TiVo successful in Australian trade mark dispute: “Vivo” held to be deceptively similar

TiVo successful in Australian trade mark dispute: “Vivo” held to be deceptively similar

TiVo successful in Australian trade mark dispute: “Vivo” held to be deceptively similar

TiVo Inc v Vivo International Corporation Pty Ltd [2012] FCA 252

In a decision that canvasses and helpfully clarifies many important aspects of Australian trade mark law – from deceptive similarity, reputation and honest concurrent use to infringement and removal for non-use – Justice Dodds-Streeton of the Federal Court of Australia has concluded that the Vivo trade mark used by a manufacturer on televisions and other audio visual products was likely to deceive or cause confusion as a result of the prior trade mark registration of well known personal video recorder manufacturer, TiVo, and should therefore be cancelled.

Davies Collison Cave Law acted for TiVo in the proceeding.

The TiVo and Vivo trade marks

In 1999, TiVo filed a trade mark application for the word mark Tivo in respect of computer hardware and software, televisions, and other related products and services.

An application to register the Vivo device (depicted below) as a trade mark in respect of “apparatus for use in audio visual communication” and the service of “transmission of data by audio-visual apparatus” was filed by the second Respondent, Fabio Grassia on behalf of his company, Vivo International Corporation in 2008. The application was made after Mr Grassia decided to import and sell audio visual products under the name “Vivo” in 2006.

vivo logo trade mark davies collison cave

The proceedings

In January 2011, TiVo commenced action against Vivo seeking an injunction restraining Vivo from infringing the TiVo trade mark.

As, at the time of TiVo’s application, the Vivo mark was registered in Australia, in order to be entitled to injunctive relief, TiVo first had to show that the Vivo mark should be cancelled.

Accordingly, TiVo argued that the Vivo mark should be cancelled because:

  1. it was deceptively similar to the TiVo mark (sections 44(1) and 44 (2), 88 (2) (a) and 88 (2) (c) of the Trade Marks Act), and neither honest concurrent use (section 44 (3) (a)) nor other circumstances warranting the maintenance of the mark on the register could be established (section 44 (3) (b)); or
  2. TiVo’s reputation was such that the use of the Vivo mark would be likely to deceive or cause confusion (sections 60 and 88 (2) (a) of the Trade Marks Act)

In addition to dealing with these questions, the Court was also required to determine whether:

  1. TiVo’s trade mark should be removed for non-use in respect of televisions (section 92 (3) of the Trade Marks Act); and
  2. Vivo and / or Mr Grassia would infringe the TiVo trade mark by selling televisions, set top boxes and other audio visual equipment bearing the mark “Vivo” if the Vivo trade mark was removed from the Register of Trade Marks.

1. Should the Vivo mark be cancelled because it is deceptively similar to the TiVo mark?

The Vivo mark would be cancelled if:

  • there was a real likelihood that a significant number of ordinary persons would be caused to wonder or to entertain a reasonable doubt as to whether TiVo and Vivo products and services came from the same source (the issue of deceptive similarity); and
  • the Vivo mark was registered in respect of similar goods or closely related services as that of the TiVo mark.

The issue of deceptive similarity

The Court identified the following legal principles applicable to this issue:

  • all surrounding circumstances must be taken into account, including the fact that people often do not read words carefully and do not pronounce them distinctly, the nature of the goods in question, how the products would be purchased and used in trade and the imperfect recollection of consumers;
  • the “legitimate notional scope of the registration”1 should be considered. Matters such as quality and price differentials between the competing trade mark owners’ goods or services are largely irrelevant to the question of deceptive similarity;
  • The Court must consider the “first impression of a consumer who has an imperfect recollection of only one mark and who does not know of the other”;2
  • marks may be deceptively similar even though the confusion is unlikely to persist up to the point of and induce the sale of the products bearing the marks.

