Vivo International Corporation Pty Ltd & Anor v TiVo Inc. & Anor  FCAFC 159.
On 14 November 2012, the Full Federal Court unanimously dismissed Vivo’s appeal from a finding by Justice Dodds-Streeton that its VIVO mark was deceptively similar to TiVo’s TIVO mark.1 In a split decision, Chief Justice Keane and Justices Nicholas and Dowsett found that, on an aural comparison, the VIVO mark was phonetically similar to the TIVO mark notwithstanding the different first consonants, such that it might be confused with TIVO. The Court therefore upheld the trial Judge’s decision to revoke the VIVO registration and her Honour’s finding that use of the VIVO mark would infringe the prior TIVO registration.
The trial decision: TIVO v VIVO
At trial, the primary Judge found that VIVO was deceptively similar to TIVO, taking into account:
- the aural similarity between the marks, despite the lack of visual similarity. In this regard, the trial Judge relied on evidence from retailers that, in 80% of the cases, customers would purchase televisions and DVRs (goods covered by both the TIVO and VIVO registrations) by reference to the marks aurally;
- her finding that Vivo’s managing director, Mr Fabio Grassia, dishonestly adopted the VIVO mark with a view to seeking to trade off TiVo’s reputation in the TIVO mark; and
- evidence of actual confusion of retail sales staff.2
Issues on appeal
The Full Court was asked by Vivo to consider whether the trial Judge erred in finding that the two marks were deceptively similar:
- by comparing only the aural similarity between the –IVO components of the two marks and not the marks as a whole, and by not considering the evidence of a phonetician on this issue;
- as a result of her Honour’s finding of actual dishonesty on the part of Mr Grassia in his adoption of the VIVO mark, when TiVo did not rely on Mr Grassia’s evidence to establish positive dishonesty; and
- by giving weight to the uncontested evidence of confusion of retailers, when (in Vivo’s submission) that evidence was unreliable and contradicted more reliable evidence.
Full Court’s decision
In two separate judgments, the Full Court concluded that the VIVO mark was deceptively similar to the TIVO mark on a fresh analysis of that issue.
All three Judges were of the view that the trial Judge had erred in concluding that Mr Grassia had dishonestly adopted the VIVO mark and, consequently, had erred in applying a well-settled presumption that if a mark is adopted for the purpose of appropriating part of the trade or reputation of a rival, that it is presumed to be likely to mislead or deceive consumers and therefore to be deceptively similar. Having found the trial Judge to be in error, the Court then considered the question of deceptive similarity afresh.
In the Chief Justice's view, the uncontested evidence of actual confusion (which his Honour accepted was honestly given) was of great weight, which led him to infer that if retailers are confused, there is a reasonable probability that consumers will be confused. His Honour rejected Vivo’s submission that the trial Judge improperly compared only the marks aurally and ignored the evidence of the phonetician, referring to numerous passages where her Honour had considered that evidence and concluded that, while it established the marks were phonetically different, nevertheless similar sounds characterised their pronunciation.
Justice Nicholas (with whom Justice Dowsett agreed) concluded the phonetician's evidence was important evidence on the question of aural similarity, but found that it failed to take into account the effects of imperfect recollection of the marks on consumers. His Honour disregarded the uncontested evidence of actual confusion as “improbable”, concluding that it was unlikely that sales staff would believe that goods branded with the two marks were from the same source. Even absent that evidence, his Honour still concluded that the two marks "exhibit[ed] a strong phonetic similarity such that consumers of ordinary intelligence who had an imperfect recollection of one or other of the marks might not appreciate that the brand name referred to in the course of discussions taking place prior to sale was different to that which the consumer had previously seen or heard".