On 14 November, the Full Court of the Federal Court confirmed that the ‘Vivo’ trade mark was deceptively similar to TiVo and so was likely to deceive or confuse, but for slightly different reasons than at trial.
In the red corner is TiVo, the answer for thousands of professionals who have despaired about missing, for example, Ellen DeGeneres’ midday ‘naughty audience dancing’ extravaganza, or the latest dramas between Bo and Hope on Days of Our Lives. Its flagship product is a ‘personal television service’, which allows users to record multiple television broadcasts by reference to genres or key words, and watch them at another time. The success of any good product can be judged against whether it has featured in an episode of Sex in the City, and sure enough, TiVo did, operating as a de facto boyfriend for Miranda until it unfortunately broke down. In Australia, the TiVo trade mark was registered in July 2000.
In the blue corner is Vivo, which began distributing Vivo-branded home entertainment products, including televisions and related products in Australia from July 2008. In April 2009, an application by Fabio Grassia to register the Vivo trade mark was approved. As was held by the Full Court, the goods in respect of which the Vivo mark was registered were similar to those in respect of which the TiVo mark was registered.
TiVo sought cancellation of the Vivo trade mark, principally on the basis that the Vivo trade mark was deceptively similar to the TiVo mark and likely to deceive or confuse consumers.
The Court accepted that the effect of spoken description must always be considered, particularly in circumstances where most consumers of electronic goods will first ask a salesperson about a category of goods or particular brands. Evidence, including from a phonetician, established that the different products would be identified by most consumers by reference to the sound of the marks.
Despite beginning with different consonants, the ‘-ee-Voh’ sound in each mark was considered a ‘significant’ similarity, comprising a substantial part of the aural ‘experience’ of each word. This similarity is compounded by the possibilities of careless pronunciation, imprecise articulation and cursory reading.
The visual differences between the marks were insufficient to overcome this similarity. Despite evidence that Tivo’s products constituted ‘high-involvement’ purchases, consumers may have discounted the visual differences as merely an indication that the marks represented the luxury and economy ends of the same range. Dishonest intent is established where a mark is intentionally adopted to take advantage of another’s name or reputation. Interestingly, the Full Court determined that Fabio Grassia’s dishonest intent could not form a basis for a finding of deceptive similarity (which it did at trial). The Full Court took the view that dishonest intent would be relevant only to the defence of honest concurrent use, which was not at issue on appeal.
Vivo argued that the likelihood of deception or confusion shouldn’t be assessed solely on the basis of the likely first impression of consumers as to the similar sounds of the marks. It led evidence that the products to which each mark applied were likely to be purchased only after careful consideration by consumers.
The Court discussed that to be ‘deceptively similar’ for the purposes of section 44(1) of the Trade Marks Act 1995 (Cth) there need only be ‘a real, tangible danger’ of deception or confusion occurring. ‘Confusion’ will occur where people are caused ‘to wonder whether … the products to which the marks are applied come from the same source’. An assessment of the likelihood of confusion requires consideration of the similarity of the products under each trade mark and the environments in which they are purchased.
The products were considered to be similar in ‘nature, manufacturing, origin and purpose’. Additionally, they were sold to consumers in similar retail environments (for example Dick Smith, JB Hi Fi) and were sold in similar product categories in close physical proximity at some retailers.
The Court also noted that allowance must be made for ‘imperfect recollection’ by people of ordinary memory and intelligence. As a word, ‘Vivo’ does not have a widely-understood or distinct meaning that could act as an aide memoire to reduce the effects of imperfect recollection.
Given the aural similarity between the marks, the potential for confusion was strengthened in marketplaces where a visual comparison of the two marks was not possible or where oral enquiries were a common first step. Evidence of actual confusion amongst sales staff, which could reasonably be thought to occur amongst consumers too, was given great weight. On one occasion, when a sales manager for TiVo introduced himself to a Dick Smith manager as being ‘from TiVo’, the manager replied ‘oh, you’re from Vivo?’.
So, what does the case tell us? First, that evidence of actual confusion will carry weight. Secondly, that evidence of intention to leverage off another brand will – theoretically at least – not be relevant when assessing likelihood of confusion (cf test for ‘honest’ concurrent use).
Finally, applying the Vivo test, we had a bit of fun thinking of marks which might not fly if you’re planning a new retail product range. Here’s what we came up with:
- ‘Belstra’ for telecommunications services;
- ‘Tadbury’ for chocolate products;
- ‘Moyota’ for automotive products;
- ‘Lupa’ for health insurance products;
- ‘Coolworths’ for grocery products.