Vivo International Corporation Pty Ltd v Tivo Inc

Federal Court of Australia (Full Court)|2012-11-14|Before: Keane CJ, Nicholas JJ

BACKGROUND 105 I have had the advantage of reading the draft reasons of the Chief Justice. I gratefully adopt his Honour's account of the background to the appeal, the relevant statutory provisions and the primary judge's findings and conclusions. I shall adopt the same definitions as his Honour. 106 On appeal, Vivo did not challenge the primary judge's rejection of its defence based upon honest concurrent use. That being so, the central issue in the appeal concerns the registrability of the Vivo trade mark including, in particular, whether the application for the Vivo trade mark should have been rejected in accordance with s 44(1) of the Act because it was deceptively similar to the TiVo trade mark as at the date of application. It is common ground that if the application should have been rejected on that basis then the primary judge was correct to order the cancellation of the Vivo trade mark. If the cancellation of the Vivo trade mark is upheld, Vivo not only loses its exclusive rights as owner of the Vivo trade mark conferred by the Act, it also loses the benefit of the defence under s 122(1)(e) of the Act. Section 122(1)(e) provides that a registered trade mark is not infringed by a person who exercises a right to use a trade mark given to the person under the Act.

APPROACH ON APPEAL 107 The primary judge's finding that the Vivo trade mark was deceptively similar to the TiVo trade mark was based upon phonetic rather than visual similarity. Her Honour did not accept that visually the Vivo trade mark was deceptively similar to the TiVo trade mark. In this regard, her Honour was influenced by the presence of the device that forms part of the Vivo trade mark, an element of the Vivo trade mark not present in the TiVo trade mark. TiVo did not suggest that her Honour was in error in failing to find that there was a real danger of confusion based upon the appearance of the marks. It follows that if the primary judge's finding of deceptive similarity is to be sustained on appeal, it can only be on the basis that the Vivo trade mark was deceptively similar to the TiVo trade mark because of phonetic similarity. 108 It is for the appellants to establish that the primary judge's conclusion of deceptive similarity was wrong. Ordinarily, the primary judge's conclusion on such an issue would carry significant weight unless it was affected by factual or legal error. However, in this case the primary judge's conclusion that the Vivo trade mark was deceptively similar to the TiVo trade mark was affected by error. 109 A finding that a trader has adopted a trade mark with the intention of taking advantage of the reputation attaching to another trader's trade mark is usually of considerable significance in an infringement proceeding: Australian Woollen Mills Ltd v FS Walton & Co Ltd (1937) 58 CLR 641 at 657. In the present case, the primary judge made such a finding which was relied upon by her Honour in support of her conclusion that the Vivo trade mark was deceptively similar to the TiVo trade mark. 110 During the hearing of the appeal, TiVo accepted that it never sought a finding of intention from the primary judge and that it disclaimed any positive case that it was Mr Grassia's intention to take advantage of any reputation attaching to the TiVo trade mark. TiVo made its position clear while resisting an application Vivo made to the primary judge for leave to call evidence from Mr Grassia's wife. 111 It does not follow that the intention was not relevant to issues that the primary judge was required to decide. Mr Grassia's intentions were clearly relevant to honest concurrent use. But since honest concurrent use is not in issue in the appeal, the question of intention is no longer relevant either. All of this leads to a somewhat unusual state of affairs in which the central issue arising in the appeal must be decided afresh, but without regard to the primary judge's findings on the question of intention, and without regard to the visual similarities between the TiVo and Vivo trade marks.

