Zero Motorcycles Inc v Benzina Zero Pty Ltd

[2023] ATMO 177

TRADE MARKS ACT 1995

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

Re:Opposition by Zero Motorcycles Inc to registration of trade mark application number 2154128 (class 12) – BENZINA ZERO SPORT – in the name of Benzina Zero Pty Ltd

Delegate:

Tracey Berger

Representation:

Opponent: Victor Ng, Cooper Mills Lawyers Pty Ltd

Applicant: Andrew Petale, YIP Legal Pty Ltd

Decision:

2023 ATMO 177

Trade Marks Act 1995 (Cth) – opposition under section 52 – ground of opposition under reg 4.15A of the Trade Marks Regulations 1995 (Cth) pressed – ground not established – trade mark to proceed to registration

Background

1. This is a decision on the opposition by Zero Motorcycles Inc (‘Opponent’) pursuant to s 52 Trade Marks Act 1995 (Cth)[1] to registration of the trade mark detailed below in the name of Benzina Zero Pty Ltd (‘Applicant’):

   Number:             2154128 (‘Application’)

   Trade Mark:       BENZINA ZERO SPORT (‘Trade Mark’)

   Filing Date:        8 February 2021 (‘Relevant Date’)

   Goods:Class 12: Electric vehicles; Vehicles utilising electric motors; Motorcycles; Motorscooters; Mopeds (‘Applicant’s Goods’)

   [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. Following the advertisement of acceptance of the Application for possible registration, the Opponent filed a Notice of Intention to Oppose on 8 September 2021 followed by a Statement of Grounds and Particulars (‘SGP’) on 8 October 2021. The Applicant filed a Notice of Intention to Defend on 12 November 2021.

3. The parties then had an opportunity to file evidence in accordance with the Regulations but neither party filed evidence. Following the conclusion of the evidence stage, the parties agreed to participate in a case conference and the matter was suspended. The suspension was terminated on 23 August 2022 after the Applicant elected not to proceed with the case conference.

4. Following termination of the suspension, the parties were given the opportunity to request a hearing and both parties asked for a hearing by written submissions.  The Opponent filed its written submissions on 30 August 2023 (‘Opponent’s Written Submissions’) and the Applicant’s written submissions were filed on 6 September 2023.  This matter has been allocated to me to determine as a delegate of the Registrar of Trade Marks based on the aforementioned materials.

   Grounds, Onus and Relevant Date

5. In the SGP, the Opponent particularised grounds of opposition under ss 41, 42(b), 44, 58 and 60.  In the Opponent’s Written Submissions, the Opponent advised that it was not pressing the grounds of opposition under ss 41, 42(b), 58 or 60 and I treat those grounds as abandoned, although they would be available in any appeal against this decision. 

6. In relation to the s 44 ground of opposition, two of the trade marks relied on by the Opponent in the SGP are Protected International trade marks (‘PITMs’) and the third is an International Registration designating Australia (‘IRDA’). Section 44 is not the applicable ground for rejecting a trade mark based on similarity with PITMs or IRDAs. In the Opponent’s Written Submissions, the Opponent seeks to amend its SGP to rely on reg 4.15A, which performs the same function as s 44 when a trade mark is being considered for rejection based on similarity to PITMs or IRDAs. The Applicant objects to the amendment on the basis that the amendment does not pertain to information which the Opponent could not reasonably have been aware of at the time of filing the SGP and because the Applicant may have elected to file evidence in answer had it been aware that the Opponent was relying on reg 4.15A.

7. The parties were involved in an earlier opposition proceeding and a decision issued on that proceeding on 16 December 2021 (‘Earlier Decision’).[2] In that case, the marks relied on by the Opponent included the two PITMs particularised in the present matter and the Opponent had similarly claimed s 44 as a ground of opposition. In the Earlier Decision, the delegate found the combination of the Opponent nominating s 44 and particularising the PITMs as sufficient to constitute effective nomination of reg 4.15A as a ground of opposition. Given that the Earlier Decision issued more than 2 months before the Applicant was advised that no evidence in support had been filed and that its evidence in answer was due in the present case on 23 May 2022, the Applicant should have been aware that the Opponent would similarly seek to rely on reg 4.15A in the present matter. Despite the Earlier Decision having issued before evidence in answer was due in the present case, the Applicant elected not to file any evidence. I am not persuaded by the Applicant’s arguments that it was unaware that the Opponent was relying on reg 4.15A as a ground and may have filed evidence had it known. In my opinion, the Opponent has clearly identified in its SGP that it regards the Trade Mark as being substantially identical with or deceptively similar to the earlier marks particularised and despite the reference to s 44 as opposed to reg 4.15A, the SGP is sufficient to place the Applicant on notice of this ground.

