Wilhelm Sihn Jr KG v Wi-Fi Alliance

[2007] ATMO 39

TRADE MARKS ACT 1995

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

Re:Opposition by Wilhelm Sihn jr KG to registration of trade mark application 838376(9) – WISI Device - filed in the name of WI-FI Alliance .

Delegate:

Debrett Lyons

Representation:

Opponent: Ian Horak, of counsel, instructed by F.B.Rice & Co., Patent and Trade Mark Attorneys.

Applicant: Margaret Ryan, of Phillips Ormonde Fitzpatrick, Patent and Trade Mark Attorneys.

Decision:

2007 ATMO 39

s. 52 opposition – s. 42(b): not contrary to any law; ss. 44 & 60: not deceptively similar; s. 59: not admitted by implication; s. 62(b): not made out. Costs – opponent to pay the applicant’s costs.

Background

1. WI-FI Alliance, formerly, Wireless Ethernet Compatibility Alliance, Inc., (‘the applicant’) filed a certification trade mark application number 838376 (‘the application’) on 8 June, 2000.  Details of the application are set out below.

   Priority Date:                 8 August 2003 (‘the relevant date’)

   Goods :      Class: 9 Computer hardware and peripherals,   namely, wireless local area networking   products  

   Trade Mark :  (‘the trade mark’)

2. Wilhelm Sign jr KG (‘the opponent’) filed a Notice of Opposition to registration of the trade mark on 27 January 2004. Thereafter evidence in support, evidence in answer and evidence in reply were duly filed and served by the parties according to the provisions in the Trade Mark Regulations 1995 (‘the Regulations’).

3. Both parties made written submission and asked to be heard. The matter was heard by me, Debrett Lyons, a delegate of the Registrar of Trade Marks, on 8 March 2007 in Melbourne.

4. At the Hearing it emerged from the evidence that there was uncertainty as to the both the exact set of certification rules (‘the rules’), and the precise mark, which had been approved by the Australian Competition & Consumer Commission (‘ACCC’).

5. It was agreed that I would hear the parties in relation to the grounds of opposition under sections 44 and 60, after which, and by consent of the parties, the Hearing was adjourned pending clarification of the approved rules.

6. On 7 May 2007 the delegate wrote to the parties providing them with a true copy of the rules which had been certified by the ACCC on 7 October 2003.  At the same time the delegate invited the parties to either indicate their desire to reconvene to be heard further, or alternatively provide further written submissions in relation to the remaining grounds of opposition.  The parties elected to provide additional written submissions.

   Grounds of Opposition

7. The Notice of Opposition listed 8 grounds of opposition, resting on sections 27(1)(a), 27(1)(b), 41, 42(b), 43, 44, 60, 62(a) and 62(b) of the Trade Marks Act 1995 (‘the Act’).

   The Evidence

8. The evidence filed and served in accord with the Act and Regulations is set out in the table below.

Declarant	Date Declared	Known As	Exhibits
Evidence in Support
Reinhold Scheizer	30 September 2004	Scheizer	RS-1 to RS-4
Waldemar Leitner	30 September 2004	Leitner	WL-1 and Wl-2
Evidence in Answer
Paul Meche	5 October 2005	Leche	PM-1 to PM-5
Evidence in Reply
Gail Maree Hill	20 April 2006	Hill	GMH-1

Submissions and Reasoning

Observations on the Notice of Opposition

1. The grounds of opposition have not been identified properly in several ways.

2. Part 16 of the Act deals with certification trade marks. Section 170 states:

   Application of Act

   Subject to this Part, the provisions of this Act relating to trade marks (other than sections 8 and 26, paragraph 27(1)(b), sections 33, 34 and 41, sections 121 and 127, Part 9--Removal of trade mark from Register for non‑use and Part 17--Defensive Trade Marks) apply to certification trade marks and so apply as if a reference to a trade mark included a reference to a certification trade mark.

3. Neither section 27(1)(b), nor 41, both recited in the Notice of Opposition, apply to certification marks.

4. Section 41 finds its nearest counterpart under Part 16 of the Act in section 177 however there remain very significant differences between the two provisions. Section 177 states:

   Additional ground for rejecting an application or opposing registration--certification trade mark not distinguishing certified goods or services

   (1)    In addition to any other ground on which:

   (a)  an application for the registration of a certification trade mark may be rejected; or

   (b)  the registration of a certification trade mark may be opposed;

   the application must be rejected or the registration may be opposed if the trade mark is not capable of distinguishing goods or services certified by the applicant or an approved certifier from goods or services not so certified.

1. Section 27(1)(b) requires a trade mark applicant, amongst other things, to use, or intend to use the trade mark. Its operation is excluded by section 170 and replaced in Part 16 of the Act by quite different provisions.

2. Section 27(1)(a) is not a ground of opposition of itself and does not properly fall under section 52(4) of the Act. If the claim is that the applicant is not the owner of the trade mark, the appropriate ground of opposition is section 58.

   Submissions on the Notice of Opposition

3. At the Hearing, the opponent stated that the opposition was based primarily on sections 43 (sic.), 44, 59, 60 and 62(b) of the Act. It did not expressly abandon the remaining grounds, nor did it press them by way of verbal or written submissions.

4. Section 59 had not been expressly listed as a ground of opposition and to the extent that it is implied by the reference to section 27(1)(b) of the Act, that section is excluded by the operation of section 170.

5. The opponent’s written and oral submissions referred to section 43 several times. Its submissions do not touch on section 43 proper and by reason of the references to ‘contrariety to law’, I read and treat these instead as references to section 42(b).

6. The opponent’s substantive submissions were directed towards sections 44 and 60 of the Act and so for that reason I will examine them first, leaving to one side for the moment the uncertainties created by the Notice of Opposition.

   Section 44

7. Section 44 states:

   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.

8. Although both parties made passing reference to section 44(3) which I have noted, the main arguments focused on sub-section (1). In order to establish an opposition under this ground the opponent has the burden of proving:

   ·a mark, either registered or pending registration, in the name of a person other than the applicant, and in relation to which the applied-for trade mark is either substantially identical or deceptively similar;

   ·that other mark must be in respect of similar goods or closely related services; and

   ·the priority date of the other mark must be earlier than the priority date of the applied-for trade mark.

9. The opponent is the registered proprietor of trade mark registration number 389236 (‘the registration’), details of which are:          

Trade Mark:   

Filing Date:  28 March 1983

Goods:Class: 9 Electrotechnical and electronic apparatus, instruments and components (as far as specified in Class 9), communication equipment, transmitters and receivers including those for satellite transmission, radio link equipment, antennas of different kinds, antenna meters, antenna amplifiers, line amplifiers, power units, frequency converts, balun transformers, electrical switches and switching equipment, program control devices, antenna masts, weather-proof housings and lightning protective devices for the aforesaid articles, installation material for the aforesaid articles (as far as specified in class 9), electrical plugs and coupler plugs, co-axial connectors, relays, distribution and connection boxes, accessories for the installation and fixation of the aforesaid articles, i.e. clamps, cable fixing devices, lead-ins for antenna masts and electric cables, mast-end brackets, earthing bars, block antenna systems produced with the aforesaid items.

1. The registration pre-dates the relevant date.

2. The expression ‘deceptively similar’ is defined in section 10 of the Act as:

   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.

3. The expression, ‘similar goods’ is defined in sub-section 14(1) of the Act as:

   Definition of similar goods and similar services

   14. (1) For the purposes of this Act, goods are similar to other goods:

   (a) if they are the same as the other goods; or

   (b) if they are of the same description as that of the other goods.

4. I also note the comments of French J (with agreement from Tamberlin J) in Registrarof Trade Marks v Woolworths Limited, 45 IPR 411, at paragraph 39:

   The logic of s 44(2) suggests that the determination whether goods are closely related to the services in question is logically antecedent to the determination whether the trade mark in respect of the services is deceptively similar to that in respect of the goods.

5. By analogy, I am to consider the issue of the similarity of the respective goods before I turn to the similarity of the respective trade marks. The principles for comparison of similarity of goods are well established in cases such as Jellinek's Application (1946) 63 RPC 59; John Crowther & Sons (Milnsbridge) Limited'sApplication (1948) 65 RPC 369; Reckitt & Colman (Australia) Limited v Boden (1945) 70 CLR 84 and Southern Cross Refrigerating Co v Toowoomba Foundry PtyLimited (1954) 91 CLR 592; 1A IPR 465. In short, these authorities establish that there are three principal factors to be considered when comparing goods of respective parties to determine if they are of ‘the same description’. They are: (1) the nature of the goods, including their origin and characteristics; (2) the uses made of them, including their purpose; and (3) the trade channels through which the goods are bought and sold.

