Whether similar goods
189 It is a precondition of successful opposition under ss 44(1) or (2) that the impugned trade mark is deceptively similar to a mark registered in respect of similar goods or closely related services, or similar services or closely related goods.
190 In the present case, it is first necessary to determine whether the goods for which the TiVo trade mark is registered in class 9 are similar to the goods in respect of which the Vivo trade mark is registered in class 9.
191 Section 14 of the Act defines similar goods as follows:
14 Definition of similar goods and similar services
(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.
(2) For the purposes of this Act, services are similar to other services:
(a) if they are the same as the other services; or
(b) if they are of the same description as that of the other services.
192 Whether goods and services are of the same description is essentially a matter of fact, in determining which the following matters, while not the only considerations, are particularly important.
(a) the nature of the goods and services, including their origin and characteristics;
(b) the uses made of the goods and services, including their purpose; and
(c) the trade channels through which the goods and services are sold, which may include consideration of whether the goods being compared are produced by the same manufacturer or distributed through the same channels; whether they are sold in the same shops; whether they are sold to the same sort of customers; and whether those engaged in the manufacture and distribution of the goods are considered as belonging to the same trade.
(see McCormick & Co Inc v McCormick (2000) 51 IPR 102 ("McCormick"), per Kenny J (at [18])).
193 In Southern Cross at 606-7, the High Court stated that:
Romer J [in In re Jellinek's Application (1946) 63 RPC 59] thought it necessary to look beyond the nature of the goods in question and to compare not only their respective uses but also to examine the trade channels through which the commodities in question were bought and sold. Shortly after the decision in Jellinek's case … the Assistant-Comptroller elaborated on the observations of Romer J in the following manner:
"In arriving at a decision upon this issue the reported cases show that I have to take account of a number of factors, including in particular the nature and characteristics of the goods, their origin, their purpose, whether they are usually produced by one and the same manufacturer or distributed by the same wholesale houses, whether they are sold in the same shops over the same counters during the same seasons and to the same class or classes of customers, and whether by those engaged in their manufacture and distribution they are regarded as belonging to the same trade. In the case of Jellinek's Application… Romer J classified these various factors under three heads, viz, the nature of the goods, the uses thereof, and the trade channels through which they are bought and sold. No single consideration is conclusive in itself, and it has further been emphasised that the classifications contained in the schedules to the Trade Marks Rules are not a decisive criterion as to whether or not two sets of goods are 'of the same description': In re an Application by John Crowther & Sons (Milnsbridge) Ltd (1948) 65 RPC 369 at 372."
Much the same considerations are evident in the observation of Dixon J (as he then was) in Reckitt & Colman (Aust) Ltd v Boden (1945) 70 CLR 84 when he said:
"What forms the same description of goods must be discovered from a consideration of the course of trade or business. One factor is the use to which the two sets of goods are put. Another is whether they are commonly dealt with in the same course of trade or business. In the present case, the goods are quite different, their uses are widely separated and they are not commonly sold in the same kinds of shops or departments": (1945) 70 CLR 84 at 94.
194 In the present case, the TiVo and Vivo trade marks are both registered in relation to specified goods in classes 9 and 38 respectively, which, while it tends to indicate that the goods are of the same description, is not decisive. The TiVo and Vivo class 9 goods are, however, differently described.
195 The TiVo goods are generally described as "computer hardware and software" followed by an inclusive list of computer hardware and software for personalised interactive television programming, television and television peripheral remote controls, communication devices including transmitters, receivers and controls, and software for use therewith and accompanying manuals sold as a unit. In contrast, the Vivo class 9 goods are broadly described as apparatus for audio-visual communications.
196 Vivo conceded that televisions, remote controls and digital set top boxes are goods in class 9 in respect of which the TiVo trade mark is registered, but denied that the other goods sold under the Vivo trade mark (digital photo frames, portable DVD players, home theatre systems, and computer monitors) are of the same description as goods in respect of which TiVo is registered, or are closely related to services in respect of which TiVo is registered. (This question is also relevant to the allegation of infringement, which is discussed below).
