Ames Australasia Pty Ltd v HGCI, Inc - [2024] ATMO 234

TRADE MARKS ACT 1995

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

Re:Opposition by Ames Australasia Pty Ltd to registration of trade mark application number 2253038 (class 1) - CYCLONE - in the name of HGCI, Inc.

Delegate:

Timothy Brown

Representation:

Opponent: Wen Wu of counsel, instructed by Davies Collison Cave.

Applicant: Simon Gapes of Griffith Hack.

Decision:

2024 ATMO 234

Trade Marks Act 1995 (Cth) – opposition under section 52 – ss 44 and 60 pressed – s 44 established – trade mark refused.

Background

This decision concerns an opposition brought by Ames Australasia Pty Ltd (‘Opponent’) under s 52 of the Trade Marks Act 1995 (Cth)[1] to the registration of the following trade mark:
[1] Unless stated otherwise, each reference to a section or regulation, is a reference to the Trade Marks Act 1995 (Cth) (‘Act’) or Trade Marks Regulations 1995 (Cth) (‘Regulations’).
Trade Mark Number: 2253038

Trade Mark: CYCLONE

Owner: HGCI, Inc. (‘Applicant’)

Filing Date: 2 March 2022

Goods:Class 1: Chemical additives for fertilisers; Fertilisers; Liquid fertilisers; Fertilisers consisting of compounds of nitrogen; Nitrogenous fertilisers; Phosphates (fertilisers); Superphosphates (fertilisers)[2] (‘Applicant’s Goods’)

[2] The Applicant’s Goods were amended on 4 September 2024 and 9 October 2024 pursuant to s 65(7) following requests made by the Applicant on 30 August 2024 and 5 September 2024.

The Trade Mark was examined and advertised for possible registration on 3 August 2022.
On 29 September 2022, the Opponent filed a Notice of Intention to Oppose registration of the Trade Mark, followed by a Statement of Grounds and Particulars on 28 October 2022. The Applicant filed a Notice of Intention to Defend the opposition on 13 December 2022.
On 17 March 2023, the Opponent filed Evidence in Support of the opposition. The Applicant filed Evidence in Answer on 21 June 2023. The Opponent did not file Evidence in Reply.
Following the end of the evidence stages both parties requested to be heard. The matter was heard before me, a delegate of the Registrar of the Trade Marks, on 4 September 2024. The Opponent was represented by Wen Wu of counsel with instruction from Ian Drew and Linda Xu of Davies Collison Cave. The Applicant was represented by Simon Gapes of Griffith Hack.

Grounds, Onus and Relevant Date

The nominated grounds of opposition are ss 42, 44, 58, and 60 of the Act. The Opponent bears the onus of establishing one or more of the grounds of opposition.[3] During the hearing the Opponent indicated that it presses only ss 44 and 60.
[3] Food Channel Network Pty Ltd v Television Food Network GP [2010] FCAFC 58, [32] ((Keane CJ, Stone and Jagot JJ).
The required standard of proof is on the balance of probabilities.[4] The date at which the rights of the parties will be determined is 2 March 2022 (‘Relevant Date’), being the filing date of the Trade Mark and the priority date of the Trade Mark for the purposes of ss 44 and 60.
[4] Pfizer Products Inc v Karam (2006) FCA 1663, [6]-[26] (Gyles J); Telstra Corporation Limited v Phone Directories Company Pty Ltd [2015] FCAFC 156, [133] (Besanko, Jagot and Edelman JJ).

Preliminary Issue

On 2 September 2024, the Opponent filed a request under reg 21.19 for consideration of the following material:

Declaration of Hui Xu, Senior Associate at Davies Collison Cave, dated 2 September 2024 with Exhibit HX-1 (‘Xu’).

Exhibit HX-1 consists of photographs taken during a visit to a Bunnings store located in Notting Hill, Victoria. The photographs show fertiliser, potting mix, mulch, and growing mix sold in proximity to other gardening supplies, namely, herbicides and gardening rakes. Xu declares that the photographs were taken on 20 August 2024.
Regulation 21.19 provides:
Registrar may use information available
(1)If:
(a)    information that is available to the Registrar is relevant to proceedings before the Registrar; and
(b)   the Registrar has reason to believe that the information is not known to a party to the proceedings; and
(c)    the Registrar proposes to take the information into account in making a decision in the proceedings;
before making the decision the Registrar must:
(d)   provide the information to the party; and

(e) give the party a reasonable opportunity to make representations about the information.

