Madderns currently assists BYD in defending a Federal Court appeal. The appeal challenged a prior IP Australia's decision (Moving Life Pty Ltd v BYD Company Limited [2024] ATMO 148) that decided foldable mobility scooters and cars are not considered the "same kind of thing" under Australian trademark law.
The dispute arose when Moving Life opposed the registration of BYD's "ATTO" trademark in relation to cars. Moving Life claimed prior use of the "ATTO" mark in Australia for foldable mobility scooters, predating BYD's first use of the mark for their electric SUV.
To succeed in its opposition under s58 of the Trade Marks Act 1995 (Cth) arguing that BYD was not the rightful owner of the trademark, Moving Life needed to demonstrate two key elements. Firstly, they had to prove use in Australia, by Moving Life, of a trademark identical or substantially identical to "ATTO" before BYD. Secondly, this use had to be in relation to goods that are the "same kind of thing" as cars.
There is no dispute that ATTO applied by BYD is the same as the ATTO used by Moving Life. The central question before the Hearing Officer was whether foldable mobility scooters and cars constitute the "same kind of thing."
The Hearing Officer referred to the decision of Colorado Group Ltd v Strandbags Group Pty Ltd for guidance, where Allsop J articulated the principle that the inquiry should focus on identifying the "true equivalent kind of thing or article" in a practical, common-sense manner. This approach differs from considering broad functional or aesthetic similarities and avoids considerations of potential confusion in the marketplace. As Allsop J illustrated, the use of a mark on "hatchets or small axes" establishes proprietorship in relation to "axes".
Moving Life argued that the definition of "car" includes microcars, which they contended are essentially quadricycles differing from standard cars only in regulatory aspects like power, weight, and top speed. Furthermore, they submitted that the function, features, servicing, maintenance, market, trade channels, audience, methods of promotion, and financing of microcars significantly overlap with mobility vehicles.
However, the Hearing Officer rejected this argument, concluding that the nature of a foldable mobility scooter is fundamentally different from that of a car, even a microcar. The Hearing Officer highlighted the following distinctions. For Foldable Mobility Scooter: A lightweight disability vehicle primarily used off-road by a single person, electrically powered, and designed to fold for portability. For Microcar (as a type of car): A vehicle used on road networks, featuring an enclosed body, capable of carrying multiple occupants, and generally wider than a mobility scooter, resembling a conventional car in its form factor.
While Moving Life presented evidence of a business offering both product types, the Hearing Officer noted that the mere co-existence of these products within a single business does not automatically classify them as the "same kind of thing".
The Hearing Officer further emphasized the distinct treatment of these vehicles in Australia: individuals using mobility scooters are considered pedestrians and typically purchase them from specialized mobility retailers. In contrast, microcars are sold through car dealerships, and their operation requires a driver's license. These are tangible utilitarian goods that do not offer the same mobility solutions, and one is not a substitute for the other.
Ultimately, the Hearing Officer determined that foldable mobility scooters and cars are not the "same kind of thing," leading to the failure of Moving Life's opposition under Section 58.
The Hearing Officer also dismissed other grounds of opposition raised by Moving Life, including: s60: Trademark similar to a trademark with an established reputation in Australia; s42(b): Trademark scandalous or its use contrary to law (alleging contravention of Sections 18 and 29 of the Australian Consumer Law and passing off); s62A: Application made in bad faith.
This case underscores the importance of a practical, common-sense assessment when determining whether goods are of the "same kind" for trademark opposition purposes.
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