Yadea Technology Group Co., Ltd. v Kawasaki Motors, Ltd

[2024] ATMO 242

TRADE MARKS ACT 1995

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

Re:Opposition by Yadea Technology Group Co., Ltd. to extension of protection under regulation 17A.33 of the Trade Marks Regulations 1995 (Cth) of trade mark number 2331460 (International Registration number 1710761) (classes 12, 35 and 37) – three piece logo - in the name of Kawasaki Motors, Ltd.

Delegate:

Benjamin Goldsworthy

Representation:

Opponent: The Loft Legal Pty Ltd

Holder: Pizzeys Patent and Trade Mark Attorneys Pty Ltd

Decision:

2024 ATMO 242

Trade Marks Regulations 1995 (Cth) – opposition to extension of protection under reg 17A.33 – grounds under ss 42(b), 44 and 60 of the Trade Marks Act 1995 (Cth) – s 44 established for all goods and services – extension of protection refused

Background

1. This decision concerns an opposition filed by Yadea Technology Group Co., Ltd. (‘Opponent’) under reg 17A.33 of the Trade Marks Regulations 1995 (Cth)[1] to the extension of protection to Australia of an International Registration Designating Australia (‘IRDA’) filed by Kawasaki Motors, Ltd (‘Holder’). I extract the details of the IRDA below:

   Priority date: 1 November 2022

   Trade mark:

   (‘Trade Mark’)

   Specification: Schedule 1 (‘Holder’s Goods and Holder’s Services’)

   Convention details: Date: 01 November 2022 Number: 2022-125055 Country: JAPAN

   [1] Any references to sections or regulations in this decision are references to sections or regulations of the Trade Marks Act 1995 (Cth) (‘Act’) or the Trade Marks Regulations 1995 (Cth) (‘Regulations’), respectively.

2. The IRDA was examined as required by reg 17A.12 and acceptance of the IRDA was advertised on 2 April 2023. The Opponent filed a Notice of Intention to Oppose the IRDA on 29 May 2023 followed by its Statement of Grounds and Particulars (‘SGP’) on 22 June 2023. The Holder filed a Notice of Intention to Defend the opposition on 8 August 2023.

3. No evidence was filed by the parties during these proceedings.

4. Once the evidence stage ended, the parties were given the opportunity to request a hearing. The Opponent did not request to be heard. The Holder requested to be heard and on 12 September 2024 filed written submissions prepared by its attorney Julie Simpson of Pizzeys Patent and Trade Mark Attorneys Pty Ltd (‘Holder’s Submissions’). This matter has been allocated to me as a delegate of the Registrar of Trade Marks and I make my decision based on the written record of aforementioned materials.

Grounds and onus

1. The SGP nominated grounds of opposition under ss 42(b), 44 and 60.

2. The Opponent bears the onus of establishing one or more of the grounds of opposition[2] on the balance of probabilities.[3] The rights of the parties are assessed at the priority date, here being the date derived from the claim to priority made in Japan.

Consideration

[2] Food Channel Network Pty Ltd v Television Food Network GP [2010] FCAFC 58, [32] (Keane CJ, Stone and Jagot JJ).

[3] Telstra Corporation Ltd v Phone Directories Co Pty Ltd [2015] FCAFC 156, [133] (Besanko, Jagot and Edelman JJ).

Section 44

1. The Opponent relies on s 44 which relevantly 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.

   …

   (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.

2. The Opponent relies on the follow trade marks (‘Opponent’s Trade Marks’):

   Owner: Opponent

   Trade mark:

Priority date: 19 June 2015

Trade mark number: 1701565

Specification: Class 12: Stands for bicycles, cycles (parts of bicycles, cycles); Cycle hubs; Cycle cars; Electric vehicles; Tricycles; Mopeds; Scooters (vehicles); bicycles, cycles and motorcycles; Pumps for bicycles, cycles; Tires for vehicle wheels; Tires for bicycles, cycles

---

Owner: Opponent

Trade mark:

(‘2110829’)

Priority date: 11 August 2020

Trade mark number: 2110829

Specification: Class 9: Computer software applications, downloadable; Navigational instruments; Rearview cameras for vehicles; Voltage regulators for vehicles; Materials for electricity mains (wires, cables); Electrical adapters; Protective helmets; Anti-theft warning apparatus; Locks, electric; Batteries, electric, for vehicles 

Class 12: Electric bicycles; Tricycles; Mopeds; Motors, electric, for land vehicles; Electric vehicles; Remote control vehicles, other than toys; Bicycles; Self-balancing scooters; Motorcycles; Anti-theft alarms for vehicles

(collectively, ‘Opponent’s Goods’)

Class 35: Online advertising on a computer network; Providing business information via a web site; Commercial information agency services; Import-export agency services; Sales promotion for others; Marketing; Provision of an online marketplace for buyers and sellers of goods and services; Personnel management consultancy; Administrative processing of purchase orders; Retail services for pharmaceutical, veterinary and sanitary preparations and medical supplies

1. The Opponent relies on the Opponent’­­s Trade Marks for its ground of opposition under s 44. The Opponent’s Trade Marks are both in the name of a person other than the Holder and both have a priority date which is earlier than the Trade Mark’s priority date.

