Akzo Nobel Coatings International B.V. v Brick Appeal Pty Limited

[2023] ATMO 185

TRADE MARKS ACT 1995

DECISION OF A DELEGATE OF THE REGISTRAR OF TRADE MARKS WITH REASONS

Re: Opposition by Akzo Nobel Coatings International B.V. to registration of trade mark application number 2261488 (Classes 1, 2, 5, 37) – ECOTONE ECOCLEAN – in the name of Brick Appeal Pty Limited.

Delegate:	Debrett Lyons
Representation:	Opponent: Spruson & Ferguson Applicant: Digital Age Lawyers
Decision:	2023 ATMO 185 Trade Marks Act 1995 (Cth) – opposition under s 52 – grounds of opposition pursued under ss 44 and 62A – neither established – trade mark to proceed to registration.

Background

1. This is a decision in an opposition by Akzo Nobel Coatings International B.V. (‘Opponent’) to a trade mark application filed by Brick Appeal Pty Limited (‘Applicant’) on 7 April 2022 (‘Relevant Date’) for ECOTONE ECOCLEAN (‘Trade Mark’) for a range of goods and services shown in Appendix A which relevantly include paints and coatings, and services using paints and coatings.

2. The Trade Mark was examined, accepted and advertised for opposition on 8 September 2022.  The Opponent filed a notice of intention to oppose on 21 September 2022, followed by a statement of grounds and particulars (‘SGP’) on 18 October 2022.  The Applicant filed a notice of intention to defend on 7 December 2022.

3. The parties had the opportunity to file evidence in accordance with reg 5.14.[1] The Opponent filed Evidence in Support being the joint declaration of R. Spruitenburg and F. Alsters, both IP Counsel with the Opponent, made 16 March 2023 (‘EIS’).  The Applicant filed Evidence in Answer being the joint declaration of Katherine Merle Hawes and Nicholas John Fisher, attorneys with the Applicant’s legal representative, made 16 June 2023 (‘EIA’).  There was no Evidence in Reply.

   [1]   Unless otherwise stated, each reference to a section or regulation is a reference to a section of the Trade Marks Act 1995 (Cth) (‘Act’) or regulation of the Trade Marks Regulations 1995 (Cth) (‘Regulations’).

4. The parties were given the opportunity to be heard.  Both parties elected to be heard by way of a written decision.

   Grounds and onus

5. The SGP nominates grounds of opposition under ss 44 and 62A.  The Opponent carries the burden of establishing a ground on the balance of probabilities.[2]  The rights of the parties are assessed at the Relevant Date.  

   [2] Pfizer Products Inc v Karam [2006] FCA 1663, [22] (Gyles J); Telstra Corporation Limited v Phone Directories Company Pty Ltd [2015] FCAFC 156, [133] (Besanko, Jagot and Edelman JJ).

   Discussion

6. The EIS shows that the Opponent is a multinational paints and coatings manufacturer and the owner of brands such as DULUX and TAUBMANS.  It owns Australian trade mark 2155151 for ACOTONE (‘the Opponent’s Mark’) registered from 16 December 2020 for goods and services in classes 2, 7 and 40 shown in full in Appendix B – essentially paints, painting machines and paint mixing services.

7. The EIA states that the Applicant is ‘an Australian-based company who is active in both Australia and internationally’ which ‘specialises in the application of long-lasting colour and functional coatings designed for the building and construction industry’.

   Section 62A

8. I have found it convenient to assess the bad faith ground first since it sheds light on the following s 44 analysis.  Section 62A provides that ‘the registration of a trade mark may be opposed on the ground that the application was made in bad faith’.  The SGP particularised the ground of opposition as follows:

   The Opponent successfully opposed the Applicant’s application for the ECOTONE trade mark (application no. 2173712). Therefore, the Applicant would have been aware at the time of filing its application of the Opponent’s prior rights to the ACOTONE trade mark. Accordingly, the application to register the Opposed Mark was made in bad faith.

