Vivo International Corporation Pty Ltd v Tivo Inc [2012] FCAFC 159

Vivo International Corporation Pty Ltd v Tivo Inc [2012] FCAFC 159

The Full Court held that the primary judge was correct to order cancellation of the Vivo trade mark under s 88(1)(a) and s 88(2)(a) of the Trade Marks Act 1995 (Cth) because Vivo's mark was deceptively similar to TiVo's mark as at the priority date. Despite differences in the initial consonant and device element, the strong phonetic similarity and market context (audio-visual products, retail environment with oral referencing) created a real danger of confusion, accounting for imperfect recollection. Evidence of confusion among sales staff supported this judgment. The appeal was dismissed; injunction relief and cancellation orders affirmed.

Parties
First Appellant: Vivo International Corporation Pty Ltd; Second Appellant: Fabio Michael Grassia; First Respondent: Tivo Inc; Second Respondent: Tivo Brands LLC
Jurisdiction
Australia
Judgment Date
14 November 2012
Procedural Posture
Appeal / Federal Court of Australia, Full Court, Appeal From Federal Court
Outcome
Appeal dismissed
Legal Topics
Trade Marks, Deceptive Similarity, Rectification of Trade Marks Register, Infringement, Honest Concurrent Use
Intellectual Property Trade Marks Deceptive Similarity Rectification of Trade Marks Register Infringement Honest Concurrent Use

Case Brief

Summary, issues, holding and outcome

More case intelligence is available

Unlock the full research layer for this judgment.

Full judgment text Downloadable case file Legal principles 7 Authorities cited 36 Party arguments 2 Amounts and remedies 9
Sign in to unlock

Parties

Vivo International Corporation Pty Ltd

First Appellant

Fabio Michael Grassia

Second Appellant

Tivo Inc

First Respondent

Tivo Brands LLC

Second Respondent

Procedural Posture

Appeal / Federal Court of Australia, Full Court, Appeal From Federal Court

Legal Issues

  1. 1 Whether the Vivo trade mark is deceptively similar to the TiVo trade mark as at the priority date and at the date of application for rectification
  2. 2 Whether visual and aural similarities or differences affect deceptive similarity
  3. 3 Significance of imperfect recollection and context of retail audio-visual product sales

Ratio Decidendi

The Full Court held that the primary judge was correct to order cancellation of the Vivo trade mark under s 88(1)(a) and s 88(2)(a) of the Trade Marks Act 1995 (Cth) because Vivo's mark was deceptively similar to TiVo's mark as at the priority date. Despite differences in the initial consonant and device element, the strong phonetic similarity and market context (audio-visual products, retail environment with oral referencing) created a real danger of confusion, accounting for imperfect recollection. Evidence of confusion among sales staff supported this judgment. The appeal was dismissed; injunction relief and cancellation orders affirmed.

Court Disposition

Appeal dismissed

Orders

  • The appeal be dismissed.
  • Appellants pay respondents' costs of the appeal to be taxed unless earlier agreed.