SECTION 44(1) 112 The only question in this appeal arising under s 44(1) of the Act is whether the Vivo trade mark was deceptively similar to the TiVo trade mark as at 18 February 2008. It was on that date that the application to register the Vivo trade mark was filed. By that time the TiVo trade mark, which was applied for on 10 November 1999, was already registered. 113 In Cooper Engineering Co Pty Ltd v Sigmund Pumps Ltd (1952) 86 CLR 536 at 538, the High Court (Dixon, Williams and Kitto JJ), when explaining why the mark RAINMASTER was not deceptively similar to RAIN KING, approved the following statement of Lord Parker (then Parker J) in In the Matter of an Application by the Pianotist Company Ltd for the Registration of a Trade Mark (1906) 23 RPC 774 at 777: You must take the two words. You must judge of them, both by their look and by their sound. You must consider the goods to which they are to be applied. You must consider the nature and kind of customer who would be likely to buy those goods. In fact, you must consider all the surrounding circumstances; and you must further consider what is likely to happen if each of those trade marks is used in a normal way as a trade mark for the goods of the respective owners of the marks. If, considering all those circumstances, you come to the conclusion that there will be a confusion - that is to say, not necessarily that one man will be injured and the other will gain illicit benefit, but that there will be a confusion in the mind of the public which will lead to confusion in the goods - then you may refuse the registration, or rather you must refuse the registration in that case. 114 The present case concerns not two word marks, but a word mark and a composite word and device mark. Nevertheless, the same test is to be applied. Of particular importance to this case is the need to consider what is likely to happen if each of the trade marks is used in a normal way on its owner's goods. The authorities make clear that "normal use" in this context means normal and fair use for all goods or services covered by the trade mark registration or trade mark application in question. Hence, it is the statutory rights of use that are to be compared rather than any actual use, and in considering whether an application for a mark should be rejected under s 44(1) because it is deceptively similar to an existing registered trade mark, it is necessary to have regard to all legitimate uses to which each mark might be put by its owner: see In the Matter of an Application by Smith Hayden & Coy Ld (1946) 63 RPC 97 at 101; Berlei Hestia Industries Ltd v Bali Co Inc (1973) 129 CLR 353 at 362; and Polo Textile Industries Pty Ltd v Domestic Textile Corporation Pty Limited (1993) 42 FCR 227 at 230-231. 115 In deciding whether to refuse the registration of a trade mark because it is deceptively similar to another mark with an earlier priority date, there are various other principles that must be borne in mind. First, it is not necessary to show that a use of the mark has or will result in confusion; a mark may be deceptively similar to another mark if there is "a real, tangible danger" of confusion occurring. Secondly, a mark may be deceptively similar to another mark if its use causes people to wonder whether it might not be the case that the products to which the marks are applied come from the same source. Thirdly, a mark may be deceptively similar to another mark even if its use might not result in any deception or confusion that induces a sale or persists until the moment of sale. Fourthly, allowance must be made for the "imperfect recollection" of a trade mark by people of ordinary memory and intelligence especially those who know one mark but do not know the other. See Southern Cross Refrigerating Co v Toowoomba Foundry Pty Ltd (1954) 91 CLR 592 at 595; Australian Woollen Mills Ltd v FS Walton & Co Ltd at 658; and Berlei Hestia Industries Ltd v Bali Co at 362.

EVIDENCE 116 For the reasons previously explained, it is necessary to reconsider the issue of deceptive similarity afresh. For this purpose, I have had regard to the evidence of Dr Cox, Mr Simons, Mr Maidana and Professor Lukas. Each of these witnesses' evidence in chief was given in affidavit form. I have also drawn on a key factual finding made by the primary judge (at para [176]) that was not affected by the error to which I have referred.

Dr Cox's evidence 117 Dr Cox is an expert phonetician. The substance of Dr Cox's opinion was that "Vivo" and "TiVo" would be pronounced differently and would be auditorily perceived as different words by ordinary Australians. In Dr Cox's opinion, "Vivo" and "TiVo" would most likely be pronounced as "vee + voh" and "tee + voh" respectively. It was highly probable, according to Dr Cox, that each would be pronounced with a stressed first syllable.

Mr Maidana's evidence 118 Mr Maidana is a store manager of a Dick Smith store at the Fountain Gate shopping centre in Narre Warren. By the time he made his affidavit in August 2011, Mr Maidana had been employed by Dick Smith as a salesman and store manager for about 10 years. He had previously worked in Dick Smith stores at Frankston, Knox City, Nunawading, Cranbourne, Dandenong and Chadstone. He held various sales positions in those stores. He became a store manager in August 2009 when he was transferred to the Cranbourne store. 119 From August 2009 until November 2010, Mr Maidana worked at the Cranbourne store. In the following Christmas/New Year period he worked as store manager first at Chadstone and then at Nunawading. He was appointed store manager of Dandenong in March 2011. He took up his current position as store manager of the Fountain Gate store at Narre Warren in July 2011. 120 Mr Maidana gave evidence that he had never witnessed customers confusing Vivo products and TiVo products. He also said: Based upon my experiences in the audio-visual industry, I believe that the chance of customers being confused between the TiVo and Vivo products is very minimal. This is partly because the products sold by TiVo and Vivo are so different, but also because I believe the brand names look and sound sufficiently different that customers are unlikely to draw a connection between them. In my experience, customers pay close attention to the brand names of the audio-visual products they are buying, and are careful to ensure that they have a product that satisfies their needs at the price they want to pay. I think it is highly unlikely that any customer would purchase such a product without identifying the brand they were buying.

