consideration
13 Section 44(1) of the Act relevantly provides:
'(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.'
14 Section 10 of the Act defines 'deceptively similar' as follows:
'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.'
15 In Registrar of Trade Marks v Woolworths at 382 French J, with whom Tamberlin J agreed, formulated the following propositions:
'(i) To show that a trade mark is deceptively similar to another it is necessary to show a real tangible danger of deception or confusion occurring. A mere possibility is not sufficient.
(ii) A trade mark is likely to cause confusion if the result of its use will be that a number of persons are caused to wonder whether it might not be the case that the two products or closely related products and services come from the same source. It is enough if the ordinary person entertains a reasonable doubt.
It may be interpolated that this is another way of expressing the proposition that the trade mark is likely to cause confusion if there is a real likelihood that some people will wonder or be left in doubt about whether the two sets of products or the products and services in question come from the same source.
(iii) In considering whether there is a likelihood of deception or confusion all surrounding circumstances have to be taken into consideration. These include the circumstances in which the marks will be used, the circumstances in which the goods or services will be bought and sold and the character of the probable acquirers of the goods and services.
(iv) The rights of the parties are to be determined as at the date of the application.
(v) The question of deceptive similarity must be considered in respect of all goods or services coming within the specification in the application and in respect of which registration is desired, not only in respect of those goods or services on which it is proposed to immediately use the mark. The question is not limited to whether a particular use will give rise to deception or confusion. It must be based upon what the applicant can do if registration is obtained.
In respect of the last proposition, Mason J observed in Berlei Hestia Industries Ltd v The Bali Co Inc (1973) 129 CLR 353 at 362:
"the question whether there is a likelihood of confusion is to be answered, not by reference to the manner in which the respondent has used its mark in the past, but by reference to the use to which it can properly put the mark. The issue is whether that use would give rise to a real danger of confusion."'
16 Registration of the Trade Mark is sought in stylised lettering as follows:
17 NEC has registered trade marks consisting of the letters 'NEC' in stylised lettering ('the NEC mark') in the following forms:
(see, for example, Trade Mark Nos 177937 and 326407)
(see, for example, Trade Mark No 674029)
The second form of the NEC mark (ie Trade Mark No 674029) has been NEC's primary mark since 1998. Although frequently reproduced in blue lettering, Trade Mark No 674029 has no restriction as to colour.
18 NEC and its subsidiaries and related companies operate a global manufacturing and distribution business in the computer, telecommunications, information technology and electronics industries. NEC was originally called Nippon Electronic Company Limited ('Nippon'). Nippon commenced business in Japan in 1899 with the production, sale and maintenance of telephone and switching systems. During the twentieth century Nippon expanded worldwide changing its name to NEC Corporation in 1983. As at September 2003 NEC had a total of 196 subsidiaries, 106 of which operate outside of Japan. As at March 2003 the NEC Group employed more than 145,000 people and in the fiscal year ending 31 March 2003 reported gross sales of over US$39 billion.
19 The NEC mark has been in use as a trade mark since 1961. It is not in dispute that NEC and the NEC Group have extensively advertised and promoted their goods and services under the NEC mark throughout the world including in Australia. Nor is it in dispute that the NEC mark has consequently become an extremely well‑known trade mark or brand. I am satisfied that as at 19 November 1999, the priority date for the registration of the Trade Mark, NEC enjoyed a substantial reputation in the NEC marks in Australia and elsewhere.
20 Punch Video was originally fully owned by Chang Lung Wen ('Mr Chang'). Mr Chang now owns 50% of the share capital of Punch Video and Chan Ghim Hong ('Mr Chan') owns the other 50%. Mr Chang and his family own Punch Video Inc., a company incorporated under the laws of Taiwan. Punch Video Inc. has manufactured automobile hi‑fi equipment for more than 20 years and automobile audio‑visual equipment since 1996. The Trade Mark was used by Punch Video Inc., apparently as an unregistered trade mark, before 1998. Since that time Punch Video has applied in approximately 16 jurisdictions to register the Trade Mark. The Trade Mark has been registered in some jurisdictions but in other jurisdictions opposition proceedings instituted by NEC remain to be resolved.
21 NEC contends that the Trade Mark is deceptively similar to each of the NEC marks identified in [17] above. This contention is based principally on the claim that the most important elements of the NEC marks and the Trade Mark are the letters or word element. On this basis NEC argued that the Trade Mark would, or might well, be seen by consumers as being constituted by the NEC mark followed by the non‑distinctive element 'vox' conveying the meaning of voice or sound.
22 Both parties called expert evidence on the question of whether the sale of automobile audio‑visual entertainment equipment in Australia under the Trade Mark would be likely to signify to consumers that the equipment was made by NEC or by a company with an affiliation with NEC. NEC called a Senior Lecturer in Marketing, Dr Margaret Anne Craig‑Lees ('Dr Craig‑Lees') and Punch Video called a Marketing Psychologist, Ms Lavinia Jeanne Strachan ('Ms Strachan').