9. In Fry Consulting Pty Ltd v Sports Warehouse Inc (No 2) Dodds-Streeton J said that ‘the court must decide whether the knowledge of the applicant was such that his decision to apply for registration would be regarded as in bad faith by persons adopting proper standards’.[3]  Her Honour continued, stating that:

   The formulation in United Kingdom authority of bad faith as falling short of the standards of acceptable commercial behaviour observed by reasonable and experienced persons in a particular area is, in my view, an apt touchstone. …

   … in my view, mere negligence, incompetence or a lack of prudence to reasonable and experienced standards would not, in themselves, suffice, as the concept of bad faith imports conduct which, irrespective of the form it takes, is of an unscrupulous, underhand or unconscientious character.[4]

   [3] [2012] FCA 81, [147], quoting, Harrison’s Trade Mark Application [2004] EWCA Civ 1028.

   [4] Ibid [165]-[166].

10. There is no argument that the Applicant knew of the Opponent when it filed the present application.  The EIA includes the SGP in relation to the opposition to application 2173712.  That application was for the mark, ECOTONE.  The applicant was Aquarius Consulting Group Pty Ltd.  The ss 58 and 59 grounds of that SGP stated:

    The … Trade Mark is being used in Australia by Ecotone Coatings. Ecotone Coatings is a business name registered to Brick Appeal Pty Limited. The … application was filed in the name of Aquarius Consulting Group Pty Ltd. It is therefore Brick Appeal Pty Limited, and not the [a]pplicant that is the owner of the … Trade Mark in Australia.

11. The opposition was not defended and application 2173712 lapsed.  In its EIA, the Applicant admits that ‘[i]n error, the application for trade mark No. 2173712 was made with the incorrect organisation represented as the owner’.

12. A different mark has been applied for now, the term ‘ECOCLEAN’ appended to ECOTONE.  The EIA declares that ‘ECOCLEAN’ has been in continuous use by the Applicant since November 2021.  This is not disputed, and I note also that it is now a registered mark.

13. I cannot draw an inference of any underhand conduct by reason of this ‘re-filing’.  Of itself, the Applicant’s knowledge of the Opponent and its trade mark is not determinative and I would infer that the Trade Mark was filed with the addition of ‘ECOCLEAN’ as a point of further differentiation between the parties’ marks.

14. Nor can I draw an adverse inference from what remains of the EIS.  It includes search results from the Australian Trade Marks Register for marks which include the element ‘COTONE’ as a suffix.  Absent submissions, I am not sure what construction is to be given to those results.  I do not find they assist me other than to suggest (i) that marks terminating with the letter string ‘COTONE’ exist or have existed on the Register for various goods (many unrelated to paints and coatings), and (ii) that ‘COTONE’ does not itself seem to exist as a term of art in the paints and coatings industry or somehow is uniquely associated with the Opponent. 

15. Otherwise, the EIS includes the adverse examination report on application 2173712 which referenced third party marks cited under s 44.  Once more, it does not instruct me in a useful way in terms of s 62A.

16. I find nothing in the act of filing the Trade Mark which would suggest behaviour of an unscrupulous, underhand or unconscientious character and so find no evidence of bad faith.  Accordingly, the s 62A ground is not established.

    Section 44

17. To establish an opposition under s 44, an opponent must show a pending or registered trade mark with a priority date earlier than the priority date of the at-issue application which is in the name of a person other than the applicant and which is either substantially identical or deceptively similar to the applied-for mark.  The earlier mark must also be filed or registered in respect of goods/services that are similar to the applicant’s goods/services, or goods/services that are closely related to the applicant’s goods/goods.

18. The Opponent relies on the Opponent’s Mark, stating in the SGP that ‘[t]his registration is for a trade mark that is substantially identical, or deceptively similar to, the [Trade] Mark, pre-dates the filing of the [Trade] Mark and covers the same goods or closely related services to those covered under the [Trade] Mark’.

