03 May 2010

Delegate Compares LIDL to LITL

Re: Opposition by Lidl Stiftung & Co KG to registration of trade mark application 1200990(9) (International Registration Designating Australia No 934438) - LITL - filed in the name of Aquent LLC.

Request to adjourn hearing refused; Section 44 - Trade marks deceptively similar to opponent's LIDL trade marks - Protection refused.

Lidl filed a notice of opposition to the registration of the trade mark LITL in respect of Class 9: Computers; mobile computers; notebook computers; laptop computers.


Request for Adjounment

Aquent filed applications for the removal of a number of Lidl's trade marks including those cited against it in this opposition proceeding. The applications were based on alleged non-use of those marks. They were filed a day before the hearing in this matter. Aquent asked that the hearing be adjourned because of the removal applications. Aquent alleged that it would be a "grave injustice" if protection was refused on the basis of trade marks that were later removed. But Lidl contended that Aquent was not supported by E&J Gallo Winery v Lion Nathan Australia Pty Ltd [2009] FCAFC 27. That established that removal actions take effect as at the date of the order. Thus Lidl's trade marks were and remained in effect. The Delegate said that suspending such rights for an uncertain amount of time to await an uncertain result would create an injustice - Cadbury UK Ltd v Registrar of Trade Marks [2008] FCA 1126.

The Delegate could not "help but conclude" that there was a tactical aspect to the timing of the removal actions. The filing of the removal applications the day before the hearing bore the hallmarks of an ambush.

The Delegate decided not to exercise the discretion to adjourn.

Section 44 Grounds

The ground used was that an application for the registration of a trade mark must be rejected if the applicant's trade mark is deceptively similar to the trade mark in respect of which registration is being sought in respect of similar goods or closely related services. According to the Act, "a trade mark is taken to be deceptively similar to another trade mark if it so nearly resembles that other trade mark that it is likely to deceive or cause confusion".

The cited trade marks were LIDL and stylized versions of LIDL. So the comparison was between LITL and LIDL.

The Delegate said that in the Australian marketplace, there is a high likelihood that LIDL would be pronounced the same as LITL. A side by side comparison of the marks might highlight the difference between the "T" and the "D" but that is not the test for deceptive similarity. The test is set out in Shell Co of Australia Limited v Esso Standard Oil (Australia) Limited (1963) 109 CLR 407 and relates to the imperfect recollection of persons of ordinary intelligence and memory.

Lidl submitted that neither LIDL not LITL were accepted words that appeared in a dictionary. An Australian consumer would need to approach pronunciation by reference to a known word that is similar to LIDL. This is likely to be "lid". Similarly, the same exercise can be conducted on LITL, resulting in "lit". The Delegate supported this approach.

The section 44 ground was established.

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