197 Vivo submitted that although Vivo home theatre systems and computer monitors could be used in conjunction with goods and services in respect of which the TiVo trade mark was registered, the relevant Vivo goods (like the goods at issue in Hills Industries Limited v Bitek Pty Ltd (2011) 90 IPR 337 ("Hills Industries")) had a very different function from that of the TiVo media device (and the associated services). Further, the TiVo DVR was not substitutable with Vivo home theatre systems, computer monitors, digital photo frames or portable DVD players.
198 Vivo also submitted that there was a fundamental difference in the nature of the relevant Vivo goods and that of the TiVo goods, because the TiVo media device was "a sophisticated computer", while the Vivo products were all used solely for audio visual display.
199 It does not follow that because some goods in respect of which Vivo is registered have a different function from a particular item within the scope of TiVo's registration, the goods in respect of which each mark is registered are not similar or of the same description.
200 There are, moreover, significant distinctions between Hills Industries, on which Vivo particularly relied, and the present case. Vivo's submission also placed undue weight on substitutability, or use as alternatives, in the context of an inquiry where no one factor is decisive, and other considerations are typically more important.
201 In Hills Industries, Lander J concluded that the respondent's television installation accessories (including external television antennas which excluded set top boxes) were not similar to, or of the same description as, the class 9 goods in respect of which the applicant's trade mark was registered (namely, digital and electronic products including televisions, video players, DVD players, decoders and cameras), although some such goods (especially televisions, television antennas and television installation accessories) were interdependent on each other for their functionality (at [138] to [140]).
202 Lander J also found a fundamental difference between the nature of the applicant's goods (which were digital and electronic and provided the display to consumers) and that of the respondent's goods (which allowed the brown goods to function by providing varying types of support) (at [110]). A similar dichotomy between the TiVo and Vivo goods at issue in this case cannot be sustained on that basis.
203 In Hills Industries, (in contrast to the TiVo and Vivo goods, which are both sold through the same trade channels to the same class of consumers), the respondent's goods and the applicant's goods were sold through different channels, to different classes of consumers. About 90% of the respondent's products were sold to professional installers, while the remaining 10% were sold to wholesalers, appearing, if at all, as a sideline in retail stores (at [126]). In contrast, the applicant's goods were marketed at the retail level and by direct advertising.
204 In Hills Industries, Lander J rejected the proposition that the applicant's and respondent's goods were similar because the applicant's goods could not properly function without the respondent's goods. His Honour did not consider that functional interdependence, or the capacity to use the goods in conjunction, necessarily rendered goods similar or of the same description. On the other hand, his Honour recognised that the common use of goods as alternatives or substitutes for each other would render confusion amongst consumers more likely, and may have indicated a different conclusion (at [114]).
205 Hills Industries is not authority for the proposition that particular goods in respect of which a trade mark is registered cannot be of the same description as goods in respect of which another trade mark is registered unless the former goods can be substituted or used as alternatives for all of the latter goods. Further, while Lander J did not consider that the need and/or capacity to use goods in conjunction sufficed to establish similarity, nor did his Honour treat them as indicia of dissimilarity. Rather, Lander J considered all relevant circumstances, including, importantly, the different supply channels, classes of consumers and purposes of the goods.
206 In the present case, the evidence established that the relevant goods in respect of which the TiVo and Vivo marks are registered are similar in nature, manufacturing, origin and purpose. They are made available to consumers in the same broad range of retail stores and sold within the same product categories where (in Dick Smith stores at least), they are physically placed in close mutual proximity. While some of the products sold under the Vivo trade mark, such as home theatres or computer monitors, are not interchangeable or substitutable with the TiVo DVR, the latter is but one of the goods in relation to which the TiVo trade mark is registered, and clearly some products within the Vivo registration would be interchangeable with some products within the TiVo registration. The TiVo DVR can be used in conjunction with some products, such as televisions, within the Vivo registration, and vice versa, which, while not decisive, supports their similarity. The Vivo trade mark can itself be applied to DVRs, which are within the scope of both the registrations. TiVo's registration includes computer hardware, televisions and communication devices, which are interchangeable with, or alternatives to, some Vivo products. Interchangeability or the capacity to use particular goods within the registration of one trade mark as an alternative for particular goods within the registration of the other is, in any event, only one relevant factor in determining whether goods are similar.