6. To reiterate, the goods of the application are ‘computer hardware and peripherals,    namely, wireless local area networking products’.  In his declaration, Meche describes the applicant as “a global non-profit association of more than 200 members devoted to promoting the growth of wireless local area networks, was formed in 1999 for the purpose of certifying interoperability of wireless local area network products…”(para 4).

7. Meche does not expand on the nature of those products but they would include at least the usual hardware products associated with local area networks such as routers, modems and other switching apparatus.

8. The applicant refers to Meche exhibits PM-2 and PM-4 in support of its submission that these products also include computer notebooks, pocket PCs, wireless routers, wireless USB adaptors and wireless PCI adaptors.

9. There is no question of those goods not being of the same description, if not in fact identical, to several goods covered by the registration.

10. I return, then, to the question the similarity of the marks themselves.  The opponent did not seek to convince me that the trade marks were substantially identical. It rightly recognized that argument would have been unmeritorious.  The opponent did however have much to say on the issue of their alleged deceptive similarity.

11. The test for deceptively similar trade marks was succinctly put by Windeyer J. in Shell Co. (Aust) Ltd  v Esso Standard Oil (Aust) Ltd, (1961) 109 CLR 407 at 415 CLR 407 at 415 in these words:

    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.

12. I recall, too, what French J. had to say in Registrar of Trade Marks v Woolworths Limited, 45 IPR 411, at 425:

    In the end there is one practical judgment to be made. Whether any resemblance between different trade marks for goods and services renders them deceptively similar will depend upon the nature and degree of that resemblance and the closeness of the relationship between the services and the goods in question. It will not always be necessary to dissect that judgment into discrete and independent conclusions about the resemblance of marks and the relationship of goods and services. Consistently with that proposition, the Registrar or a judge on appeal from the Registrar could determine in a particular case that, given the limited degree of resemblance between the relevant marks he or she could not be satisfied, no matter how closely related the goods and services concerned, that the use of the applicant’s marks would be likely to deceive or to cause confusion.

13. The opponent submitted that there were stark visual similarities between the two marks – both having four letters; of which three are identical; sharing a common ‘wi’ prefix, and both having two letters ‘i’ separating the other letters.

14. The opponent submitted that the aural similarities of the marks was the result of a common starting letter (‘w’); a common starting syllable (‘wi’); identical tonal emphasis when spoken, and virtually identical second syllables (‘fi’ and ‘si’).

15. Unsurprisingly, the applicant pointed to the visual differences between the two logostyle marks and also submitted that the mark of the registration would be pronounced as one word ‘WISEE with the WI as in wisdom or wish’ whereas the applicant’s mark would be pronounced as ‘WHY  FY, rhyming with HI  FI or SCI  FI’.

16. For my part, I struggle to accept that, even allowing for imperfect recollection, members of the relevant public would, from a visual perspective at least, think of the opponent’s logostyle mark with its concentric circles reminiscent of the popular depiction of radio waves when they saw the applicant’s lozenge shaped logostyle trade mark with its black and white halves.

17. The question of how the two marks might be pronounced taken out of their visual context is quite another question. Neither party led any evidence as to how the marks might be pronounced by the Australian public.  Without the aid of evidence of that kind, I am drawn towards the conclusion that the Australian public would more naturally pronounce the trade mark as WHY  FY as the applicant contends.

18. Again, I am left to draw my own conclusions as to how the opponent’s mark would be pronounced. It can be postulated that the opponent’s mark is a contraction of the first two letter of each name, Wilhelm Sihn, which might support the applicant’s contention that the mark is pronounced as one word and in a manner approximating the applicant’s submission, but I simply have no evidence of those matters and decline to draw any such conclusions.  The pronunciation, WISEE, seems to me to be slightly comic and unlikely bearing in mind the nature of the goods.  I think it not improbable that the letters might be spelt out as would be more obviously the case if the mark was W.I.S.I.

19. I do not rule out that a percentage of the relevant public might see the mark as WHY SY. Nonetheless, the opponent bore the onus of proving that matter on the balance of probability and I do not find that it has discharged that onus. 

