Tivo succeeds in trade mark infringement matter

The TIVO trade mark was registered from 10 November 1999, but not used in Australia for digital video recorder (DVR) products until late July 2008. In the meantime, the Vivo trade mark was registered from 18 February 2008 and used from June 2007 for televisions as well as DVD players, computer monitors, digital photo frames, digital set top boxes, home theatre systems and remote controls. The total sales value of these products up until the end of June 2011 was over AU$87 million with about 90% of sales being televisions priced at the lower end of the market. From around 2008, the TiVo and Vivo products were both offered for sale in Dick Smith retail stores.

Details of the respective TIVO and Vivo trade mark registrations are as follows:

Registration No. 813297


Class 9
Computer hardware and software including computer hardware, software and peripherals for personalized, interactive television programming; televisions; television peripheral remote controls; communication devices, including, transmitters, receivers and controls, and software for use therewith; and accompanying manuals sold as a unit

Class 35
The promotion and sale of goods and services for others Class: 38 Subscription television services; transmission of cable television and interactive audio and video services; personalized and interactive television transmission services

Class 41
Entertainment services, namely, personlized and interactive entertainment services; online guide to personalized and interactive television programming.

Registration No. 1223930


Class 9
Apparatus for use in audio-visual communication Class: 38 Transmission of data by audio-visual apparatus

Class 38
Transmission of data by audio-visual apparatus

A single judge of the Federal Court, Dodds-Streeton J, previously held that the Vivo trade mark was wrongly registered and ordered it to be removed from the Register. Her Honour found that the TiVo trade mark had acquired an Australian reputation as a result of its exposure in print and other media published in Australia prior to 18 February 2008 and exercised discretion in deciding not to restrict the TIVO registration on the ground of non-use. Without the benefit of trade mark registration, it necessarily followed that use of the Vivo trade mark infringed the TIVO registration.

The issue on appeal essentially came down to whether, as at 18 February 2008, the Vivo trade mark was deceptively similar to the previously registered TIVO trade mark based on phonetic rather than visual similarity.
The full Federal Court unanimously held that the primary judge was in error by finding a likelihood of confusion and deceptive similarity based on the presumption of fact that the Vivo trade mark was adopted with the intention of taking advantage of the reputation attaching to the TiVo trade mark. As a result, the full Federal Court was entitled to form its own view on the deceptive similarity issue.
TiVo had previously led evidence of eight occurrences of confusion between the respective trade marks based on discussions with sales staff in Dick Smith retail stores. These occurred between October 2010 and July 2011.
Keane CJ considered the respective trade marks to be deceptively similar. According to his Honour, the evidence of actual confusion established that “those engaged in selling the kind of products in question do tend to confuse TiVo with Vivo as a matter of aural impression”. It was a reasonable inference to draw that “if sales staff are confused, there is a reasonable probability of confusion on the part of consumers”. His Honour went on to find that “the differences in visual appearance of the trade marks and prices of the goods might be discounted subliminally as a mere indication that the two brands belong to one family of which the TiVo product represents the luxury end of the range and the Vivo product the economy end of the range”. Accordingly, use of the Vivo trade mark should be restrained to prevent ongoing infringement.
Clearly, Keane CJ was influenced by the unchallenged evidence of confusion and the circumstances surrounding the actual use of the respective trade marks. While this is appropriate for an analysis of infringement, it does not fully address the question as to whether the Vivo trade mark was properly registered as at 18 February 2008.
Dowsett J agreed with the reasons of Nicholas J who correctly identified the issue on appeal as “whether the Vivo trade mark was deceptively similar to the TiVo trade mark as at 18 February 2008” and what is likely to happen if each of the trade marks is used in a normal and fair manner.
Nicholas J considered TiVo’s account of conversations with sales staff at the Dick Smith retail stores was not “evidence of confusion occurring as a result of differences in pronunciation, slurring, mishearing or imperfect recollection”. Indeed his Honour expressed “difficultly 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”. His Honour expressed the view that the evidence suggests that “there was some other factor at work” and was not persuaded that such confusion evidence should be given any significant weight.
Nicholas J went on to form his own view that the Vivo trade mark was deceptively similar to the previously registered TIVO trade mark. His Honour considered the primary judge’s finding that “in a significant number of cases both TiVo products and Vivo products would be identified, requested or ordered orally is of considerable importance”. It was also particularly relevant that both trade marks were likely to be regarded as invented words and neither of them “conveys any distinctive meaning or impression of its own that might diminish the effects of imperfect recollection”. The risk of confusion needs to be assessed having regard to all goods and services covered by the respective trade mark registrations which may or may not have a price difference and which may or may not be sold in the same retail outlets. Nicholas J did not consider the two marks might be confused as being related. Rather, the confusion arises because they exhibit a strong phonetic similarity.
Accordingly, Nicholas J found the primary judge was correct in ordering removal of the Vivo trade mark from the Register and it was appropriate to grant an injunction restraining ongoing infringement.