The Court’s findings on the issue of deceptive similarity

Applying this approach, Justice Dodds-Streeton found that there was a likelihood of confusion as:

  • both marks included an essential, dominant and distinguishing –IVO component, which invited “attention to sound as well as sight”;3
  • there was marked aural similarity between the marks: TiVo would be pronounced “tee voh”, and Vivo, “vee voh”;
  • Vivo did not have any widely understood meaning which, as an “aide memoire”, would reduce the likelihood of confusion;
  • there was unchallenged evidence of actual confusion among persons selling the relevant products to consumers; and
  • the evidence indicated that Mr Grassia adopted the Vivo mark as a result of his awareness of TiVo and his intention to benefit from the reputation of the TiVo mark. In this respect, Justice Dodds-Streeton explained:

whether the applicant adopted the trade mark in order to derive benefit from the reputation of the cited mark is relevant to whether the applicant’s trade mark is deceptively similar, because such motivation is like “expert evidence” of that tendency….4

Was the Vivo mark registered in respect of similar goods to the TiVo mark?

The Court considered that the goods in respect of which the Vivo mark was registered (audio-visual products) were similar to the goods in respect of which the TiVo mark was registered (which could be generally described as computer hardware or software) as the products:

  • are of a similar nature, manufacturing, origin and purpose;
  • are sold in close proximity to each other in the same type of retail stores; and
  • all fall within the “audio-visual” product category and are known as “brown goods”.

The finding was supported by product convergence within the audio-visual product category.

On a similar basis, the Court found that the services in respect of which the Vivo mark was registered were also similar to the services, or closely related to the goods in respect of which the TiVo mark was registered.

Honest concurrent use and the court’s discretion

Despite finding that the Vivo mark was deceptively similar to the TiVo mark, and that they were registered in respect of similar goods, the Court noted that it could permit the Vivo mark to remain on the register if the Respondents could establish “honest concurrent use” or “other circumstances” warranting the maintenance of the mark on the register.

In support of his case of honest concurrent use, Mr Grassia vehemently maintained that when he decided on the name Vivo in around May 2006, he had not heard of the TiVo brand name or its products.

Justice Dodds-Streeton did not accept this evidence, finding that the Respondents failed to establish honest concurrent use of the Vivo trade mark as:

  • Mr Grassia’s various accounts of the selection of the name “Vivo” were “remarkably inconsistent”;5
  • the list of possible names for Mr Grassia’s company included the name “Vivolution”. TiVo had marketed its products with reference to the word “TiVolution” and had previously filed a trade mark application for that mark. Mr Grassia did not adequately explain the presence of this word in his list of possible brand names which he filed as evidence.
  • Mr Grassia’s website contained the phrase “vivo the revolution” at around the same time that advertisements for “TiVo the revolution” were published or broadcast; and
  • it was implausible that Mr Grassia had not heard of TiVo in circumstances where he had dealt with audio visual products for over 20 years, and prior to the filing of the Vivo trade mark in 2008, hundreds of references to TiVo were made in Australian print media, on television and in movies.

The Court also found that there were no “other circumstances” that warranted it exercising its discretion to allow the Vivo trade mark to remain on the Trade Marks Register.

2. Should the Vivo mark be removed because the reputation of the TiVo mark was such that the use of Vivo would cause confusion?

TiVo argued that the Vivo trade mark should be removed because the TiVo mark had acquired a reputation in Australia before the filing date of the application to register the Vivo mark and, because of its reputation, the use of the Vivo mark would be likely to deceive or cause confusion.

The Court acknowledged that this ground of opposition required a comparison between use of the Vivo mark on the one hand, and the TiVo mark’s reputation on the other.

Reputation – Legal Principles

  • The nature and extent of the reputation required in the context of an opposition under section 60 is unclear.
  • The Full Court in Austin Nichols recently described reputation as “recognition of the mark by the public generally”.
  • In obiter, Justice Dodds-Streeton helpfully provided the following guidance:6

I observe…that the requirement under s 60 that the reputation be such as to cause a likelihood of deception or confusion appears implicitly, at least, to require its existence amongst members of the public sufficient, or with characteristics apt to achieve that effect in a particular case. If, for example, the mark’s reputation is confined to a narrow group of sophisticated users…but the class of consumers of the relevant goods is wide, it may be difficult to show a likelihood that the reputation is such that the use of the opposed mark will cause confusion, either because only a minimal number of persons might be confused, or because the character of the group is such that confusion is, in any event, unlikely. On the other hand, if the trade mark in question were used in relation to goods or services commonly consumed only by specialised groups, it would be inappropriate to require a reputation amongst a substantial number of members of the Australian public generally.