19. Some of that is undeniably true – the Opponent’s Mark has a priority date of 16 December 2020, earlier than the priority date of the application (in this case, the Relevant Date) and is registered at least for some goods which are similar within the meaning of s 14 to at least some of the applied-for goods. 

20. So much of s 44 is satisfied and for reasons which follow it has not been necessary for me to look more closely at the exact correspondence of the parties’ goods and services since the s 44 requirement that the compared marks be either substantially identical or deceptively similar is dispositive of the matter.

21. In Shell Co (Aust) Ltd v Esso Standard Oil (Aust) Ltd Windeyer J said:

    In considering whether marks are substantially identical they should, I think, be compared side by side, their similarities and differences noted and the importance of these assessed having regard to the essential features of the registered mark and the total impression of resemblance or dissimilarity that emerges from the comparison.[5]

    [5] [1963] HCA 66, [12].

22. On a side-by-side comparison I find that the Trade Mark is very obviously not substantially identical to the Opponent’s Mark.  As to deceptively similarity, I am guided by the definition provided by s 10 (set out below) and by the case law.

    Definition of deceptively similar

    For the purposes of this Act, a trade mark is taken to be deceptively similar to another trade mark if it so nearly resembles that other trade mark that it is likely to deceive or cause confusion.

23. I must concentrate, not on a side-by-side comparison, but upon the general impression or recollection of the marks by the public.[6]   I must ‘decide if there is a reasonable probability that the ordinary person to whom the marks are targeted, entertains a reasonable doubt as to the relationship between the marks’.[7] 

    [6] Jafferjee v Scarlett (1937) 57 CLR 115, 121-22 (Latham CJ).

    [7] Australian Postal Corp v Digital Post Australia Pty Ltd [2013] FCAFC 153; (2013) 308 ALR 1, [70] (North, Middleton and Barker JJ).

24. On my reading of the evidence, the Opponent’s concern is use of the Trade Mark on paints and coatings. For what follows, I have therefore assumed that the goods are not only ‘similar’ in terms of the Act but are in fact the same. To the extent that there may be areas of doubt, or questions as to whether goods/services are closely related to services/goods, my reasoning only applies with greater force.

25. The EIS does not cause me to think that those marks on the Register which include the element COTONE carry some special meaning or connotation.  The fact that there are, or were, several such registrations of no determinate meaning causes me to think that ordinary people would distinguish between them based on what else those marks comprise of. 

26. Without evidence on the matter, I consider ACOTONE to have no meaning - I think of it only as an invented word with no connotation.  By contrast, and as demonstrated by the examination material from this Office contained in the EIS, the examiner saw ECO as shorthand for paints and coatings promising to be ecologically friendly.  In the Trade Mark, I read the element ECO in the same way, underscored by its combination in one instance with the word CLEAN.

27. The case law states that there must be a real, tangible danger of confusion.[8]  Confusion would exist if consumers had cause to wonder whether goods or services bearing the Trade Mark emanated from the Opponent.  In my assessment there is little danger of that kind.  Whilst allowance must be made for imperfect recollection and the effect of careless pronunciation, I find that a great many people would distinguish between ACOTONE and ECOTONE and that people would almost invariably distinguish between ACOTONE and the Trade Mark.

    [8] Southern Cross Refrigerating Co v Toowoomba Foundry Pty Ltd (1954) 91 CLR 592, 595 (Kitto J).

28. The marks are not substantially identical, nor deceptively similar, and so the s 44 ground of opposition has not been established.

    Decision

29. The Opponent has not established any ground of opposition.  Therefore, under s 55, I direct that trade mark application 2261488 proceeds to registration 30 days after the date of this decision.  If the Registrar is served with a notice of appeal, I direct that registration shall not occur until the appeal is withdrawn or discontinued.  Otherwise, the disposition of the application should be in accordance with the Court’s order or direction.

30. It is usual for costs to follow the event and I see no reason to depart from that principle. I award costs against the Opponent under s 221 in line with Schedule 8 of the Regulations.

