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

FEDERAL COURT OF AUSTRALIA

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

Appeal from: Tivo Inc v Vivo International Corporation Pty Ltd [2012] FCA 252

Parties: VIVO INTERNATIONAL CORPORATION PTY LTD (ACN 087 480 171) and FABIO MICHAEL GRASSIA v TIVO INC and TIVO BRANDS LLC

File number: VID 293 of 2012

Judges: KEANE CJ, DOWSETT & NICHOLAS JJ

Date of judgment: 14 November 2012

Catchwords: TRADE MARKS – whether trade mark deceptively similar to registered trade mark as at priority date – whether trade mark deceptively similar to registered trade mark as at date of application for rectification of Register – whether trade mark deceptively similar to registered trade mark by reason of reputation in Australia acquired by registered trade mark before priority date – where primary judge found trade mark not deceptively similar to registered trade mark based on visual similarity – where primary judge's finding not challenged on appeal – where primary judge found trade mark deceptively similar to registered trade mark based upon phonetic similarity – significance of imperfect recollection – whether trade mark deceptively similar to registered trade mark by reason of phonetic similarity – whether tangible risk that trade marks will be confused by consumer by reason of phonetic similarity – whether tangible risk that trade marks will be confused as related or associated trade marks – significance of evidence of actual confusion – significance of failure to cross-examine APPEAL AND NEW TRIAL – where primary judge reached conclusion of deceptive similarity based in part on intention of the appellants to take advantage of the reputation in registered trade mark – where respondents disclaimed any reliance upon intention on the issue of deceptive similarity at trial – need for the Full Court to consider question of deceptive similarity afresh