A party seeking admission of new material generally needs to make a compelling case for its inclusion. The Opponent emphasises that the evidence is particularly relevant to the question of whether the Applicant’s Goods are closely related to retail services.
I acknowledge that the photographs contained in Exhibit HX-1 are relevant to considerations under the ss 44 and 60 grounds of opposition and support the Opponent submissions under those grounds. However, I am not persuaded that the material should at this stage of proceedings be allowed into the hearing. Whilst relevant, for reasons that will become apparent, Xu is not crucial or determinative to the outcome of these proceedings. Accordingly, I am not satisfied that it is appropriate in these circumstances to allow Xu or Exhibit HX-1 into these proceedings under regulation 21.19.

Evidence

The following evidence was filed:
Evidence in Support

Declaration of Dale McGrath, Chief Financial Officer of the Opponent, dated 17 March 2023 with Exhibits DM-1 to DM-23, including Confidential Exhibits 20 and 21 (‘McGrath’).
Evidence in Answer
Declaration of Simon Gapes, Trade Mark Attorney at Griffith Hack, dated 21 June 2023 with Annexures A to C (‘Gapes’).

Opponent

The Opponent is part of The AMES Companies, Inc (‘AMES’), a subsidiary of Griffon Corporation. AMES was founded in 1774 by Captain John Ames and is a manufacturer of a broad range of goods which include, amongst other things, gardening and horticulture products.
According to McGrath, the trade mark ‘Cyclone’ (‘CYCLONE Mark’) has been used by AMES, and predecessors in title since the 1890s. Use of the CYCLONE Mark first occurred in Australia in connection with wire fences imported from the United States by Leonard Chambers and William Thompson.[5] Mr Chambers and Mr Thompson subsequently established The Cyclone Woven Wire Fence Company (‘Cyclone Company’) in 1898.[6] Over the next decades the Cyclone Company underwent a number of changes in name:[7]

in 1903, the company changed its name to Cyclone Woven Fence & Gate Company;
in 1921, the company changed its name to Cyclone Woven Wire Co Ltd;
in 1925, the company changed its name to Cyclone Fence and gate Company Pty Ltd;
in 1947, the Cyclone Company was registered and publicly listed as the Cyclone Company of Australia.
[5] McGrath Exhibit DM-2.
[6] Ibid.
[7] Ibid [10]-[13].

In the 1958, the Cyclone Company began manufacturing aluminum windows, hand tools and gardening tools.[8]
[8] McGrath [14].
In 1975, the Cyclone Company was purchased by Boral Limited, and its name was once again changed to Boral Cyclone Limited.[9] The Cyclone Company changed owners several more times eventually being sold to Australian Steel (Operations) Pty Ltd (‘Australian Steel’) on 1 November 2002. Mr McGrath declares at this point rights in the Cyclone Company’s tool business passed to ITW Australia Pty Ltd (‘ITW’), while Australian Steel continued to use ‘CYCLONE’ in relation to wire fences. ITW sold all its rights in Australia and New Zealand, including the CYCLONE Mark, to AMES on 21 May 2014. Exhibited to McGrath is an Annual Report published by the Griffith Corporation from 2015 detailing the net value of the intangible assets of this acquisition.[10]
[9] Ibid [15].
[10] Ibid Exhibit DM-3.
According to McGrath, AMES and its predecessors in title have continuously used the CYCLONE Mark in Australia since the mid-1890s. The Opponent is also the owner of the following Australian trade mark registrations (‘Opponent’s Registrations’):