    Debrett Lyons

    Delegate of the Registrar of Trade Marks

    17 November 2023

    
    

    APPENDIX A

    Class 1:

    Chemical agents for the flame-retardant coating of textiles; Chemical preparations for coating undersides of roofs; Chemical preparations for forming coatings on metals; Chemical preparations for use in the manufacture of surface coatings; Chemicals for use in coating confectionery products; Chemicals for use in coating dental instruments (other than pharmaceuticals); Chemicals for use in coating film; Chemical preparations for use in the removal of coatings from metal; Chemicals for use in removing coatings; Coating agents (chemicals), other than paint; Coating compositions (chemicals), other than paint; Coating materials made from synthetic resins; Coatings (chemical) for glass; Coatings for the finishing of masonry (chemicals) (other than paints or building materials); Coatings for the finishing of surfaces (chemicals)(other than paints, oils or building materials); Coatings for weatherproofing (chemicals); Coatings for waterproofing (chemicals); Coatings to protect concrete from water (other than building materials, paints or oils); Coatings to protect masonry building walls from water (other than building materials, paints or oils); Coatings to protect stone from water (other than building materials, paints or oils); Conversion coating compositions (other than paints); Conversion coatings (other than paints); Electron beam curved coatings; Filler materials for coating compositions; Hydrogel polymer coatings; Liquid coatings (chemical); Moisture repellant coatings (other than paints); Polyetrafluroethylene coatings; Polymer coatings (other than paints); Polytetrafluoroethylene non-stick coatings; Polyurethane coatings (other than paints); Protective coatings for buildings (other than paints or oils); Protective coatings for repelling water (chemical); Sensitised coatings; Surface coating compositions (chemicals), other than paints; Water resistant protective surface coatings (chemical, other than paints); Waterproof coatings (chemical, other than paints); Weather resistant coatings (chemical, other than paints)

    Class 2:

    Anti-corrosive substances; Ceramic top coat compositions; Coating compositions for application to stonework; Coating compositions in the form of oils; Coating compositions in the nature of lacquers; Coating compositions in the nature of oils; Fluorocarbon top coat compositions; Silicone top coat compositions; Transparent coating compositions; Transparent coating materials; Electrophoretic coating materials; Elastomer coatings; Coatings for weatherproofing (except chemicals); Coatings for waterproofing (except chemicals); Coatings for use on walls; Coatings for preserving against rust; Ingot mould coatings; Interior decorative finish coatings; Raw materials for use as coatings; Stabilising preparations in the nature of coatings; Anti-corrosive paints; Ceramic paints; Anti-corrosive coatings (paints); Coating compositions for application to brickwork (paints or oils); Coating compositions for preserving stonework (paints or oils); Coating compositions having waterproofing properties (paints or oils); Coating compositions in the form of paint; Coating compositions in the nature of paint; Coatings (paints); Coatings for forms (paints or oils); Coatings for roofing felt (paints); Colorants for ceramic paints; Glazes (paint coating); Heat resistant coatings in the nature of paint; Industrial coatings in the nature of paint; Moisture repellant coatings (paints); Non metallic coating materials (paints); Polytetrafluoroethylene non stick coatings (paints); Wall coatings (paint); Weather resistant coatings (paints); Weatherproofing coatings (paints); Waterproofing compounds (paint); Elastomer waterproof coating preparations (paints); Waterproofing preparations (paint); Waterproofing compositions in the nature of paint; Textured coatings (paints); Textured wall coatings (paints); Textured paints; Substances for binding paints; Resurfacing materials (coatings) in the nature of paints; Paint (other than insulating or paint boxes for use in school); Paints; Paints for protection against corrosion; Weathering preservatives (paints); Coating preparations for protection against rust; Coating preparations for protection against wear; Preparations for waterproofing (paints); Preparations for protection against corrosion; Polyurethane coatings (paints); Polyurethane finishes (paints); Chemicals for use as additives in building materials (paints); Materials for use in maintaining buildings (paint); Materials for use in preserving buildings (paints); Materials for use in protecting buildings (paints); Materials in the nature of coatings for building purposes (paints); Coating compositions for application to concrete (paints or oils); Coatings for the finishing of concrete; Colorants for concrete; Coating preparations having water repellent properties (paints or oils); Coatings to protect concrete from water (paints or oils); Coatings to protect stone from water (paints or oils); Water repellents in the nature of paints; Water sealant preparations (paints); Water based colorants in the nature of paints; Water based preservatives; Coatings for the finishing of surfaces (paints or oils); Materials for use in forming surface coatings; Preparations for coating surface to protect against corrosion; Preparations for coating surfaces to protect against abrasion; Preparations for use as waterproofing coatings on the surfaces of buildings (paints); Preparations for use as waterproofing coatings on the surfaces of structures (paints); Surface coating compositions (paints); Surface coatings consisting of epoxy type binder resin systems; Surface coatings in the form of liquid plastics; Surface coatings in the nature of paint; Synthetic materials for use in preparing protective surface coatings; Tints for surface coatings; Trowelling mixes for vehicle surfaces prior to coating with refinishes; Water resistant decorative surface coatings; Water resistant protective surface coatings (paints); Colours; Colouring substances; Staining (colouring) preparations; Colouring preparations; Colouring matter for use on ceramics; Materials for colouring ceramic substrates; Coloured paints; Colouring preparations for staining paints; Chemical compositions for use in the colouring of concrete; Colorants for mortars; Coating compositions for preserving masonry (paints or oils); Coatings for the finishing masonry (paints or oils); Masonry preservatives in the form of paints; Preparations for the protection of masonry surfaces; Preparations for the preservation of masonry surfaces; Coatings to protect masonry building walls from water (paints or oils); Water repellent coatings (paints) for masonry