Professor Lukas' evidence 121 At the trial, Vivo relied upon the evidence of Professor Lukas who is an expert in the fields of marketing and consumer behaviour. He expressed the opinion that the majority of consumers who purchase audio-visual products are motivated to make a careful purchase decision, and will therefore exhibit a high level of involvement in the purchasing process. He said that he would expect most purchasers of audio-visual products to spend more time and effort on the purchasing process, to be more attentive to products and brands, to visit more stores before making their purchases, and to make detailed comparisons between different products and brands. He referred to academic literature suggesting that a consumer's memory of products and brands is enhanced whenever there was a high level of involvement in the purchasing process. 122 Professor Lukas said that consumer purchases of TiVo products (DVRs, also known as PVRs, with associated software) would be high-involvement purchases. It followed, according to Professor Lukas, that consumers purchasing TiVo products would be likely to engage in some or all of the following activities: searching for relevant product and brand information; paying attention to the product under consideration; evaluating alternatives in some detail; perceiving differences between the TiVo brand and other brands in a product class; deciding to what extent TiVo is their favourite or preferred brand; and making a careful purchase decision. Professor Lukas said that the same was true of Vivo products (which he identified as televisions, portable DVD players, digital set top boxes, digital photo frames and computer monitors).

Mr Simons' evidence 123 Between 1990 and 2010, Mr Simons was a Harvey Norman franchisee operating in the "computers and communications" section of various Harvey Norman stores. He joined HTS in 2010 as Sales Manager for Australia and New Zealand. He was not cross-examined. 124 Mr Simons gave evidence that he regularly visited the stores of retailers to whom HTS supplied TiVo PVRs. His affidavit, made in July 2011, indicated that he commenced working for HTS in May 2010. Mr Simons said that he first became aware of Vivo in or around July or August 2010 when he first noticed a Vivo branded television for sale in a Dick Smith store. I infer that this was about the time that he commenced visiting Dick Smith stores as Sales Manager for HTS. Thus, by the time Mr Simons made his affidavit, he had been working for HTS for about 14 months and had been aware of Vivo branded televisions for about 12 months. 125 Mr Simons gave evidence of two particular occasions when he had conversations with members of the sales staff at the Dick Smith store in Menai and the Dick Smith store in the Macarthur Shopping Centre at Campbelltown. In the case of the Dick Smith store in Menai, Mr Simons said that in or around October 2010 he entered the store and spoke with a store manager whose name he could not remember. He said that he introduced himself as "Peter from TiVo". He said that the store manager responded by saying words to the effect, "Oh, you're from Vivo", to which Mr Simons responded, "No, I am Peter from TiVo. TiVo make the TiVo PVR." Mr Simons' affidavit does not say what, if anything, the store manager then said in answer but that he took Mr Simons to a section of the store where a Vivo branded television and a TiVo PVR were operating. The Vivo television was showing a TiVo promotional recording which was being played on a TiVo PVR. 126 The second occasion, also in or around October 2010, occurred at the Dick Smith store in Campbelltown. Mr Simons' evidence of his conversation at this store was as follows: During that visit, I spoke with a member of the sales staff at that store (whose name I cannot recall), whom I had not met before, and again introduced myself by stating words to the effect of "Hi, I'm Peter from TiVo". The sales person responded by saying words to the effect of "You must be from Vivo". From this statement, I immediately got the impression that this person either misheard me or thought that there was some connection between TiVo and Vivo. I replied with words to the effect that "No, I am from TiVo". The sales person responded with the words to the effect that "Aren't they the same?" or "Isn't it the same thing?". 127 Mr Simons gave evidence (apparently without objection) that his encounters with staff at the Dick Smith stores in Menai and Campbelltown were typical of other occasions at other retail stores where he had similar conversations with staff at those stores. Mr Simons said that there were approximately six other occasions since October 2010 when he had such conversations. Thus, there was evidence of a total of eight occurrences of what TiVo characterised as actual confusion between about October 2010 and July 2011 when Mr Simons' affidavit was sworn.