Trade Mark Number	Trade Mark	Filing Date	Goods/Services
4156	CYCLONE	20 April 1907	Classes 6, 8, 10, & 20
134403	CYCLONE	8 November 1957	Class 19
386964	3 February 1983	Class 6
472479	CYCLONE	10 September 1987	Class 12
787420	CYCLONE	5 March 1999	Class 35
1055615	CYCLONE	16 May 2005	Class 17
1132182	CYCLONE	29 August 2006	Classes 12 & 21
1497321	20 June 2012	Classes 6, 8, 12, 17, 19, 20, 21 and 35
1661651	1 December 2014	Class 19
1682806	CYCLONE	23 March 2015	Classes 6, 12, 19, 20, 21, 35, 38, 41 and 44
1682808	23 March 2015	Classes 6, 12, 19, 20, 21, 35, 38, 41, 44
2100891	CYCLONE PELICAN PICK	2 July 2020	Class 8
2128107	14 October 2020	Class 21
2128112	14 October 2020	Class 21

According to McGrath, goods bearing the CYCLONE Mark are sold by various Australian retailers including Bunnings, the Grit and Mitre 10. McGrath includes a list of 1,324 stores in Australia which have sold the Opponent’s goods between 2015 and 2017.
The Opponent promotes its CYCLONE Mark via its Australian website, its various social media accounts (Facebook, YouTube and Instagram),[11] television advertisements and print advertisements. Examples of the Opponent’s promotional material are exhibited to McGrath. The Opponent has also promoted the CYCLONE Mark via sponsorship activities. Since 2019 the Opponent has sponsored the Melbourne Aces, a professional basketball team based in Melbourne.
[11] McGrath Exhibits DM-9 to DM-11.
McGrath also includes the Opponent’s revenue derived sales of products bearing the CYCLONE Mark from 2014 to February 2022, and total advertising expenditure from 2018 to the priority date of the Trade Mark.

The Applicant

The Applicant acquired the Trade Mark from the Australian company S.J Enterprises Pty Ltd.
According to the Gapes, the Trade Mark is used on rooting gels and similar products designed to promote root growth of plant cuttings. The Trade Mark is utilised as a subsidiary brand to the Applicant’s trade mark ‘CYCO’, which the Applicant describes as a well-known brand of plant nutrients, additives and growth agents.
Mr Gapes declares that goods offered under the Trade Mark have been sold in Australia since at least January 2020. Gapes includes a list of retailers, which are all described as ‘specialist hydroponics stores’. Also exhibited to Gapes are examples of third-party websites offering for sale goods bearing the Trade Mark.[12]
[12] Gapes Annexure A.
Gapes annexes figures for the total products sold in Australia under the Trade Mark, and the details of the equivalent trade mark registration in the United States of America.[13]

Discussion and Reasons

[13] Trade Mark Registration Number 4960804.

Section 44

Section 44 relevantly provides:
(1)Subject to subsections (3) and (4), an application for the registration of a trade mark (applicant’s trade mark) in respect of goods (applicant’s goods) must be rejected if:
(a)the applicant’s trade mark is substantially identical with, or deceptively similar to:
(i) a trade mark registered by another person in respect of similar goods or closely related services; or
(ii) a trade mark whose registration in respect of similar goods or closely related services is being sought by another person; and
(b)the priority date for the registration of the applicant’s trade mark in respect of the applicant’s goods is not earlier than the priority date for the registration of the other trade mark in respect of the similar goods or closely related services.
To succeed under this ground, the Opponent must establish that the Trade Mark is substantially identical with, or deceptively similar to, another trade mark with an earlier priority date, in the name of person other than the Applicant, in respect of goods or services that are similar, or closely related to the Applicant’s Goods.
The Opponent relies on the Opponent’s Registrations as the basis for this ground of opposition. I note that each of the Opponent’s Registrations have an earlier priority date than the Trade Marks and are in the name of someone other than the Applicant.
For the reasons that follow it was only necessary to discuss the Opponent’s Trade Mark Registration 1682806 (‘Opponent’s Mark’).

Comparison of Trade Marks

Whether two trade marks are substantially identical is determined by a side by side comparison having regard to the essential features of the trade marks and the total impression of resemblance or dissimilarity that emergers from the comparison.[14] In this instance, the Opponent’s Mark and the Trade Mark are identical, both being comprised solely of the plain word ‘CYLONE’.
[14] Shell Co of Australia Ltd v Esso Standard Oil (Australia) Ltd [1963] HCA 66, [12] (Windeyer J).