20. For all these reasons, I hold that the trade mark is not deceptively similar to the mark of the registration.

21. Accordingly, the ground of opposition based on section 44 of the Act fails.

    Section 60

22. Section 60, in its unamended form relevant to this opposition, stated:

    Trade mark similar to trade mark that has acquired a reputation in Australia

    60. The registration of a trade mark in respect of particular goods or services   may be opposed on the ground that:

    (a) it is substantially identical with, or deceptively similar to, a trade mark that, before the priority date for the registration of the first-mentioned trade mark in respect of those goods or services, had 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.

    Note 1:  For deceptively similar see section 10.

    Note 2:  For priority date see section 12.

23. It is for the opponent to point to a trade mark, whether registered or in common law use, which:

    ·is either substantially identical with, or deceptively similar to, the trade mark in the application

    ·before the priority date, has acquired a reputation in Australia such that use of the applicant’s trade mark would lead to deception or confusion.

24. I have already found that the mark of the registration is not deceptively similar to the trade mark applied for and so this ground of opposition necessarily fails as well.

    Section 42(b)

25. Section 42(b) states:

    Trade mark scandalous or its use contrary to law

    42. An application for the registration of a trade mark must be rejected if:

    (a) ….

    (b) its use would be contrary to law.

26. Section 42(b) requires the opponent to prove that use of the trade mark would to contrary to a specific law (Advantage Rent-A-Car Inc v Advantage Rental Pty Ltd (2001) 52 IPR 24). Here, the opponent claims that use of the mark would contravene section 172 of the Act, which states:

    Rights of persons allowed to use certification trade mark

    When the registered owner of a registered certification trade mark allows another person (approved user) to use the certification trade mark in relation to goods or services in respect of which it is registered, the approved user has a right to use the certification trade mark in relation to those goods or services in accordance with the rules governing the use of the certification trade mark.

27. The opponent’s argument rests on the claim that the rules certified by the ACCC refer to the trade mark in a form additionally including the words, ‘The Standard for Wireless Fidelity’.

28. Shown below is an extracted page from the certified rules. It can be seen that the additional words appear below the trade mark.  It can also be seen that the trade mark is described as the ‘Wi-Fi Logo’ and that the additional words are described as the   ‘Wi-Fi Tagline’.  Under the marginal notes entitled, ‘1. Logo Elements’, is written ‘When it is necessary to feature the logo with the tagline, it is essential that you keep the logo and the tagline in a fixed relationship’.

1. The opponent’s argument is that the mark certified by the ACCC is not the same as the trade mark of the application and so use of the trade mark would be contrary to law for the purposes of section 42(b) as its use would offend section 172 of the Act.

2. I reject that argument for two reasons. First, the rules are clear that the trade mark and the tagline are two different things, even if they might be used together, something itself not mandated by the rules. Secondly, I do not read section 172 as having any relevance to the question of how the applicant must use the trade mark. Instead, I read that section as being concerned with the proper use to which the mark can be put by the approved or certified user of the trade mark. I do not accept that there is a relevant connection between the facts here, section 172 and section 42(b).

1. I decide that the ground of opposition under section 42(b) also fails.

   Section 59

2. Section 59 states:

   Applicant not intending to use trade mark

   The registration of a trade mark may be opposed on the ground that the applicant does not intend:

   (a)  to use, or authorise the use of, the trade mark in Australia; or

   (b)  to assign the trade mark to a body corporate for use by the body corporate in Australia;

   in relation to the goods and/or services specified in the application.

3. The first issue before me is whether the section 59 ground should be admitted. The opponent has made no submissions in respect of this matter.

4. As noted, section 59 was not expressly recited in the Notice of Opposition. Section 52(4) states that a trade mark can only be opposed on grounds laid out in Part 5, Division 2 of the Act ( sections 57- 62).

5. Nonetheless, the requirement of the Act is that an application be opposed on a ground specified in Part 5, Division 2, not that the Notice of Opposition recite a section number or wording in that Division. It is not the practice of the Registrar to allow a ground which was plainly non-existent in the Notice of Opposition, nor to allow a ground that is unintelligible, but that is not the case here. In my decision, the reference to section 27(1)(b) sufficiently identifies the opponent’s claim to a ground of opposition under section 59 and for that reason I admit the section 59 ground.

