the more safety critical the application the more likely there will be some involvement from an engineer or other technician, but the specification of goods has not been limited along these lines and I must consider the scope of possible trade mark use if registration is obtained. So adopting the Holder’s analysis, applications which are not safety critical are unlikely to require the exacting eye of these experts. Beyond the aforementioned commercial applications and intermediaries in the supply chain, for products as versatile as bearings and anti-friction bearings, there will always be tinkerers, hobbyists and do-it-yourself end customers. As in all cases, the customers for these particular goods and services need ‘not be credited with any high perception or habitual caution’.[11]

   [11] Australian Woollen Mills Ltd v F S Walton & Co. Ltd (1937) 58 CLR 641, 658.

4. With a clearer picture of the relevant consumers I return to the potential for their confusion, beginning with a visual comparison of the trade marks. The Opponent notes that VOLVO is wholly contained within the IRDA, with the additional prefix RE-. Effectively restating those points, but with an emphasis on dissimilarity, the Holder notes there is a difference in number of characters (five and seven) and a different prefix (VO- and RE-). The Opponent’s submissions also refer to the potential for notional use which emphasises the letters VOLVO within the IRDA, providing the following examples:

1. While these examples might amount to notional use, to label all the above examples as use in a ‘normal and fair manner’[12] seems to me to be a stretch.

   [12] Re Application by Smith Hayden & Co Ltd (1946) 63 RPC 97, [101].

2. Aurally, the IRDA is read in three syllables: RE-VOL-VO. The Opponent’s trade mark is most readily pronounced VOL-VO, so the aural impression largely follows along the lines of the visual: it is wholly contained within the IRDA, with the addition of the prefix RE-. The Opponent makes additional submissions on pronunciation. Firstly, that the common element VOLVO is strong, and that ‘[t]he first “V” carries the word in both REVOLVO and VOLVO, thus tending to diminish the “RE-” element’ (phonetically: ‘ruh-vole-voh’). ‘Alternatively, if the “RE-” element…is emphasised…the “-VOLVO” element will be separately articulated’ which it submits would only emphasise the aural similarity between the marks (phonetically: ‘ree-vole-voh’). I consider both of these alternatives to be apt in describing the likely aural formulation of the IRDA.

3. The Opponent’s reference to the distinctiveness of the common element VOLVO relies on the following analysis in which the Federal Court compared the trade marks TIVO and VIVO:

   “-IVO”, the component common to both marks, appears dominant as it comprises almost the entirety of each mark. It is not descriptive of the relevant goods and services for which the marks are registered. It has no apparent meaning and the substantial common element of the marks is thus distinctive, thus, as Gyles J observed in Pfizer Products, inviting attention to sound as well as sight. It is identically spelt and probably identically pronounced, and the impact of the aural similarity of the distinctive, dominant component is likely to be very strong, particularly when allowance is made for careless pronunciation, cursory reading and imprecise articulation in the context of imperfect recollection.[13]

   [13] Tivo Inc v Vivo International Corporation Pty Ltd [2012] FCA 252.

4. As with the above analysis, the common element VOLVO in the current opposition comprises almost the entirety of the IRDA.  Regardless of which pronunciation of the IRDA is preferred, this common element is identically spelled and pronounced. Given all of this, I consider the trade marks are aurally similar.

5. While it may be generally accepted that the prefix of a trade mark is important in comparison,[14] the Opponent has provided both Macquarie and Oxford dictionary definitions of the prefix ‘RE’, which indicate its use in front of ordinary verbs in order to indicate a repetition (as in reprint) or reversal (as in retract). Ms Ryan also noted the common legal and email uses of RE, being short for ‘in the matter of’ and ‘reply’ respectively. The Opponent concludes that because of all of these meanings, the RE- prefix would be taken to be referencing VOLVO. In support of its conclusion, the Opponent refers to the notoriety or familiarity of VOLVO in the Australian market, referring to Registrar of Trade Marks v Woolworths Ltd:

   Where an element of a trade mark has a degree of notoriety or familiarity of which judicial notice can be taken, as is the present case, it would be artificial to separate out the physical features of the mark from the viewer's perception of them. For in the end the question of resemblance is about how the mark is perceived.[15]

   [14] London Lubricants (1920) Ltd's Application (1925) 42 RPC 264, 279.

   [15] (1999) 93 FCR 365, 386 [61] (‘Woolworths’).