Comparison of Goods and Services

Section 14 provides:
(1) For the purposes of this Act, goods are similar to other goods:
(a) if they are the same as the other goods; or
(b) if they are of the same description as that of the other goods.
(2) For the purposes of this Act, services are similar to other services:
(a) if they are the same as the other services; or
(b) if they are of the same description as that of the other services.
Whether goods are of the same description depends on ‘whether the goods belong to the same or different trades’[15]. This is determined through consideration of a number of factors, including the nature of the goods,[16] the purpose for which the goods will be used,[17] and the trade channels through which the goods are bought and sold.[18] In Reckitt and Colman (Australia) Limited v Boden, Dixon J stated:
What forms the same description of goods must be discovered from a consideration of the course of trade or business. One factor is the use to which the two sets of goods are put. Another is whether they are commonly dealt with in the same course of trade or business.[19]
[15] Re an Application by Ladislas Jellinek for the Registration of a Trade Mark (1947) 63 RPC 59, 64 (Romer J).
[16] Ibid.
[17] Ibid.
[18] Ibid; see also: Southern Cross Refrigerating Co v Toowoomba Foundry Pty Ltd [1954] HCA 82, [5] (Kitto J).
[19] (1954) 70 CLR 84, 94.
The Act does not define ‘closely related’ goods and services. In Registrar of Trade Marks v Woolworths Ltd[20] French J recognised that goods and services are fundamentally different things,[21] but observed:
There will be classes of goods which are similar to each other. There will also be classes of services which are similar. But the word “similar” does not apply as between goods and services. So there must be some other form of relationship between the services covered by one mark and the goods covered by another to enable the goods or services in question to be described as “closely related” … it is a term of wider import than “similar” and can apply to the relationships between competing services as well as between goods and services.[22]
[20] [1999] FCA 1020 (‘Woolworths’).
[21] Ibid [37].
[22] Ibid, [37].
By way of example, his Honour noted that services for the installation, operation and maintenance of goods were likely to be considered closely related to their respective goods.[23] Several examples of closely related goods and services were also identified in Caterpillar Loader Hire (Holdings) Pty Ltd v Caterpillar Tractor Co[24], including data processing equipment and the sale of goods for their operation, curtains and the sewing of curtains, clothes and tailoring, and educational material and educational services.[25]
[23] Woolworths (n 20) [38].
[24] (1983) 48 ALR 511 (Lockhart J).
[25] Ibid 522.
In Enagic Co Ltd v Horizons (Asia) Pty Ltd (No 3) (‘Enagic’), Charlesworth J stated:
The more closely related the goods on the one hand and the services on the other, the greater the potential for confusion as to whether they originate from the same person. Whether the relevant services and the relevant goods are “closely related” is to be assessed in that context and in a commercially sensible way, having regard to all legitimate uses of the Opposed Mark.[26]
[26] [2021] FCA 1512, [33].
The Opponent’s Mark specifies broadly in class 35 a range of retail, wholesale and advertising services in relation to, amongst other things, ‘gardening products and supplies’ (‘Opponent’s Services’)[27]. The Applicant’s Goods are ‘[c]hemical additives for fertilisers; Fertilisers; Liquid fertilisers; Fertilisers consisting of compounds of nitrogen; Nitrogenous fertilisers; Phosphates (fertilisers); Superphosphates (fertilisers)’.
[27] See Schedule A for the entire specification
The Opponent submits that the Applicant’s Goods are closely related to the Opponent’s Services on the basis that it is now commonplace for retailers to sell their own branded goods.
As an initial observation, I note that ‘gardening supplies’ is a broad description that potentially encompasses many different goods related to gardening. Determining whether goods or services are withing a description of the goods or services in respect of which a trade mark is registered is, generally, a matter of construction.[28] In this case, I consider the description ‘gardening supplies’ would reasonably include, amongst other things, products such as fertiliser, additives for fertilisers, mulch, potting mix, and top soil. These goods are routinely utilised in gardening, or otherwise supplied by traders for the purpose of gardening. Accordingly, this matter involves the question of whether a range of goods are closely related to the retail and wholesale of the same goods.
[28] Killer Queen, LLC v Taylor [2024] FCAFC 149, [49] (Yates, Burley and Rofe JJ); Nikken Wellness Pty Ltd v van Voorst [2003] FCA 816, 44 (Wilcox J).
On one hand, many fertilisers are chemical products. This was the view taken in Plantmark Pty Ltd v Wal-Mart Stores, Inc (‘Plantmark’),[29] a decision referred to me by the Applicant in which the Delegate considered whether ‘retailing and wholesaling services in respect of…garden products’ were closely related to ‘fertilizer, potting soil and top soil’. The Delegate noted that fertlisers, while being sold in nurseries, are ‘specialized chemical products produced by those with a high degree of chemical expertise’[30] and that ‘they are not likely to be seen by the end-consumer as originating from the nursery wholesaler or retailer’.[31]
[29] [2003] ATMO 9 (Delegate Skivington).
[30] Ibid.
[31] Ibid.
However, my view on the present matter differs from the Delegate’s in Plantmark. The Opponent’s retail and wholesale services are not limited to sale of goods in nurseries, though I accept that this would be one means by which the Opponent’s gardening supplies might be sold. Rather, the description of the Opponent’s services would encompass the retail and wholesale of the relevant goods by any means, including online. Plantmark was determined in 2003, and the intervening years between that decision and the present matter has seen the growing prevalence of online marketplaces and stores. Fertilisers are available in more than just nurseries and it is now simpler for manufacturers or producers of these goods to offer for sale their own goods via the internet. Accordingly, it is less likely for a consumer to distinguish between the owner of a good and the retailer of a good even in a context where the goods may require a ‘high degree of chemical expertise’. I also note that while the Applicant’s Goods include chemical products, they are not limited to chemical fertilisers or chemical products. Organic and natural fertilisers also fall within the broad description of ‘fertilisers’.
Several decisions have considered, in various contexts, whether retail services and goods are closely related. In Caesarstone Ltd v Ceramiche Caesar SpA (No 2) the Federal Court considered tiles and the retail and wholesale of tiles to be closely related.[32] In Enagic electrolytic water generators and the sale and distribution of goods were considered closely related.[33] However, I am also cognisant that the outcome of other decisions in the context of considering whether goods or services are closely related is of limited assistance.[34]
[32] Caesarstone Ltd v Ceramiche Caesar SpA (No 2) [2018] FCA 1096, [689] (Robertson J).
[33] Enagic Co Ltd v Horizons (Asia) Pty Ltd (No 3) [2021] FCA 1512, [45] (Charlesworth J).
[34] See: Goodman Fielder Pte Ltd v Conga Foods Pty Ltd [2020] FCA 1808, [282] (Burley J).