2. The Holder acknowledges that some of the Holder’s Goods are similar to the Opponent’s Goods.[4] I consider the words ‘electric vehicles’ to refer to vehicles which are at least partly, if not wholly, powered by electricity. The words ‘electric vehicles’ are also broad and would include craft that are electric vehicles for use on land, water, or air. All of the Holder’s Goods in class 12 may be wholly or partly powered by electricity, and all are craft or vehicles for use on land, water, or air. They therefore fall within the description ‘electric vehicles.

   [4] Holder’s Submissions, [55]-[59].

3. For clarity, after consideration of the nature, use and trade channels, I am also satisfied that the Holder’s ‘hydrogen fueled vehicles’, for example, are at least of the same description as the Opponent’s ‘electric vehicles’.

4. The concept of ‘closely related’ concerns relationships between goods and services. In Registrar of Trade Marks v Woolworths Ltd, French J stated:

   The relationships may, and perhaps in most cases will, be defined by the function of the service with respect to the goods. Services which provide for the installation, operation, maintenance or repair of goods are likely to be treated as closely related to them. Television repair services in this sense are closely related to television sets as a class of goods. A trade mark used by a television repair service which resembles (to use the language of s 10) the trade mark used on a prominent brand of television sets could be deceptively similar for suggesting an association between the provider of the service and the manufacturer of the sets.[5]

   [5] [1999] FCA 1020, [38] (‘Woolworths’).

5. Ordinarily providers of electric vehicles, for example, will also offer, repair and maintenance services, wholesale services, and retail services in relation to those goods. I am satisfied that all of the Holder’s Services in classes 35 and 37 are closely related to the Opponent’s Goods in class 12 for ‘electric vehicles’.[6]

   [6] This is supported by past decisions Brakes Plus Pty Ltd v Midas International Corporation [1997] ATMO 20 (Hearing Officer Homann) and Caterpillar, Inc v Amco (Vic) Pty Ltd [2000] ATMO 49 (Hearing Officer Zars).

6. In relation to the comparison of marks, a total impression of dissimilarity emerges on a side by side comparison of the Trade Mark with each of the Opponent’s Trade Marks.[7] The trade marks are clearly not substantially identical as they have differences, including the inclusion of the word ‘Yadea’ in the Opponent’s Trade Marks, which is not present in the Trade Mark. Therefore, I should consider whether the Trade Mark is deceptively similar to either of the Opponent’s Trade Marks.

   [7] Shell Co of Australia Ltd v Esso Standard Oil (Australia) Ltd [1963] HCA 66, [12] (Windeyer J).

7. I should compare the respective trade marks as wholes.[8] I should also have regard to essential or distinguishing features,[9] and consider them visually and aurally, and in the context of the relevant surrounding circumstances.[10] Any actual reputation of a trade mark or an owner is not relevant. Rather, the effect and meaning of the trade marks is of importance,[11] especially their effect or impression produced on the mind of ordinary consumers.[12] I should account for imperfect recollection of those ordinary consumers. Ultimately, what is required is a real tangible danger of confusion.[13] That is, ‘a real likelihood that some people will wonder or be left in doubt about whether the two sets of products … come from the same source’.[14] Actual instances of deception or confusion are of great weight though not required.[15] The distinctiveness of a shared element is often a critical factor in the consideration of the likelihood of confusion. Generally, a highly distinctive shared element can increase the likelihood of consumer confusion, the opposite being true when the shared element is common or descriptive.

   [8] Woolworths (n 5) [50] (French J). See also, Torpedoes Sportswear Pty Limited v Thorpedo Enterprises Pty Limited [2003] FCA 901, [78] (Bennett J).

   [9] Crazy Ron’s Communications Pty Ltd v Mobileworld Communications Pty Ltd [2004] FCAFC 196, [77]-[88] (Moore, Sackville and Emmett JJ).

   [10] New South Wales Dairy Corporation v Murray-Goulburn Co-operative Co Ltd (1989) 86 ALR 549, 589 (Gummow J).

   [11] Self Care IP Holdings Pty Ltd v Allergan Australia Pty Ltd [2023] HCA 8, [51] (Kiefel CJ, Gageler, Gordon, Edelman and Gleeson JJ) (‘Self Care’).

   [12] Ibid [51] and [67], citing Australian Woollen Mills Ltd v F S Walton & Co Ltd (1937) 58 CLR 641 (Dixon and McTiernan JJ) (‘Australian Woollen Mills’).

   [13] Southern Cross Refrigerating Co v Toowoomba Foundry Pty Ltd (1954) 91 CLR 592, 595 (Kitto J) (‘Southern Cross’); Woolworths (n 5) [50] (French J); Campomar Sociedad Limitada v Nike International Ltd [2000] HCA 12, [83] (Gleeson CJ, Gaudron, McHugh, Gummow, Kirby, Hayne and Callinan JJ).