    Class 5:

    Polymer gel coatings having a bacteriocidal effect; Polymer gel coatings having a bacteriostatic effect; Polymer gel coatings having an anti-viral effect; Polymer gel coatings having an antiseptic effect; Disinfectants; Disinfectants for household use; Disinfectants for hygiene purposes; Disinfecting agents; Sanitary chemical substances for disinfecting

    Class 37:

    Abrasive cleaning of surfaces; Cleaning of building exteriors; Cleaning of building sites; Cleaning of buildings (exterior surface); Building cleaning; Cleaning of floor coverings; Cleaning of floor surfaces; Industrial cleaning services; Mechanical and chemical cleaning services; Polishing (cleaning) of floors; Provision of cleaning services; Advisory services for maintenance; Advisory services for cleaning; Anti-corrosion treatment services being maintenance services; Advisory services relating to the maintenance of buildings; Building maintenance; Floor maintenance services; Maintenance and repair of buildings; Maintenance and repair of utilities in buildings; Maintenance and repair of building contents; Maintenance, installation and repair of industrial apparatus and instruments; Maintenance services for industrial plants; Industrial plant maintenance; Provision of information in relation to the repair, maintenance and installation of goods; Repair, maintenance and installation advisory services; Repair, maintenance and installation consultancy services; Sign maintenance; Strong-room maintenance and repair; Application of protective coatings (painting); Application of protective paint; Painting of buildings; Painting, interior and exterior; Repointing of brickwork; Masonry; Masonry services; Stonemasonry; Repair of concrete

    
    

    APPENDIX B

    Class 2:

    Paints; coatings; varnishes; lacquers; thinners, coloring matters all being additives for paints, coatings, varnishes or lacquers; preservatives against rust and against deterioration of wood; priming preparations (in the nature of paints); wood stains

    Class 7:

    Machines and apparatus all for the application of paints, varnishes, lacquers, wood stains, and for the cleaning of painting implements; electric color-mixing machines; electric apparatus for mixing paints; electric machines for the removal of paint; paint-spraying equipment and paint spray guns; parts for the aforementioned goods

    Class 40:

    Paint mixing and paint coloring services; the tinting (ie coloring) of paints, varnishes, lacquers and wood stains