Assessment of Dr Cox's evidence 128 TiVo did not challenge Dr Cox's evidence but submitted that her evidence should not be given any weight. It was submitted that the following observations of Luxmoore LJ in In the Matter of Application by Rysta Ltd (1943) 60 RPC 87 at 108 were applicable to Dr Cox's evidence: It is the person who only knows the one word and has perhaps an imperfect recollection of it who is likely to be deceived or confused. Little assistance, therefore, is to be obtained from a meticulous comparison of the two words letter by letter and syllable by syllable pronounced with the clarity to be expected from a teacher of elocution. See also Aristoc Ltd v Rysta Ltd [1945] AC 68 at 85-86 per Viscount Maugham. 129 I do not accept that Dr Cox's evidence should not be given weight. Her evidence is significant because it suggests that people familiar with both the TiVo trade mark and the Vivo trade mark are not likely to be deceived or confused as a result of their phonetic similarity. In my view, Dr Cox's evidence provides clear support for the view that people familiar with both marks would pronounce them differently and that a person familiar with both marks would not find it difficult to distinguish between them when both were being used in conversation. Importantly, however, Dr Cox's evidence does not make any allowance for the effects of imperfect recollection.

Assessment of Mr Maidana's evidence 130 The primary judge made several points about Mr Maidana's evidence. First, her Honour said that the absence of confusion at a particular store, where staff training and supervision might be better, does not exclude its occurrence at other stores. In particular, her Honour said that there was no necessary inconsistency between the evidence of Mr Maidana and Mr Simons. Secondly, her Honour said that Mr Maidana's evidence was based upon his involvement with specific products which consisted of inexpensive Vivo televisions, and expensive TiVo DVRs. 131 The first of the points made by her Honour is not so significant in light of the view I have taken of Mr Simons' evidence which is discussed below. Of course, it remains true to say that the fact that Mr Maidana had not encountered confusion at the Dick Smith stores at which he worked does not mean that confusion might not have occurred at other stores. On the other hand, apart from Mr Simons' evidence, there was nothing to suggest that Mr Maidana's experience in selling TiVo DVRs and Vivo televisions would have been very different to that of other people working in Dick Smith stores. 132 The second of the points made by the primary judge is particularly significant in this case. Whether or not the Vivo trade mark was deceptively similar to the TiVo trade mark should be tested by asking whether there would have been a likelihood of confusion if both TiVo and Vivo were applying their trade marks to (for example) televisions, which might or might not be sold at similar prices, and which might or might not be offered for sale through the same retail outlets. When the question is approached in this way, the significance of Mr Maidana's evidence is considerably diminished.

Assessment of Professor Lukas' evidence 133 Professor Lukas' evidence suggests that most consumers purchasing audio-visual products are likely to display a higher level of involvement in the purchase process than might be true of many other types of products. This is plainly correct. Beyond that, however, it becomes difficult to generalise. Professor Lukas did not say that in his opinion consumers were likely to engage in all of the six activities enumerated in his report. His opinion was that consumers purchasing such products would be likely to engage in some or all of those activities. Nor did he give an opinion that all, or even most, consumers would search for product information or pay close attention to differences between brands before making their purchase decision. 134 I accept that many consumers are likely to evaluate audio-visual products in considerable detail prior to making their purchase decision, and that this would include paying close attention to brands. But there would also be a significant number of consumers who do not do so, and for whom a particular brand name may have only limited significance, perhaps as a name that they had seen or heard mentioned in advertising to which they may have been exposed. 135 Professor Lukas' evidence suggests that, for the majority of consumers, the level of consumer involvement in the purchase of audio-visual products is usually high. However, the generality of this evidence imposes significant limitations upon its usefulness in this case, especially when the TiVo trade mark registration covers not only DVRs, but a diverse range of audio-visual products which would, in the case of televisions, include cheap, portable models as well as highly sophisticated and expensive models employing the latest technology.