   [2] Zero Motorcycles Inc v Benzina Zero Pty Ltd [2021] ATMO 156 (Hearing Officer B. Knowles).

8. The Opponent bears the onus of establishing the ground of opposition.[3]  The standard of proof is the ordinary civil standard of the balance of probabilities.[4] The date at which the rights of the parties are to be determined is the Relevant Date.

   Discussion

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

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

   Regulation 4.15A

9. Regulation 4.15A relevantly provides:

   4.15A  Grounds for rejection—trade mark identical etc to trade mark protected under Madrid Protocol

   (1) For section 189A of the Act, and subject to subregulations (3) and (5), 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 protected international trade mark; or

   (ii)  a trade mark in respect of which the Registrar has received notification of an IRDA;

   held by another person in respect of similar goods or closely related services; 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 other trade mark in respect of the similar goods or closely related services.

10. Therefore, to succeed on this ground of opposition, the Opponent must identify at least one PITM or IRDA which satisfies the following requirements:

    (i) is in the name of a person other than the Applicant (‘First Requirement’);

    (ii) has a priority date which is earlier than the Relevant Date (‘Second Requirement’);

    (iii) is substantially identical with, or deceptively similar to, the Trade Mark (‘Third Requirement’); and

    (iv) is in respect of goods and/or services which are either similar and/or closely related to the Applicant’s Goods (‘Fourth Requirement’).

11. The Opponent is the owner of the following marks (‘Opponent’s Marks’) nominated in its SGP as the basis for this ground of opposition:

Number	Trade Mark	Goods	Priority Date
1321210 (IR 1010496)	ZERO MOTORCYCLES	Class 12: Electric vehicles, namely motorcycles excluding tyres, rims and parts and fittings for tyres, brakes, covers rotors, drums and loaded callipers (‘Opponent’s Goods’)	30 Jul 2009
1322078 (IR 1010861)	ZERO S	Class 12:  Electric motorcycles excluding tyres, rims and parts and fittings for tyres, brakes, covers rotors, drums and loaded callipers	6 Feb 2009
2039637 (IR 1489123)	ZERO SR/F	Class 12:  Electric motorcycles; excluding tyres, rims and parts and fittings for tyres, brakes, covers rotors, drums and loaded callipers	21 Feb 2019

1. Each of the Opponent’s Marks satisfies the First and Second Requirements in that the Opponent’s Marks are in the name of someone other than the Applicant and have an earlier priority date than the Relevant Date.    

2. Turning to the Fourth Requirement, the Applicant accepts that the Applicant’s Goods are similar to the Opponent’s Goods.  Section 14 provides that two sets of goods are similar if they are the same or of the same description.  The factors to be considered are the nature of the goods, their uses and the trade channels through which they are bought and sold.[5]  I consider that the Applicant’s Goods are similar goods to the Opponent’s electric motorcycles.  The items ‘electric vehicles; vehicles utilising electric motors; motorcycles’ encompass the Opponent’s Goods.  The two sets of goods are similar in nature and purpose being for personal transport.  Further, electric and non-electric vehicles are often manufactured by the same traders and directed to the same class of consumers through the same trade channels.  The Fourth Requirement is met.

   [5] Jellinek's Application (1946) 63 RPC 59 (Romer J).

3. Therefore, the only matter in dispute is whether the Trade Mark is substantially identical with or deceptively similar to any of the Opponent’s Marks.  Neither party has addressed the issue of whether the marks in question are substantially identical in their written submissions and I assume that the parties are in agreement that they are not.  For completeness, I note that on a side by side comparison of each of the Opponent’s Marks with the Trade Mark, there are obvious differences between the Trade Mark and each of the Opponent’s Marks with the only common element being the word ‘ZERO’.  These differences are such that there is not a total impression of resemblance.  The Trade Mark is not substantially identical to any of the Opponent’s Marks.

4. Section 10 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 assessment of deceptive similarity was considered by Windeyer J in Shell Co (Aust) Ltd v Esso Standard Oil (Aust) Ltd who said:

   The marks are not now to be looked at side by side. The issue is not abstract similarity, but deceptive similarity. Therefore the comparison is the familiar one of trade mark law. It is between, on the one hand, the impression based on recollection of the plaintiff's mark that persons of ordinary intelligence and memory would have; and, on the other hand, the impressions that such persons would get from the defendant's [mark].[6]

   [6] [1963] HCA 66, [13].