23 Dr Craig‑Lees expressed the opinion that NEC is a highly visible global brand that is strongly associated with communications (audio/visual) technology, household electrical goods, computers and software. She expressed the further opinion that consumers who are familiar with NEC as a trade mark or 'identifier' would 'in all probability' associate a product in the categories of communications (audio/visual) technology, electrical goods, computers and software products bearing the Trade Mark with NEC. Dr Craig‑Lees considered that the incorporation of the word 'vox' into the Trade Mark would strengthen this association because 'vox' is often used as part of a trade mark or brand in relation to sound equipment/products, music groups, discussion groups and news groups. She instanced, amongst others, '94.5 VOX fm' (a radio station), 'Vox.com' (an online art newsgroup) and 'Vox amplification' (a manufacturer of speakers).
24 By contrast Ms Strachan, while acknowledging that there would be very few consumers in Australia who would not recognise the NEC mark, did not believe that there would be a likelihood that consumers seeing the Trade Mark used in respect of automobile audio‑visual equipment in Australia would assume an association with NEC. She placed weight on the fact that the NEC mark is seen as a combination of three letters, and not as a word, and that the Trade Mark is likely to be pronounced as a single word. She additionally placed weight on the differentiation between the two marks made by the use of lower case for the Trade Mark and upper case for the NEC marks. She stressed, however, that consumers would not consciously note this difference. Ms Strachan thought that consumer familiarity with the word 'vox' in the context of audio or voice recording, and with a brand of audio equipment called Voxon, would make it less, rather than more, likely that they would associate the Trade Mark with NEC.
25 No additional evidence was placed before the Court concerning the brand 'Voxon' to which Ms Strachan referred. Unlike the brand 'Woolworths', 'Voxon' does not have notorious familiarity to Australian consumers of which judicial notice may be taken (see Registrar of Trade Marks v Woolworths at 386 per French J). I am for this reason unable to attribute weight to Ms Strachan's view that Australian consumers of automobile audio‑visual equipment would be familiar with the brand 'Voxon'. I accept, however, that Australian consumers are likely to be aware that the word 'vox' is not uncommonly used in respect of audio equipment or voice broadcasting generally.
26 The experts were in agreement that brands and marks are primarily recognised visually rather than aurally. For this reason I attribute little weight to the different ways in which 'NEC' and 'necvox' are ordinarily pronounced. For the same reason I consider that any of the NEC trade marks that utilise the letter 'X' rather than 'C', of which Trade Mark No 485985 NEXTAR is an example, may be disregarded for present purposes.
27 Ms Strachan gave evidence, which I accept, that the NEC mark provides a very good example of the way in which a symbol can be recognised by consumers as a brand that has a set of values. Neither Ms Strachan nor Dr Craig‑Lees placed much weight on the font of the NEC mark as an element of its visual presentation although, as mentioned above, Ms Strachan thought that the lower case form of the Trade Mark would assist in differentiating it from the NEC mark.
28 The use of the lower case lettering in the Trade Mark certainly gives it the appearance of a word. This is what the Delegate appeared to have in mind when she concluded, in effect, that consumers were no more likely to infer a connection between the Trade Mark and NEC than they were to infer a connection between ordinary English words such as 'nectarine', 'necessary' and 'necromancy' on the one hand and NEC on the other (see [9] above). With respect, it seems to me that in reaching this conclusion the Delegate overlooked that in the case of each of the three words that she instanced there is no reason to see the letters 'nec' as standing apart from the rest of the word. The Shorter Oxford English Dictionary on Historical Principles shows that 'nectarine' derives from 'nectar', 'necessary' derives from the Latin 'necessarius' and 'necromancy' derives from the Greek prefix 'necro'. By contrast, as Ms Strachan and Dr Craig‑Lees agreed, the Trade Mark would be seen by consumers as the distinctive word 'vox' preceded by the letters 'nec'. It could thus be argued that an appropriate comparator for the exercise undertaken by the Delegate might be a word such as, for example, 'Sonyvox', rather than words of the kind identified by the Delegate.
29 Nonetheless, were it not for the evidence discussed below I would be most reluctant to depart from the conclusion of the Delegate that the Trade Mark is not deceptively similar to the NEC mark. However, in my view, the below evidence tips the scale in favour of a conclusion that the decision of the Delegate should be set aside.
30 Mr Chan gave affidavit evidence that:
'The Trade Mark was derived from letters in a description of the goods "New Entertainment for Cars" together with the commonly used word "VOX" which refers to "voice".'
31 NEC challenges the truthfulness of Mr Chan's evidence in this regard. Mr Chan agreed that the phrase 'New Entertainment for Cars' did not appear on any of the documents produced in this proceeding. He was not re‑examined to displace the inference that the phrase does not appear in any promotional material concerning Punch Video products. The evidence also establishes that the Trade Mark was used before Punch Video Inc. launched its in-car display screens in 1996 and thus at a time when Punch Video Inc. was only manufacturing audio equipment for cars. Mr Chan was not involved in the management of Punch Video Inc. when the Trade Mark was first used or at any time. Nonetheless, he chose to give evidence concerning the provenance of the Trade Mark. His attempts to do so by reference to new forms of in-car entertainment were unpersuasive and raised questions as to his credibility. No evidence was adduced from Mr Chang.
32 Mr Chan initially gave evidence that, although Punch Video had registered the word 'necvox' as a trade mark in other jurisdictions without limitation as to style, it had never been used other than with lower case lettering. However, when shown a photograph showing the signage reproduced below, Mr Chan acknowledged the use of upper case lettering: