TiVo wins another lawsuit, handing VIVO an Australian trademark ban on use of its “similar” name

Digital video recording device maker TiVo has continued its run of recent legal successes with an Australian Federal Court ruling granting the company worldwide recognition and upholding the exclusive rights of the TiVo trademark.

TiVo had brought a trademark lawsuit against VIVO International, an Australian television manufacturer, over the registration of its VIVO trademark. It was argued that VIVO was “deceptively similar” to its own mark and that it would be “likely to deceive or cause confusion,” because it was held by a company that was in the same market as TiVo.

Judge Dodds-Streeton agreed with TiVo’s assertion that it was a well-known brand and had established a strong reputation in Australia, ruling that because the TiVo trademark preceded the launch of its DVR products in the country in 2008, the VIVO mark would infringe the company’s rights.

It’s another reassuring legal success for TiVo after the company agreed with Microsoft in March to drop lawsuits against each other, ending threats of a ban that could have seen TiVO’s set-top boxes from being imported to the US and being sold domestically. TiVo was adjudged to have infringed on Microsoft’s video purchasing and delivery patents.

The court ordered that VIVO should be removed from the trademark registry and “that further use of the VIVO mark would constitute continued infringement of the TiVo mark.” The company agreed to a temporary stay, allowing the court to decide whether it would allow VIVO to appeal.