  • Reputation may be established in a number of different ways, most commonly, by evidence of sales of products bearing the mark and direct advertising featuring the mark.
  • However, it may also be established through indirect advertising, and exposure of the mark in radio, film, newspapers, magazines and television.
  • Evidence of a brand’s reputation outside Australia will only be relevant if it is demonstrated that the overseas reputation is recognised in Australia.

TiVo’s reputation

To establish its mark’s reputation in Australia prior to the filing date of the Vivo trade mark application, TiVo relied upon:

  • references to TiVo in widely circulated newspapers and magazines together with evidence showing the sales of each relevant publication (this evidence showed that close to 86 million copies of newspapers and magazines featuring at least one reference to TiVo were sold prior to the filing of the Vivo trade mark application);
  • references to TiVo in popular television shows and movies, including viewership details from OzTAM (the official source of Australian television ratings);
  • reference to TiVo in Australian online technology news websites and communities; and
  • use of the TiVo products by Australian “TiVo enthusiasts”.

Based upon this evidence, Her Honour concluded that the TiVo mark had the level of reputation required for the purposes of section 60, concluding that:

the cumulative circulation of references, descriptions and expositions of TiVo in the various media increasingly over the course of the last decade amounted to a total exposure on an enormous scale.7

For the reasons discussed in part 1, Her Honour found that the nature of the TiVo mark’s reputation was such that it was likely that the use of the Vivo trade mark in respect of its registered goods was likely to deceive or cause confusion.

3. Removal of the TiVo mark in respect of TVs for non-use

TiVo conceded that it had not used its mark in respect of TVs for the relevant three year period prescribed by section 92(4)(b) of the Trade Marks Act, and asked the court to exercise its discretion under section 101(3) to not excise televisions from its trade mark registration.

Justice Dodds-Streeton was prepared to exercise her discretion because:

  • TiVo had used its mark in respect of goods which are similar to TVs (such as DVRs and remotes) and services which are closely related to TVs (such as television electronic programming guides);
  • public confusion was likely to ensue if the mark was removed in respect of televisions, and an unrelated company commenced selling a “TiVo” branded TV. Her Honour explained:

whilst TiVo has not used the TiVo trade mark for the requisite period, the excision of televisions from TiVo’s registration would, particularly in the context of converging functionality, create a potential for fragmented ownership of deceptively similar goods, with a concomitant likelihood of confusion.8

  • TiVo had not abandoned the mark in respect of TVs – as of 31 July 2011, TiVo started to sell a TV integrating the TiVo interface in the USA, and planned to bring the TV to Australia in the future; and
  • Vivo entered the market without taking sufficient steps to ascertain whether anyone else was using a deceptively similar mark.

4. Infringement of the TiVo mark

Justice Dodds-Streeton found that it flowed from her findings in relation to deceptive similarity and confusion referred to above that once the Vivo mark was removed, use of the name Vivo in respect of televisions, home theatre systems, computer monitors, digital photo frames, portable DVD players, remote controls and set top boxes would infringe the TiVo trade mark.

Lessons for brand owners

  1. Always check the Trade Marks Register for prior registered marks and conduct broad searches before developing a new brand name, logo, slogan or other mark.
  2. The aural similarity of two trade marks can play a key role in an assessment of deceptive similarity.
  3. In assessing the aural similarity of two words, it must be kept in mind that consumers have an imperfect recollection, and do not always pronounce words precisely.
  4. Product convergence (especially in the audio-visual product category) must be considered in assessing whether goods are similar for the purposes of the Trade Marks Act.
  5. The fact that a person has chosen a mark to trade off the reputation of another mark might suggest that the marks in question are deceptively similar.
  6. A trade mark’s reputation may be legitimately proven in a number of ways, including by adducing evidence of indirect references to the trade mark in print media, on television and in movies.
  7. A court will be reluctant to remove a trade mark for non-use in respect of a particular good, if it can be shown that the mark has been used in relation to closely related goods, such that the removal would be likely to cause confusion.

On 5 April 2012, Vivo filed appeal papers.

Endnotes

  1. Vivo v Tivo at [107]
  2. Tivo v Vivo at [178]
  3. Tivo v Vivo at [118]
  4. Tivo v Vivo at [242]
  5. Tivo v Vivo at [252]
  6. Tivo v Vivo at [324]
  7. Tivo v Vivo at [440]
  8. Tivo v Vivo at [498]