Assessment of Mr Simons' evidence 136 TiVo placed considerable reliance upon the evidence of Mr Simons which, it submitted, should be given "great weight". In oral submissions Senior Counsel for TiVo put his submission in relation to this evidence in this way: We say that there are two marks. The only distinguishing feature is the first consonant. We say that the people who ought to know the difference are the people who are confused and the time of the confusion, of course, is when they had both products but they were confused. They thought one was the other. If they think that, in a non-pressured environment, then how do they deal with the consumer? If a consumer says, "Is this the same as the Tivo I've read about", they're going to say, "Aren't they the same thing?" Isn't there a good prospect of that? And the answer, we say, is yes there is. 137 It is well established that evidence of actual confusion may be highly persuasive. But as with other evidence, in assessing what weight should be given to it, the Court must evaluate the quality of the evidence by reference to its internal features, the other evidence and the Court's own knowledge of human affairs. In Australian Woollen Mills Ltd v FS Walton & Co Ltd at 658, upon observing that "[e]vidence of actual cases of deception, if forthcoming, is of great weight", Dixon and McTiernan JJ went on to dismiss evidence from a few people who mistook a newspaper advertisement of the respondent for an advertisement of the appellant on the basis that it "amounted … to very little." 138 There is little point speculating about why Mr Simons was not cross-examined. But it is important to remember that he gave evidence of what staff at various Dick Smith stores said and did in response to him introducing himself as "Peter from TiVo". He might have been cross-examined with a view to eliciting more about what those people said and did, but he could not give direct evidence of their state of mind or their reasons for responding to him in the way they did. Nevertheless, the usual consequences follow from the failure to cross-examine Mr Simons: first, it was not open to Vivo to submit that Mr Simons' affidavit evidence was untruthful; secondly, Mr Simons' affidavit evidence was not contradicted or qualified by any other evidence, including, in particular, oral evidence that might have been elicited from him in cross-examination. 139 A court is not bound to accept evidence that has not been the subject of cross-examination. In Ellis v Wallsend District Hospital (1989) 17 NSWLR 553 at 588-589, Samuels JA (with whom Meagher JA agreed) rejected the view that evidence unchallenged by cross-examination must be accepted unless it was inherently improbable. In his Honour's view, a court may decide not to accept such evidence whether or not it is inherently improbable though it may, of course, be wrong, unreasonable or perverse not to accept such evidence in a given case. Samuels JA's views were endorsed by Kirby A-CJ (as his Honour then was) in Elkington v Shell Australia Ltd (1993) 32 NSWLR 11 at 17. 140 It is clear from Mr Simons' account of his conversation with the member of the sales staff at the Dick Smith store at Campbelltown that this person thought there was some connection between TiVo and Vivo even after Mr Simons had made it clear that he was from TiVo rather than Vivo. 141 The position is a little less clear in the case of Mr Simons' conversation with the store manager at the Dick Smith store at Menai. However, Mr Simons' evidence suggests that the manager with whom he spoke also thought there was some connection between TiVo and Vivo even though he was familiar with both trade marks and the products to which they were applied. 142 I do not consider Mr Simons' account of his conversations at the Dick Smith stores to be evidence of confusion occurring as a result of differences in pronunciation, slurring, mishearing or imperfect recollection. None of these possibilities explain why the confusion referred to in Mr Simons' evidence occurred. How then is his evidence to be explained? 143 I have difficulty understanding why a sales person who was familiar with the products he or she was selling would think that the TiVo products and the Vivo products were the same or that they came from the same source unless he or she mistook one mark for the other. It seems to me extremely unlikely that sales staff who were mindful of the differences (both visually and aurally) between the two marks would believe that goods marked with one mark came from the same source as goods marked with the other. Nor do I think that sales staff would be caused to wonder whether or not the goods came from the same source in such circumstances. 144 This brings me to the relevance of Mr Simons' evidence to this appeal. As I have mentioned, TiVo did not challenge the primary judge's rejection of its case based upon any visual similarity between the marks, but sought only to uphold the primary judge's finding of deceptive similarity on the basis of their strong aural similarity. It follows, in my view, that TiVo must be taken to accept that use of the Vivo mark in a normal and fair manner on audio-visual equipment would not of itself give rise to any tangible risk of confusion except in circumstances where sales staff and customers also used the mark orally, which was something that the primary judge found (at para [176]) occurred in a significant number of cases. 145 There may be situations in which a mark may be found to be deceptively similar to another mark even though the differences between them would be readily apparent to the consumer: see, for example, the trade marks in issue in In the Matter of John Fitton & Co Limited's Application (1949) 66 RPC 110 (JESTS and EASYJESTS) (UK Reg.); Tonka Corporation v Chong (1994) 29 IPR 253 (MONOPOLY and MUSICOPOLY) (Reg.); Telstra Corporation Ltd v Yellownet Corporation (1999) 44 IPR 415 (YELLOW PAGES and YELLOWNET) (Reg.); and Caterpillar Inc v Amco (Vic) Pty Ltd (2000) 49 IPR 407 (CAT and LANDCAT) (Reg.). 146 In Polo Textile Industries Pty Ltd v Domestic Textile Corporation Pty Limited (1993) 42 FCR 227 (POLO and POLO CLUB) Burchett J held (at 230) that POLO CLUB was deceptively similar to POLO because (inter alia) "someone who knew of a 'Polo' product, upon seeing a similar product selling under the name 'Polo Club' would be quite likely to think it was a particular version of the product which could be described as the Club version." Similarly, in Pfizer Products Inv v Karam (2006) 237 ALR 787 (VIAGRA and HERBAGRA) Gyles J held that the mark HERBAGRA was deceptively similar to the mark VIAGRA because a substantial number of members of the public would think products bearing the former mark were a "herbal version" of VIAGRA: see para [38] of Gyles J's reasons. 147 While I can readily understand why consumers might think there is an association between products marked POLO and those marked POLO CLUB, or products marked HERBAGRA and those marked VIAGRA, it is much more difficult to see why a consumer would understand there to be such an association between the two marks in issue in the present case. 148 The primary judge appreciated that the confusion described in Mr Simons' evidence was "not plausibly explicable as a result of mishearing" (at para [182]). Even so, her Honour's decision on the issue of deceptive similarity was not based upon contextual confusion of the type to which I have referred, but phonetic similarity and the impact of careless pronunciation and imperfect recollection. As the primary judge said (at para [179]): In my opinion, allowing for imperfect recollection, careless pronunciation, the range of goods (and services) covered by the registrations, and the context and circumstances of promotion, advertising and sale, the visual differences between the marks are not sufficiently compelling to overcome the impact of the strong aural similarity in the purchasing environment. 149 In oral submissions Senior Counsel for TiVo argued that manufacturers sometimes use more than one trade mark. In the course of explaining why Mr Simons' evidence should not be regarded as inherently improbable Senior Counsel then said: They might use multiple related trademarks. They might be regarded as so close that they have to come from the same source. It's not inherently improbable. 150 In my opinion, the present case is quite unlike the "contextual confusion" cases to which I have referred. Where marks have been refused registration on account of "contextual confusion" in the past, the mark in question has usually incorporated the whole of a registered mark or some distinctive component of the registered mark which has been coupled with some additional descriptive element, all of which will suggest that the marks are related in some way, even though they are perceived to be different. I do not think a person who was mindful of the difference between the marks in issue in this case would think, or wonder whether, the marks (and therefore the goods to which they are applied) were related. 151 Mr Simons' evidence suggests to me that there was some other factor at work that may explain why the Dick Smith staff with whom he spoke may have thought that the TiVo and Vivo products were from the same source. In the absence of evidence from the sales staff concerned or other evidence that might explain why they thought as they did, I am not persuaded that Mr Simons' evidence should be given any significant weight.