6. There are residual difficulties of construction of the Act. Section 27(1)(b) states:

   Application--how made

   (1)  A person may apply for the registration of a trade mark in respect of goods and/or services if:

   (a)  …

   (b)  one of the following applies:

   (i)  the person is using or intends to use the trade mark in relation to the goods and/or services;

   (ii)  the person has authorised or intends to authorise another person to use the trade mark in relation to the goods and/or services;

   (iii)  the person intends to assign the trade mark to a body corporate that is about to be constituted with a view to the use by the body corporate of the trade mark in relation to the goods and/or services.

7. As we have seen, that section is excluded from operation in the case of certification trade marks by section 170. Another issue therefore confronts the opponent in that the section which imputed the section 59 ground of opposition is expressly excluded for certification marks. This raises two subsidiary questions. First, must the section 59 ground of opposition now be disregarded? If not, how is the ground of opposition to be properly understood since the exclusion of section 27(1)(b) seems at odds with the retention of section 59?

8. The answer to this first question relies, once again, on whether a coherent understanding can be given to the ground of opposition as it was described in the Notice of Opposition. The wording of paragraph 6 of the Notice of Opposition is: “The applicant does not intend to use or authorise use of the Trade Mark within the meaning of s.27(1)(b).” Had the opponent concluded that ground at the words ‘Trade Mark’ a simpler claim might have existed. As it stands, it raises the added question of whether the alleged lack of intention to use, or authorise another to use, is the type of use comprehended only by section 27(1)(b).

9. Words approximating section 27(1)(b) can be seen in section 169 of the Act, entitled ‘What is a certification trade mark’. That section states:

   What is a certification trade mark?

   A certification trade mark is a sign used, or intended to be used, to distinguish goods or services:

   (a)  dealt with or provided in the course of trade; and

   (b)  certified by a person ( owner of the certification trade mark ), or by another person approved by that person, in relation to quality, accuracy or some other characteristic, including (in the case of goods) origin, material or mode of manufacture;

   from other goods or services dealt with or provided in the course of trade but not so certified.

   Note: The goods or services certified may be those of any person, including the owner of the certification trade mark or any person approved by               the owner for the purpose of certifying goods or services.

10. My understanding is that section 170 has excluded section 27(1)(b) in the case of certification marks because, under section 169, the owner of a certification mark may use the trade mark, but the certification mark might also be used by another person approved by the owner of the certification mark: see Trade Mark Office Manual of Practice and Procedure, Chapter 35, para. 2.2.

11. That would be at odds with section 27(1)(b) which requires a trade mark applicant to use or intend to use the trade mark in relation to the goods and/or services, or authorise or intend to authorise another person to use the trade mark in relation to the goods and/or services.

12. On the other hand, under section 169, the requisite intention is to use the mark, or allow another person to use the mark, for the purpose of distinguishing certified goods/services from goods/services not certified.

13. These are fundamentally different propositions and yet I observe that section 59 does not limit itself to one type of use or the other. Nonetheless, in my view, what is fatal for the opponent is the fact that in its ground of opposition it expressly limited the claim to use of the kind described in section 27(1)(b).

14. For these reasons, I find that there is no proper basis for the opponent’s ground of opposition as propounded in paragraph 6 of its Notice of Opposition.

    Section 62(b)

15. Subparagraph 62(b) of the Act provides:

    Application etc. defective etc.

    The registration of a trade mark may be opposed on any of the following grounds:

    (a) …

    (b)  that the Registrar accepted the application for registration on the basis of evidence or representations that were false in material particulars.

16. The opponent argues that by filing the rules, the applicant has represented that those rules govern certification of the trade mark of the application and since those rules govern use of a different mark (one including the tagline) it follows that the Registrar accepted the trade mark on the basis of a false representation, whether intentional or not.

17. I have already decided that the trade mark certified by the ACCC is the same trade mark as that of the application since the tagline is separately identified and so that disposes of this ground of opposition. Had it not, I would have had reason to closely consider the question of whether an inconsistency of the kind alleged by the opponent constituted ‘representations that were false in material particulars’.   

18. The ground of opposition based on section 62(b) also fails.

    Decision

19. Under section 55 of the Act, I decide that the opposition fails and so I direct that the application be registered one month from the date of this decision, provided that the sealing fee has been paid. 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 discontinued, or in the event of a decision from the Court, that the application be subject to its orders.

    Costs

20. Both parties requested their costs in the matter. The opposition having failed, I direct that the opponent pay the applicant’s costs according to the official scale.

    Debrett Lyons

    Hearing Officer

    Trade Marks Hearings

    16 July 2007