In 2020 the Australian trade mark registrar delivered a decision involving German marque Volkswagen and a business named Tungpei Industrial Co, based in Taiwan.
The marks in dispute were “TSI”, applied for by the applicant, and “TSI” and “TDI” – plainly, similar enough to prima facie support an opposition.
However, in this instance, the mark underpinning the opposition was unusual. The hearing officer noted,
“What is apparent from the annexures is that the Opponent does not sell any automobiles specifically and solely identified by the TSI or TDI Marks, rather the Opponent’s Trade Marks are used on engine decals and marketing materials to refer to the type of engines that are part of the Opponent’s vehicles across its product range.… [and in respect of reputation] I note the limitations of that reputation, with the TSI and TDI being used almost exclusively to describe the type of engines manufactured by the Opponent and used in its vehicles (and not, on the evidence before me, sold separately from the Opponent’s vehicles).“
These are very particular sub-brands in that they are exclusively applied by Volkswagen to its engine types. “TDI” was in use since 1989 by the opponent in respect of a turbocharged direct engine, and in use in Australia since 2005. As to “TSI”, this had been in use in respect of twin charger engines since 2005, and in Australia since 2009. The hearing officer noted from the evidence some examples of how the marks are used by Volkswagen: “a print advertisement for the Opponent’s Tiguan product which is offered ‘with a choice of powerful TDI diesel or TSI petrol engines...’” which is illustrative of how the marks are used by Volkswagen.
The hearing officer decided that the applicant’s goods were similar enough to the opponent’s goods:
“The Applicant’s Goods are ball bearings and various goods related to ball bearings, such as bearings for vehicles. Ball bearings are specialised engineering products that are used for a wide variety of manufactured products to support various loads. A variety of manufactured products use ball bearings including electric motors and motor vehicles. The TSI Mark is registered for ‘vehicles and their parts, including automobiles and their parts’. This definition would include ball bearings. The TDI Mark is registered for goods including ‘machine coupling and transmission parts’. Again this definition would include ball bearings, being parts for motor vehicles and machine coupling. I find that the Opponent’s Trade Marks are registered for similar goods as those for which the Trade Mark is sought to be registered and hence the second requirement has been established.”
The hearing officer has insights on how three letter acronyms are used in the automotive sector in assessing whether or not the marks were deceptively similar:
“….the respective trade marks are all acronyms that are likely to be referred to as the letters T-S-I’ ‘T-D-I’ and ‘T-P-I’. There are a limited number of three-letter acronyms and consumers are accustomed to distinguishing between acronyms that differ by one letter, especially in circumstances, such as the current one, where the change in letter results in a difference in pronunciation. This is especially the case when considering the industry (machinery and automotive) that the parties operate in, which contains a significant number of companies or products commonly referred to by acronyms, such as VW, BMW and MX-5. Furthermore the Applicant’s Goods are goods purchased with some care and consideration; they are not goods purchased on impulse. I consider that, on balance, I am satisfied that the distinctions between the Trade Mark and the Opponent’s Trade Marks are sufficient that when considered as a whole in the context of the goods, even allowing for imperfect recollection, it is unlikely that the use of the Trade Mark will deceive or cause confusion among a substantial number of persons because of any similarity it has to the Opponent’s Trade Marks.“
Although the comment is confined to merely one line, there cannot be any denying the correctness hearing officer’s views on the likelihood of impulse purchases. Cars, and especially car engines (even if they were sold separately), are far removed from fast moving consumer goods and will not be purchased while in a hurry in a shopping aisle.
Predictably, Volkswagen failed in this opposition. If Volkswagen had been able to demonstrate stronger reputation in its engine sub-brands, it might have succeeded. But, in addition, the choice of sub-brand – a three letter acronym – did it no favours either.