5. For trade marks to be considered deceptively similar, there must be a real and tangible danger of deception or confusion occurring.[7]  This will be the case where there is a real likelihood that an ordinary person would be caused to wonder whether the goods or services come from the same trade source.[8]  The basis for any deception or confusion is the impression or recollection of the trade marks that is carried away and retained by the ordinary consumer, rather than those who are particularly cautious or exceptionally careless, allowing for an imperfect recollection of the trade marks.[9]   The impression comes from the trade marks as a whole, and involves a consideration of the look, sound and ideas conveyed by the trade marks.  However, if a registered trade mark includes words which can be regarded as an ‘essential feature’ of the mark, another mark that incorporates those words may cause a tangible danger of deception or confusion by reason of consumers retaining an imperfect recollection of those words.[10]  All of the surrounding circumstances must be considered including the visual and aural similarities, the nature of the goods and kind of potential customers.[11]

   [7] Southern Cross Refrigerating v Toowoomba Foundry Pty Ltd (1954) 91 CLR 592, 595 (Kitto J).

   [8] Registrar of Trade Marks v Woolworths Ltd [1999] FCAFC 1020, [50] (French J).

   [9] Crazy Ron’s Communications Pty Ltd v Mobileworld Communications Pty Ltd [2004] FCAFC 196, [74]-[75] (Moore, Sackville and Emmett JJ).

   [10] Ibid [79].

   [11] Re Pianotist Co Ltd (1906) 1A IPR 379; 23 RPC 774, 777 (Parker J) cited in Cooper Engineering Co Pty Ltd v Sigmund Pumps Ltd [1952] HCA 15; (1952) 86 CLR 536, 538 (Dixon, Williams and Kitto JJ).

6. The Opponent argues that the essential feature of each of the Opponent’s Marks is ZERO which the Opponent says is also an essential element of the Trade Mark.  The Opponent argues that the additional elements in the Opponent’s Marks are either descriptive or de minimis and the word SPORT in the Trade Mark should be discounted as it is descriptive of vehicles used in motor sports or having sports styling, performance or characteristics.  Taking into account the notional use that may be made of the Trade Mark, the Opponent says that the Applicant may use the word ZERO in a manner which emphasises the word ZERO making confusion likely.  Also, the Opponent contends that there may be contextual confusion due to the Opponent’s family of ‘ZERO’ marks.

7. In support of a finding of deceptive similarity, the Opponent points to the Earlier Decision in which the delegate found the Opponent’s mark ZERO MOTORCYCLES and the Applicant’s opposed mark(‘Applicant’s Logo’) to be deceptively similar on the basis that ZERO is an essential element of both marks and has no obvious relationship to the goods in question.

8. The Applicant argues that similar marks owned by both the Applicant and the Opponent have been determined not to be deceptively similar during examination.  The Applicant owns the following Australian trade mark registrations which were accepted for registration without objection under s 44 and which were not opposed:

Number	Trade Mark	Priority Date	Goods
2115265	BENZINA ZERO	27 August 2020	electric vehicles; motor scooters; mopeds; motorbikes; motorcycles; none of the aforementioned being autonomous cars
2149132	BENZINA ZERO DUO	20 January 2021	Electric vehicles; Vehicles utilising electric motors; Motorcycles; Motorscooters; Mopeds; none of the aforementioned being autonomous cars
2151096	BENZINA ZERO CITY	25 January 2021	Electric vehicles; Vehicles utilising electric motors; Motorcycles; Motorscooters; Mopeds

1. The Opponent owns registrations or accepted applications for ZERO MOTORCYCLES (number 2277377), ZERO S (number 2292712) , ZERO DSR/X (number 2171194), ZERO FXE (number 2199913) and ZERO SR/S (number 2238600) all filed after the Application and covering essentially the same goods as the Opponent’s Marks, which did not encounter citations of the Application during examination.

2. In relation to the Earlier Decision, the Applicant notes that each case should be determined on its own merits and that little weight was given to the registration of the Applicant’s word mark BENZINA ZERO in the Earlier Decision because it was filed after the priority date of the Applicant’s Logo whereas in the present case that registration predates the Application.

3. In my opinion, the comparison of marks in the present case differs from that in the Earlier Decision.  The Applicant’s Logo highlights the element ZERO whereas in the present case that common element is ‘buried’ in the middle of the Trade Mark.  Whilst the Opponent argues that I must take into account the notional use of the Trade Mark, such notional use does not permit emphasising the element ZERO in a manner which would substantially affect the identity of the mark as applied for and, as the Applicant notes, it would be unusual for a trader to emphasise the middle element of a mark.