6. It is clear enough from the Opponent’s evidence that VOLVO has a sufficient ‘degree of notoriety or familiarity’ in Australia such that judicial notice may be taken, and therefore is a factor in the present enquiry.[16] In Woolworths the question was whether WOOLWORTHS METRO was deceptively similar to an earlier trade mark METRO. The majority held that the ‘WOOLWORTHS’ element was so well-known that confusion was unlikely, but the present comparison differs from Woolworths. Here the well-known element VOLVO is contained in both trade marks, which may indeed contribute to the potential for confusion.

   [16] See also Henschke & Co v Rosemount Estates Pty Ltd [2000] FCA 1539, [52].

7. The Holder notes that, according to certain endorsements appearing on the Register of Trade Marks, VOLVO is Latin for ‘I am rolling’. The Holder also submits that REVOLVO alludes to the word revolve, which it says is a characteristic of the claimed goods. I note that revolve is also Latin in origin, deriving from revolvere which itself means: roll back, unroll, unwind; happen again, return; go over, repeat. Revolvere itself being a portmanteau of the Latin re (back, again) and volvere (to roll).[17] However it is unlikely that the ordinary meaning of any of these Latin words, or for that matter the Latin etymology of the English word revolve would be comprehended by the relevant consumers of the claimed goods and services. The Latin origin of these words is therefore a minor point in the present consideration.

   [17] Douglas Harper, Online Eytmology Dictionary <>

   And so the question might be phrased: given their visual and aural similarity, will relevant consumers be caused to wonder whether goods or services offered in relation to the IRDA might come from the same source as VOLVO? The Holder submits that the IRDA has been in use in Australia for 15 years and there have been no instances of actual confusion. Evidence of actual confusion, if provided, will be given great weight.[18] The lack of evidence of actual confusion is less compelling, there being nothing to say that confusion has in fact happened and remains unreported. At any rate, s 10 requires that I consider the likelihood of deception or confusion.

   [18] Australian Woollen Mills Ltd v F S Walton & Co Ltd (1937) 58 CLR 641, 658.

8. Given their aural and visual similarity, I consider there is a real, tangible danger of confusion and so find that the IRDA is deceptively similar to the Opponent’s registered trade marks for the plain word VOLVO. A finding under s 44 of the Act is subject to subsections (3) and (4) which provide inter alia for an application to be accepted if honest, concurrent use, or prior continuous use of the IRDA is demonstrated by the Holder.

Section 44(3)(a): Honest Concurrent Use

1. The Holder’s evidence in answer asserts that it ‘has sold branded goods in Australia since at least 2000’. The Holder’s submissions argue that this assertion alone is sufficient to establish honest concurrent use, and take issue with the fact the Opponent did not file evidence in reply in order to ‘challenge’ the Holder’s evidence as to use of the IRDA in Australia. The Holder bears the onus of demonstrating honest concurrent use of the IRDA in Australia and the evidence as it stands is patently insufficient in this regard. I find both the Holder’s attempt to shift the burden of proof onto the Opponent, and the Holder’s bald statement itself entirely unsatisfactory. I am therefore unable to be satisfied that there has been honest concurrent use of the IRDA. The provisions of s 44(3) cannot be applied.

2. A necessary consequence of the Holder’s failure to provide evidence of use of the IRDA in Australia is that prior use has not been demonstrated. For completeness I note that s 44(4) also does not apply.

3. I find that the Opponent has established this ground of opposition. It is therefore unnecessary to explore the other grounds of opposition pressed by the Opponent. In any event, those grounds of opposition (and others available under the Act) will be available to the Opponent should this decision be appealed.

Decision

1. Regulation 17A.34 relevantly provides:

17A.34Decision on opposition

(1)Unless the opposition proceedings are discontinued or dismissed, the Registrar must decide:

(a)to refuse protection in respect of all of the goods or services listed in the IRDA; or

(b)to extend protection in respect of some or all of the goods or services listed in the IRDA (with or without conditions or limitations);

having regard to the extent (if any) to which the grounds on which the IRDA was opposed have been established.

(2)The Registrar must tell the International Bureau of his or her decision.

1. A ground of opposition under s 44 of the Act has been established. I refuse extension of protection to Australia in respect of all the goods and services listed in the IRDA.

Costs

1. The Opponent has requested an award of costs. The ordinary rule is that costs follow the event.[19] I therefore award costs against the Holder in accordance with the amounts set out in Schedule 8 of the Regulations.

   [19] Milne v Attorney-General (Tas) [1956] HCA 48.

Adrian Richards
Hearing Officer
Oppositions and Hearings
Trade Marks and Designs Group
26 October 2016