207 It is also highly relevant that witnesses who were expert or very experienced in the study, supply or marketing of such goods classified the goods in respect of which the TiVo and Vivo trade marks are registered as belonging to the same category.
208 Mr Simons, who was not cross-examined, deposed to significant experience in the distribution and sale of electronic home entertainment goods in Australia. He described the types of goods specified in the TiVo trade mark registration and the Vivo trade mark registration as belonging to the category of "audio-visual" or "AV" goods of the electronic home entertainment goods category, or "brown goods" (as opposed to white goods which included refrigerators, microwaves and washing machines).
209 Mr Simons deposed that such goods (including televisions, DVRs, set top boxes, remote controls, DVD players and DVD burners) had the same primary purpose of entertainment. Audio visual goods are typically purchased and used primarily for entertainment purposes (although not exclusively) to watch movies, television programmes, listen to audio, browse the web and interact with others.
210 According to Mr Simons' uncontradicted evidence, the products were typically produced by the same consumer electronics manufacturers. He deposed:
The main, or leading (in terms of sales), brands within this category of consumer goods include TiVo, Panasonic, Sony, LG, Topfield and Strong. Topfield and Strong only manufacture set-top boxes, whereas the other manufacturers also manufacture other electronic home entertainment goods, such as televisions, amplifiers, speakers, set-top boxes (either with hard disk drives incorporated or DVD burners), DVD players, Blu-ray players, home theatre systems and hifi systems.
211 Mr Simons further deposed:
[T]he TiVo PVR (and PVRs in general) falls within the broad category of "electrical goods", and more particularly with the audio-visual category of goods, often referred to within the industry as "brown goods". The audio-visual category of goods is an extremely wide category of goods, and encompasses all electrical (and some non-electrical) products which have some audio or visual component to them, or which are used in connection with goods which have some audio or visual component to them. For example, in relation to televisions, it encompasses goods used in connection with being able to use a television such as PVRs, set top boxes, remote controls, DVD players and DVD burners.
212 Mr Simons deposed that the audio visual category includes goods such as televisions, stereos, hi-fi systems, mobile phones, portable media players, some digital cameras, DVD players, DVD burners, Blu-ray players, set top boxes, computer gaming products and consoles, streaming media devices, HDMI and AV cables and remote controls.
213 Mr Simons deposed that all the above goods "have some audio-visual aspect to their communication function that is they can either record, playback or produce an audio or video signal or both, or otherwise facilitate that communication." Further, the majority performed some kind of transmitter or receiver function in order to transmit data.
214 Mr Simons deposed that typically audio visual products were sold in retail stores which sold brown goods or were classified as audio visual or IT retailers. The stores differed widely in size, ranging from small to large, or department stores, and could be independent, chain or franchise stores, such as Harvey Norman, Dick Smith and JB Hi-Fi.
215 Mr Maidana deposed that all of the TiVo and Vivo products supplied by Dick Smith are sold within the same product category and in the same area at Dick Smith. He deposed that Dick Smith stores typically arranged televisions along the back wall, with the DVD players, DVRs, PVRs, HD tuners and other set-top boxes arranged in gondoliers along the aisle leading to the televisions. The grouping of those goods together in the entertainment section enabled customers conveniently to consider and purchase different combinations. A customer seeking a new television or a DVD player could, following discussion with a sales person, ultimately choose a television and integrate one or both of those devices. Similarly a person looking at a television that integrates a set-top box and DVD player may also consider a television without such devices and the possibility of acquiring a standalone device at some other time. Mr Maidana estimated that a DVR was purchased at the same time as a television less than 20% of the time and was sometimes purchased after a television.