WAS THE VIVO TRADE MARK DECEPTIVELY SIMILAR TO THE TIVO TRADE MARK? 152 The question whether the application for registration of the Vivo trade mark should have been rejected in accordance with the requirements of s 44(1) of the Act raises a number of considerations. 153 As previously explained, the question must be addressed on the footing that the primary judge's finding of deceptive similarity was based upon phonetic similarity and that her Honour's rejection of TiVo's case based upon visual similarity was not challenged on appeal. This creates an element of complexity in what some might otherwise regard as a relatively straightforward case. The way in which the appeal has been conducted has prevented me from concluding that the Vivo trade mark is deceptively similar to the TiVo trade mark based upon a visual comparison of the marks. 154 The Vivo trade mark is a composite word and device mark. The word "Vivo" is the dominant element of the mark. I doubt that the device that forms part of the mark would make any lasting impression on the mind of most consumers. Consumers who wish to refer to Vivo products in written or oral communications will almost certainly do so using only the word component of the mark. 155 The present case is unlike those involving goods usually sold over the telephone or from behind a counter where there is often a heightened risk of confusion stemming from aural similarity. Nevertheless, the primary judge's finding (at para [176]) that in a significant number of cases both TiVo products and Vivo products would be identified, requested or ordered orally is of considerable importance in this case. 156 In my view, the risk of confusion is most apparent if it is assumed that TiVo applies its mark not only to DVRs but also to televisions and other goods covered by the TiVo trade mark registration, which may or may not be expensive when compared to the Vivo branded products, and which may or may not be sold in the same retail outlets. 157 There is another matter I consider particularly relevant in this case. The word "TiVo" is an invented word without any ordinary meaning. The word "Vivo" may have an ordinary meaning, but it is not a meaning that would be likely to enter most consumers' minds when shopping for audio-visual products. I think most consumers would regard Vivo as an invented word. In those circumstances, it cannot be said that either word conveys any distinctive meaning or impression of its own that might diminish the effects of imperfect recollection. 158 In my opinion there was, as at 18 February 2008, a real danger that consumers who might know of the TiVo trade mark because they had seen products to which it had been applied, or because they had seen or heard advertising which made reference to it, would confuse it with the Vivo trade mark in the course of spoken communications with sales staff engaged in selling audio-visual products. 159 My decision on the s 44(1) point turns not on any risk that the two marks might be confused as being related, but on the basis that they exhibit a strong phonetic similarity, and that consumers of ordinary memory and intelligence who had an imperfect recollection of one or other of the marks might not appreciate that the brand name referred to in the course of discussions taking place prior to sale was different to that which the consumer had previously seen or heard. 160 Accordingly, I am satisfied that the primary judge was correct to order the cancellation of the Vivo trade mark given the combined effect of s 88(1)(a), s 88(2)(a) and s 44(1) of the Act because, in my opinion, the Vivo trade mark was deceptively similar to the TiVo trade mark as at 18 February 2008.