The Applicant also referred me to Ruralco Holdings Limited v Robert and Alison Kerr[35], a decision comparing fertilisers with garden maintenance services, and Greenpeace Australia Pacific Limited v Taylor[36], a decision considering whether fertlisers and education services are closely related. Neither decision, in my view, is of assistance to the Applicant. I do not consider the Opponent’s Services to be analogous in any way to services considered in either decision.
[35] [2007] ATMO 61 (Delegate Williams).
[36] [2004] ATMO 7 (Delegate Murray).
In my assessment, there is a clear nexus between the Applicant’s Goods and the Opponent’s Services relating to retailing and wholesaling of gardening products and supplies. The retailing and wholesaling of fertlisers and similar gardening products are not merely incidental to those goods, but the means by which those goods are offered and made available to the public. Goods bearing the relevant trade mark, whether sold in a supermarket, nursery, online or at a specialist fertiliser or hydroponics store, would been seen in proximity to the trade mark used in connection with those services. In circumstances where the trade marks are similar, or as in this case identical, it is more probable than not that consumers would confuse the origin of the goods and services. For these reasons, I am satisfied that all the Applicant’s Goods are closely related to the Opponent’s claim in class 35 for the ‘[r]etailing, wholesaling…of gardening products and supplies’.
Given the identical nature of the trade marks and the nexus between the respective goods and services, I am satisfied that there would be a real and tangible danger of confusion between the Trade Mark and the Opponent’s Mark. Accordingly, the s 44 ground of opposition has been established.
For completeness, the Applicant has not filed any evidence that would permit a finding of honest concurrent use or prior use.[37] Nor has the Applicant drawn my attention to any other relevant circumstances that may be considered under s 44(3)(b).
[37] Section 44(3)(a) and 44(4).

