Volvo Trademark Holding AB v Timken UK Limited

Volvo Trademark Holding AB (the Opponent) opposed the extension of protection of an International Registration Application (IRDA) by Timken UK Limited (the Holder) to Australia. The dispute concerned the potential for confusion between the Opponent's registered trade marks, including the plain word mark VOLVO and various composite marks incorporating VOLVO, and the Holder's proposed IRDA, referred to as the IRDA. The opposition was heard by Adrian Richards, a Hearing Officer.

The court was required to determine whether the IRDA was deceptively similar to the Opponent's registered trade marks under section 44 of the relevant Act, and whether any grounds for honest concurrent use or prior continuous use under subsections 44(3) and 44(4) of the Act were established by the Holder. The Opponent also pressed grounds under sections 43 and 60, but the Hearing Officer found it unnecessary to consider these as one ground was successfully established. The onus was on the Opponent to establish a ground of opposition on the balance of probabilities, with the rights of the parties assessed as at the convention priority date of 7 September 2010.

The Hearing Officer found that the IRDA was deceptively similar to the Opponent's plain word mark VOLVO, considering both visual and aural similarities and the likelihood of consumers wondering if goods or services offered under the IRDA originated from the same source as those offered under the VOLVO trade marks. The Holder's submission that VOLVO is Latin for "I am rolling" and that "revolve" (alluding to the IRDA) is also Latin in origin was considered a minor point, as such etymological knowledge was unlikely to be comprehended by relevant consumers. The Holder's assertion of having sold branded goods in Australia since 2000 was deemed insufficient to establish honest concurrent use under section 44(3), as the Holder bore the onus of proof and the evidence was unsatisfactory. Consequently, the provisions of section 44(3) could not be applied, and prior use under section 44(4) was also not demonstrated.

As the ground of opposition under section 44 was established, the Hearing Officer refused the extension of protection to Australia in respect of all goods and services listed in the IRDA. The Opponent was awarded costs against the Holder.