Section 88(2)(c) 161 It follows that TiVo was also entitled to an order for the cancellation of the Vivo trade mark pursuant to s 88(1)(a) of the Act upon the grounds provided for s 88(2)(c). There was nothing about the circumstances existing at the time TiVo filed its application for rectification of the Register to suggest that the risk of confusion at that date was materially different (ie. reduced) when compared to the risk of confusion at the time Vivo applied for registration of the Vivo trade mark.

Section 60 162 The appeal against the primary judge's findings concerning s 60 of the Act raises for consideration a large volume of evidence to which we were not taken during the hearing of the appeal and which was not reproduced fully in the appeal books. In view of my conclusions in relation to ss 44(1), 88(2)(a) and 88(2)(c) of the Act, it is not necessary for me to consider the application of s 60 of the Act to the circumstances of this case.

SECTION 120 163 It was not in issue on appeal that the products sold by Vivo by reference to the Vivo trade mark included goods the same as those covered by TiVo's trade mark registration (televisions, computer monitors, digital set top boxes) and other goods which are of the same description (portable DVD players and digital photo frames): see s 120(1) and s 120(2)(a) of the Act. 164 With the cancellation of the Vivo trade mark, Vivo loses the benefit of the defence that it has enjoyed under s 122(1)(e) of the Act. The primary judge therefore granted TiVo what is, in substance, a quia timet injunction restraining Vivo from infringing the TiVo trade mark. On appeal, it was not suggested that there was any discretionary reason why such an injunction should not have been granted. 165 In my opinion it was appropriate to grant such an injunction in the circumstances of this case. Once it is concluded that the Vivo trade mark is deceptively similar to the TiVo trade mark, it follows, subject only to the cancellation of the Vivo trade mark, that it would be an infringement of the TiVo trade mark for Vivo to use the Vivo trade mark in relation to its own products without the permission of TiVo. 166 I therefore agree that the appeal should be dismissed with costs. I certify that the preceding sixty-two (62) numbered paragraphs are a true copy of the Reasons for Judgment herein of the Honourable Justice Nicholas.

Registrar of Trade Marks v Woolworths Ltd (1999) 93 FCR 365 applied Shell Co of Australia v Esso Standard Oil (Aust) Ltd (1963) 109 CLR 407 cited Southern Cross Refrigerating Co v Toowoomba Foundry Pty Ltd (1954) 91 CLR 592 cited Telstra Corporation Ltd v Yellownet Corporation (1999) 44 IPR 415 cited TiVo Inc v Vivo International Corporation Pty Ltd [2012] FCA 252 referred to Tonka Corporation v Chong (1994) 29 IPR 253 cited University of Wollongong v Metwally (No 2) (1985) 60 ALR 68 cited Wingate Marketing Pty Ltd v Levi Strauss & Co (1994) 49 FCR 89 cited

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