Volvo opposed the extension of protection to Australia of the trade mark REVOLVO covering goods and services in Classes 7, 12, and 42, including items for use in relation to land vehicles. To support its opposition, the opponent led evidence of its registration, use and reputation in various trade mark containing or consisting of VOLVO.
The Hearing Officer first considered the prior VOLVO registrations and whether these were deceptively similar to the applied for REVOLVO trade mark. Having been satisfied that the goods under the REVOLVO trade mark were similar (or closely related) to the goods of the registered VOLVO marks, the Hearing Officer was left to consider if there was a likelihood of consumer deception or confusion between the respective trade marks.
The Hearing Officer was not persuaded by the Opponent’s arguments that notional uses of the applications mark could give emphasis to the element “VOLVO” for example:
However, the Hearing Officer concluded that there was a likelihood of deception or confusion between the marks given that the ‘VOLVO’ element is ‘well-known’ and is contained within both trade marks which, coupled with the overall visual and aural similarity, results in a real tangible danger of confusion.
Finally, the applicant attempted to argue that in the event that the marks were considered to be deceptively similar, it had made sufficient honest concurrent use to qualify for registration. Whilst the applicant alleged use of its REVOLVO mark in Australia since at least 2000, this allegation was not supported by the evidence filed.
As honest concurrent use of the mark was not established, the application was refused.
To view the Office decision, click here.
This article is an extract from Spruson & Ferguson’s Asia-Pacific Regional Trade Mark Update. You can view the entire summary here.