216 Mr Grassia also acknowledged in cross-examination that IT products, consumer electronics and audio visual products all belonged to the same group. He testified that "consumer electronics, audio visual, IT products, to me is all sort of one group". In affirming that the statement on Vivo's website that he had "lived and breathed audio visual and consumer electronic products for 25 years" was accurate, Mr Grassia implicitly conceded that the computer monitors and IT products he sold prior to 2004 belonged to the same category as the current Vivo products.
217 Professor Lukas, whose expert evidence as a Professor of Marketing and Area Head of the marketing discipline in the Department of Management and Marketing at the University of Melbourne was unchallenged, also classified the TiVo and Vivo products as within the same "audio visual" category. He stated:
I understand audio-visual products to be the products referred to in the letter of instructions provide [sic] to me by Polczynski Lawyers, dated 12 July, 2011: digital video recorders, televisions, portable DVD players, digital set-top boxes, digital photo frames and computer monitors.
…
I consider Vivo products (televisions, portable DVD players, digital set-top boxes, digital photo frames and computer monitors) to be audio-visual products.
218 Further, the evidence in this case established that the functions of individual products within the scope of the registrations are progressively converging, as there is a consistent tendency for the incorporation of functions originally performed by different devices into a single unit.
219 Although Vivo initially marketed and still currently principally markets televisions, its use of the trade mark progressively extended to digital set-top boxes, portable DVD players, digital photo frames and remote controls, thus confirming that such goods are "apparatus for use in audio-visual communication" within the legitimate scope of its registration.
220 In cross-examination, Mr Maidana confirmed that advances in transmission technology for televisions were catered for by functions which were initially achieved by a separate device to be used in conjunction with televisions, but ultimately incorporated into a single television unit.
221 The introduction of digital transmission was initially addressed by a set top box to be used in conjunction with existing analogue televisions, but digital televisions had an in-built tuner for receiving digital transmissions, and became progressively cheaper, obviating the need for two devices. The introduction of high definition transmission also initially required the use of a set top box with the television, but again, the tuner was subsequently built into the television.
222 Mr Maidana confirmed that while Vivo initially supplied high definition set top boxes for digital televisions, some televisions now incorporated DVD players, whilst other DVD players were still sold separately from a television.
223 Mr Maidana confirmed that customers frequently arrived at the Dick Smith store seeking a new television or DVD player, but could not decide whether to buy a unit which integrated both items. The same was true of digital tuners and high definition digital tuners. Mr Maidana considered that a television incorporating a PVR was the next logical step.
224 On the basis of his experience, Mr Simons also considered that the category of audio visual products could expand to include personal computers, tablet computers and smart phones.
225 The converging functionality of the relevant products, which are tending to become consolidated in one unit, blurs the previously clear cut distinction between, and separate identity of, the goods, thus reinforcing the conclusion that the TiVo and Vivo trade marks are registered in relation to similar goods.
226 Vivo's submission that the Vivo and TiVo goods were of a fundamentally different nature, because Vivo goods were all used solely for audio visual display while the TiVo media device was a sophisticated computer, was largely based on comparison of the goods which are and have been supplied under the respective marks, and gave insufficient weight to the notional scope of registration and progressive convergence. Whether the goods are similar is to be determined by reference to those in respect of which the marks are registered, rather than the goods that are supplied at any particular time. Professor Lukas made clear that he did not distinguish between computer monitors, DVRs or televisions, regarding them all as audio visual goods. Further, the increasing convergence of functions renders an absolute functional dichotomy between goods for audio visual display and sophisticated computers untenable.
227 Therefore, in my view, the TiVo and Vivo trade marks were registered in respect of similar goods and there was no basis on which to exclude home theatre systems, computer monitors, digital photo frames or portable DVD players.