Decision

Section 55(1) of the Act relevantly provides:
Unless subsection (3) applies to the proceedings, the Registrar must, at the end, decide:
(a) to refuse to register the trade mark; or
(b) to register the trade mark (with or without conditions or limitations) in respect of the goods and/or services then specified in the application;
having regard to the extent (if any) to which any ground on which the application was opposed has been established.
The Opponent has established a ground of opposition under s 44. Accordingly, I refuse to register trade mark application number 2253038.

Costs

Both parties sought an award of costs. As the Opponent has been successful, I award costs against the Applicant under s 221 in accordance with Schedule 8 of the Regulations.

Timothy Brown

Hearing Officer

Delegate of the Registrar of Trade Marks

29 November 2024

Schedule A

Specification for Trade Mark Registration Number 1682806

Class 6: Articles of metal for use in the garden; metal hoses; metal connectors for water hoses; hose clams of metal; hose clips of metal; hose guides of metal; hose couplings of metal; metal apparatus for attachment to hose pipes; metal brackets; metal shelf brackets; canter livid brackets of metal; hose winding spools of metal; non-mechanical spools for flexible hoses; wall-mounted hose supports of metal; metal garden stakes; planters of metal; metal plant caddies; cast iron plant caddies; cast aluminium plant caddies; metal plants stands; cast iron plants stand; cast aluminium plant stands; bird bath (structures of metal); letter boxes of metal; articles of metal for use in the garden, including metal obelisks; cast iron obelisks; cast aluminium obelisks; part and accessories for the aforementioned goods; none of the aforementioned being fencing, railings, chain wire, wire netting, shop guards, machinery guards, tree guards, cages, factory enclosures, stock enclosures, tennis court enclosures, silos, pipes and pipe fittings or parts and fittings for use in connection with fencing or fencing products

Class 12: Wheelbarrows; hand carts; lawn carts; lawn wagon; utility carts; multi-purpose carts; carts for hoses; parts and accessories for all of the aforementioned goods in this class

Class 19: Synthetic stone; synthetic (plastic) landscape stones; synthetic (plastic) splash blocks; non-metallic bird bath (structures); letter boxes of masonry; garden ornaments being non-metallic building structures; garden ornaments of concrete; garden ornaments of marble; garden ornaments of stone; parts and accessories for the aforementioned goods in this class

Class 20: Winding spools not of metal, non-mechanical, for flexible hoses; air hose reels (non-mechanical) not of metal; reels, not of metal, non-mechanical, for flexible hoses; non-metallic wall mounted hose supports; non-metallic hose clamps; non-metallic hose clips; canter livid brackets of non-metallic materials (other than for building); non-metallic self brackets; work benches; letter boxes, not of metal of masonry; baskets, not of metal; non-metallic window baskets; flower baskets of wicker; parts and accessories for the aforementioned goods

Class 21: Glassware, porcelain and earthenware not included in other classes; planters not of metal; planters for flowers and plants; flower pots; deck planters; window boxes; stands for plants; urns; watering cans; sauces; plant caddies; apparatus for spraying for attachment to hoses; apparatus for sprinkling for attachment to hoses; spray guns for watering hoses; sprinkler hoses; parts and accessories for the aforementioned goods

Class 35: Retailing, wholesaling and advertising of gardening products and supplies, including online; retailing, wholesaling and advertising of gardening machinery and accessories including online; retailing, wholesaling and advertising of landscaping products and supplies including online; retailing, wholesaling and advertising of hardware products and supplies, including online; retailing, wholesaling and advertising outdoor furniture and outdoor heaters, including online; retailing, wholesaling and advertising of garden furniture, garden ornaments and decor, including online

Class 38: Electronic transmission (uploading, posting or displaying) of data, information, pictures, images, audio and/or video via online forums on gardening, garden maintenance, garden design, garden landscaping; providing user access to a global computer network and online sites containing information on gardening, garden maintenance, garden design and garden landscaping

Class 41: Electronic publication of information on the topics of gardening, garden maintenance, garden designs; garden landscaping, including online and over a global computer network

Class 44: Advisory services relating to gardening, garden maintenance, garden design and garden landscaping; garden landscaping services