4. It is the Applicant's contention that there are compelling differences between the Opponent’s Marks and the Trade Mark and the mere fact that there is a common element is not sufficient to support a finding of deceptive similarity.  In this regard, the Applicant notes the following comments in Citizen Tokei Kabushiki Kaisha v Micro Forte Pty Limited:

   It is not sufficient, in considering whether the trade marks in question are deceptively similar, for the opponent to rely solely upon the fact that its trade mark is contained within the applicant's trade mark. It is important to consider the context in which the word CITIZEN appears, and the resulting impression it might create in the minds of customers.[12]

   [12] [2003] ATMO 64, [28] (Hearing Officer C. Murray).

5. The fact that the Trade Mark and Opponent’s Marks share an element is not determinative of deceptive similarity but rather it is necessary to consider ‘the impression produced by the entirety of the marks, recognising that one word or feature of a mark can be more striking and memorable than another’.[13]  The word BENZINA is unusual and is likely to ‘leave a significant impression on the minds of consumers’.[14]  Further, it is a well-established principle that the first element of a trade mark is generally more memorable.   Although the final element in the Trade Mark is not distinctive, its presence cannot be disregarded.  The word SPORT in the Trade Mark assists in detracting attention from the word ZERO and adds to the visual and aural differences between the Trade Mark and the Opponent’s Marks.  Moreover electric vehicles and motorcycles are goods that consumers take care in purchasing usually researching the different options available. 

   [13] Swancom Pty Ltd v The Jazz Corner Hotel Pty Ltd (No 2) [2021] FCA 328, [245] (O’Bryan J).

   [14] Pirelli Tyre SpA v Rodin Cars Limited [2022] ATMO 26, [29] (Hearing Officer L. Tuohy).

6. The Opponent argues that contextual confusion is likely due to the Opponent’s family of ‘ZERO’ marks.  Justice Sunberg discussed the notion of a ‘family of trade marks’ in Scotch Whisky Association v De Witt[15] and noted the following comments in Re Application by Beck Koller & Co:[16]

   When an application for registration is before the Registrar, it frequently happens that the search for conflicting marks reveals several marks having some characteristic feature in common with the mark of the application, which marks may stand on the register in the name of one proprietor only, or in the name of several different proprietors.

   ...

   If, therefore, all the marks were owned by one proprietor, the Registrar would presume that the latter was using a ‘series’ of marks and judge the conflict between the applicants’ mark and each of the proprietor’s mark with this consideration in mind.

   ...

   On the other hand, if the registered marks were owned by several different proprietors, this would be a circumstance which might considerably assist the applicant who would be in a position to submit that the common characteristic was one well recognised in marks in use in the particular trade. In short, when the Registrar comes to compare the applicant’s mark with the registered marks, ... the presence of marks on the register other than the one with which the comparison is being made is regarded as one of the surrounding circumstances which he is required to take into account.[17]

   [15] [2007] FCA 1649, [74]-[81].

   [16] (1947) 64 RPC 76 (Assistant-Comptroller Chisholm).

   [17] Ibid 83.

7. I am not persuaded by the Opponent’s arguments that use of the Trade Mark is likely to lead to confusion due to the Opponent holding a ‘family’ of marks.  The Applicant also owns a number of BENZINA ZERO formative marks and there are registrations in the name of third parties for other ‘ZERO’ marks covering vehicles including registrations 2011489 FZERO and 13453602 ZERO EMISSION & Device.  In the circumstances and in the absence of any evidence that the Opponent has a reputation in ‘ZERO’ marks, I do not consider there to be a likelihood of contextual confusion from use of the Trade Mark.

8. Taking into account all of the relevant considerations, I am not satisfied that the Trade Mark is deceptively similar to any of the Opponent’s Marks and accordingly, the ground of opposition is not established.

   Decision

1. The Opponent has failed to establish the ground of opposition pressed under reg 4.15A. The Trade Mark may proceed to registration not less than one month from the date of this decision.

2. If the Registrar is served with a notice of appeal, I direct that registration shall not occur until either the appeal is withdrawn or discontinued.  Otherwise the disposition of the Application should be in accordance with the Court’s order or direction.

3. Both parties requested an award of costs. As costs generally follow the event, I award costs against the Opponent under s 221 in the relevant amounts set out in Schedule 8 of the Regulations.

   Tracey Berger

   Hearing Officer

   Delegate of the Registrar of Trade Marks

   2 November 2023