The Concept of “Careful Purchasers” Strikes Again: Basler Electric Company v BOGE Elastmetall GmbH [2017] ATMO 64 (30 June 2017)

On 17 November 2014, motor and vehicle parts manufacturer BOGE Elastmetall GmbH (the Holder) applied for a trade mark in Australia, relying upon an extension of protection based upon international registration no. 1227675 (“the IRDA”). This was an image mark consisting of a stylised letter “B” (the company’s logo) inside a black rectangle. The mark’s specifications include Class 7, 9, 12, 16 goods in relation to various automotive and office supplies, as well as Class 35, 38, and 41 services relating to advertising, telecommunications, computer programs, and various training services. Here is an image of the logo:

The application was opposed on 4 May 2015 by Basler Electric Company (the Opponent), relying upon sections 42, 58, and 60 of the Trade Marks Act as grounds for opposition. (Sections 59 and 62A were also submitted as grounds for opposition, but the Opponent did not make any submissions about these.)

The Opponent submitted that three of their trade marks, unregistered in Australia but which the Opponent claimed to have been in active use in Australia prior to the IRDA’s filing date:

The s 60 ground was dismissed, as the Opponent failed to establish any evidence of actual confusion arising in Australia (or elsewhere, for that matter), between the Opponent and the Holder’s respective marks. At least in part, the evidence let the Opponent down. As the hearing officer notes:

“19.I am not satisfied that the requisite reputation has been established. The evidence in Linklater is limited to the assertions of the amount of advertising, without any supporting documentation to show how it was effected and the particular sums involved. Likewise Steinacher deposes to catalogues being produced and distributed; however, there are no details as to the number distributed, how or to whom they were distributed.”

But also, the products are not fast moving consumer goods. “20.Even if the requisite reputation had been established I am not satisfied that there would be a real tangible danger of confusion or deception. The Opponent’s goods are expensive and specialized electricity generation control products used in electricity generation and distribution. These products are entirely unrelated to the goods and services covered in the IRDA, being primarily vehicle components and associated services. 21.I consider that because of the relative expense of the products of both parties and their specialisms, they would be purchased after extensive research and due consideration and are not the kind of goods that might be purchased on impulse or in a hurry.”

This reasoning echoes other decisions around casual purchases and thoughtful purchases:

a. Linecrest Pty Ltd v Cobannah Holdings Pty Ltd as trustee for the Lollymania Trust [2013] ATMO 2 (9 January 2013), where the hearing officer noted, “The goods are of such a price and nature that not much time, care, or attention is devoted to their purchase and it is likely that the goods will be casually inspected prior to purchase and their provenance will be unquestioned. Additionally, the purchase of the goods is likely to be attended a similar press of circumstances as those distractions referred to in Re Stuart Alexander and Co (Interstate) Pty Limited and Douwe Egberts Koninklijke Tabaksfabriek-Koffiebranderijen-Theehandel NV v Blenders Pty Limited [1981] FCA 152; (1981) 53 FLR 307. Lockhart J said: “Shoppers in supermarkets are probably not anxious to prolong the agony of wheeling trolleys between rows of food products and avoiding collision with other trolleys, often to the unwelcome accompaniment of clamorous babies, and children impatient to escape from the shop or to buy everything in it except the household needs. I say nothing about attendant spouses who, if husbands, wait in varying degrees of impatience to perform their function as beasts of burden. Shoppers are probably inclined to select their goods quickly.”

b. Prefel SA v Merchant Corporation (2001) ATMO 31: “My attention must also be given to the circumstances of trade likely to surround use of those trade marks on the specified goods. It seems to me the goods, which are clothing, are for the most part unlikely to be ordered by telephone or over a counter by the spoken word. I am aware that neither set of goods is limited to high cost items. Nevertheless, I think it is likely, in most situations, the goods will be sold in a manner which affords the potential purchaser an opportunity for careful inspection and comparison with other similar goods. Under such circumstances, the visual impact of the respective marks is likely to be of considerable importance – as per Taiwan Yamani Inc v Giorgio Armani S.p.A. (1990) AIPC 90-644.”

Specialist markets are different from markets for fast-moving consumer goods. In Bausch & Lomb Inc v Registrar of Trade Marks (1980) 28 ALR 537 Lee J held that where a trade mark is used on a specialised product the enquiry should be directed to the section of the community following the particular pursuit or possessing the special vocational or technical interest. In that decision, His Honour said:

“In my view one must approach the matter not as a layman with the loose knowledge to which I have referred, but from the point of view of how the word would be accepted amongst those who in fact distinguish the lens of one manufacturer from that of another by reference to a trade name, and in this case these are in the main the specialists in the field of eye care and to a lesser extent their patients.”

In Line 6 Inc v Apple, Inc [2009] ATMO 9 (29 January 2009) at para 42, evidence failed the opponent but the hearing officer noted:

“I have no doubt that the opponent’s goods have established a reputation in Australia within the musical industry – amongst players of electric guitars in particular. While the evidence does not show particularly strong sales the marketplace in not particularly large and the participants in the musical industry are generally well informed about the products available to them to enable them to perform.”

In Maxims Caterers Limited v Magnona Pty Ltd [2009] ATMO 98 (2 December 2009) the hearting officer noted, “The production and sale of moon cakes, especially under a trade mark consisting entirely of Chinese characters, indicates a niche market. “

In L.F.P Inc v Supre Pty Ltd [2005] ATMO 31 (24 June 2005) at [30] the hearing officer said, “The opponent’s goods cater for a niche market. They are advertised for sale in the opponent’s HUSTLER magazine and via the opponent’s pornographic websites and thus exposure to the purchasing public is more limited than it would be if the goods were advertised and promoted via more conventional channels…. At [20] I consider that within the niche market where goods of this nature are bought and sold the opponent has achieved a reputation such that consumers would be likely to be deceived or confused if the applicant were to use its trade mark.”

And in Spiral Foods v Valio Pty Ltd [2000] ATMO 22 (15 March 2000), the hearing officer said, “The goods on which the trade marks have been used include wheat free soy sauce, soy sauce, teriyaki sauce, yuzu ponzu, low salt soy sauce, mirin, brown rice vinegar, plum vinegar, sesame oil, miso, sea vegetables, various teas, instant miso soup, various pickles and condiments, Japanese snack foods, rice, sesame and vegetable crackers, soy milk, rice wafers, olives, olive oil and various types of noodles. …I will simply remark that they demonstrate a generally increasing trend and, for a small company, sales are substantial within what is obviously a niche market.”

None of these decisions were cited by the hearing officer in this matter, but the decision follows the same line of reasoning. If the goods in the application are goods provided to a niche market, there will be significant difficulty in successfully opposing the application unless evidence demonstrates otherwise.

(In addition, the section 42 ground failed as the hearing officer was not convinced that the marks substantially similar. Had the Opponent proved that one of their trade marks bore a substantial similarity to the IRDA, it might have argued that they are the first one to use the mark in the country in the course of trade. But as the hearing officer found no similarities between their marks and the IRDA, it follows that the Holder is the first one to have used the mark in Australia and therefore its owner. The s58 ground failed as well, and since no submissions were made for the other grounds (s 59 and 62A), the IRDA has been allowed to proceed to protection one month from the date of the decision.)