   [14] Woolworths (n 5) [50(ii)] (French J); Southern Cross (n 13) 594-595.

   [15] Self Care (n 11) [30]; Australian Woollen Mills (n 12) 658.

8. I begin with a comparison of the Trade Mark with 2110829. There are a number of similarities between the trade marks including the orientation and angles, and the relative sizes and positions of the shapes in the device of each trade mark. Both trade marks feature a similar shaped channel (‘Y-channel’) formed by three elements. I consider the Y-channel to be distinctive for electric vehicles and broadly retail and maintenance services for electric vehicles. There are some differences, including the specific shape and smoothness of the objects forming the Y-channel devices. The Trade Mark is rendered in lines rather than as a solid object as in 2110829. However, when considering the devices in each trade mark overall, I find they share significant visual similarities.

9. The device in each of the trade marks are not common, non-distinctive geometric shapes, nor do they carry a descriptive meaning in relation to either parties’ goods and/or services. The devices would be striking and memorable to a consumer of each parties’ claimed goods and/or services. I note that imperfect recollection is also a consideration for deceptive similarity. Since the trade marks are not being viewed side by side, I must consider whether a person who has seen 2110829 before would, upon seeing each of the Trade Mark, be confused as to whether the goods and services offered in relation to it come from the Opponent or a related trade source. Whilst purchasers are likely to be cautious when buying these goods and engaging services related to these goods, I note that the trade source in vehicles are often recognised by badges.

10. While 2110829 has an additional word next to the Y-channel device this would be unlikely to sufficiently change any shared impression or recollection with the Trade Mark. This is especially so considering the position, size and dominant nature of the Y-channel device in 2110829 and the lack of any additional wording or other elements in the Trade Mark. Due to the similar look of the prominent Y-channel device in each trade mark, a consumer of such goods and/or services, upon viewing the trade marks independently with an imperfect recollection, would likely be confused as to whether there was a link between the two trade sources.

11. In considering all the above, I am satisfied that there is a real tangible danger of confusion occurring when considering the similarities and likely imperfect recollection of the trade marks. As such, I find that the Trade Mark is deceptively similar to at least 2110829.

12. Accordingly, a ground of opposition under s 44 has been established.

Decision and Costs

1. Regulation 17A.34N provides:

   17A.34N  Decision 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 notify the International Bureau of the Registrar’s decision.

2. The Opponent has established a ground of opposition under s 44. Accordingly, I refuse protection of IRDA 1710761.

3. The Opponent has requested costs. It is normal for costs to follow the event. I see no reason to make an exception here. I award costs against the Holder under s 221 in the amounts according to Schedule 8 of the Trade Marks Regulations 1995 (Cth).

Benjamin Goldsworthy

Hearing Officer

Delegate of the Registrar of Trade Marks

16 December 2024

Schedule 1

Class 12: Vessels and their parts and fittings; automobiles and their parts and fittings; two-wheeled motor vehicles, bicycles and their parts and fittings; bicycles for children; motorcycles; electric vehicles; hybrid vehicles; hydroplanes; hydrogen fueled vehicles; personal watercraft; vehicles; vehicles for locomotion by land, air or water; all-terrain vehicles; side by side vehicles; utility vehicles.

(‘Holder’s Goods’)

Class 35: Retail services or wholesale services for vessels and their parts and fittings; retail services or wholesale services for automobiles and their parts and fittings; retail services or wholesale services for two-wheeled motor vehicles, bicycles and their parts and fittings; retail services or wholesale services for bicycles for children; retail services or wholesale services for motorcycles; retail services or wholesale services for electric vehicles; retail services or wholesale services for hybrid vehicles; retail services or wholesale services for hydroplanes; retail services or wholesale services for hydrogen fueled vehicles; retail services or wholesale services for personal watercraft; retail services or wholesale services for vehicles; retail services or wholesale services for vehicles for locomotion by land, air or water; retail services or wholesale services for all-terrain vehicles; retail services or wholesale services for side by side vehicles; retail services or wholesale services for utility vehicles.

Class 37: Repair or maintenance of vessels and their parts and fittings; repair or maintenance of automobiles and their parts and fittings; repair or maintenance of two-wheeled motor vehicles, bicycles and their parts and fittings; repair or maintenance of bicycles for children; repair or maintenance of motorcycles; repair or maintenance of electric vehicles; repair or maintenance of hybrid vehicles; repair or maintenance of hydroplanes; repair or maintenance of hydrogen fueled vehicles; repair or maintenance of personal watercraft; repair or maintenance of vehicles; repair or maintenance of vehicles for locomotion by land, air or water; repair or maintenance of all-terrain vehicles; repair or maintenance of side by side vehicles; repair or maintenance of utility vehicles.

(The services in classes 35 and 37 are collectively referred to as ‘Holder’s Services’)