Ampac Pty Limited v Boss Products (Australia) Pty Ltd

[2023] ATMO 181

TRADE MARKS ACT 1995

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

Re:Opposition by Ampac Pty Limited to registration of trade mark application numbers 2040616 (class 9) and 2040617 (class 42) – FIREFINDER – both in the name of Boss Products (Australia) Pty Ltd

Delegate:	Nicholas Barbey
Representation:	Opponent: Melissa Marcus of counsel instructed by Wrays Pty Ltd Applicant: IP Wealth Pty Ltd
Decision:	2023 ATMO 181 Trade Marks Act 1995 (Cth) – opposition under s 52 – ss 42(b), 43, 44 and 60 pursued – s 43 established in respect of both trade marks – registration of trade marks refused

Background

1. This decision concerns an opposition brought by Ampac Pty Limited (‘Opponent’) pursuant to s 52 of the Trade Marks Act 1995 (Cth) (‘Act’) to registration of the following trade mark:

   FIREFINDER

   (‘Trade Mark’)

2. On 30 September 2019 (‘Relevant Date’), Boss Products (Australia) Pty Ltd (‘Applicant’) filed two applications for registration of the Trade Mark. The first application, being trade mark number 2040616 (‘Goods Application’), was made in respect of the following goods:

   Class 9: software, including computer and application software, and downloadable software applications (apps), and such software including for use by or in mobile phones, smart phones, tablet computers, hand-held computers, or Internet-enabled devices; computer programs and recorded software distributed online; computer software downloaded from the internet; interactive computer software; software for use in the field of building, construction, project management, repair, maintenance, and installation; computer and application software that enables users to input data or specifics relating to the users preferences or requirements for the output of results relating to recommended products, devices or installations, including the aforementioned software being downloadable or distributed online; software for accessing, browsing, searching, processing, transmitting, reporting and recording of directories, indexes, lists, and databases; software for, or to enable, the authoring, posting, uploading, sharing, downloading, transmitting, distributing, receiving, programing, extracting, encoding, decoding, storing, organising, showing, displaying, tagging, blogging, sharing, analysing, editing, manipulating, reproducing, processing, or otherwise providing, electronic media, multimedia content, images, text, news, data, documents, information, or user-generated content; computer databases; directories (electric or electronic); data capture instruments; data communications installations; data processing software; education and interactive education software; including all the aforesaid being accessible from personal electronic devices and mobile phones incorporating computer functions or operating systems capable of running applications; accessories, parts and fittings for all the aforesaid goods allowed in this class, including digitally-stored instructional materials sold together with the aforesaid goods; all of the aforesaid software goods in relation to searching, identifying, sourcing, recommending, buying and selling of products, devices or installations based upon user, industry specific, or regulatory code preferences or requirements; none of the aforesaid goods for use in connection with fire detection, prevention or protection; none of the aforesaid goods for use in connection with fire alarm control panels; none of the aforesaid goods being in the nature of software for the operation and configuration of the following goods: instrumentation for fire alarms, fire indicator panels for fire alarms, emergency warning devices, evacuation systems, inter-communication equipment therefor, or fire detection equipment (‘Goods’)

3. The second application, being trade mark number 2040617 (‘Services Application’), claimed the following services:

   Class 42: online provision of web-based applications and software (non-downloadable); software as a service (SaaS); platform as a service (PaaS); application service provider (ASP) services; online provision of web-based applications and software (non-downloadable) for use in the field of building, construction, project management, repair, maintenance, and installation; online provision of web-based applications and software (non-downloadable) that enables users to input data or specifics relating to the users preferences or requirements for the output of results relating to recommended products, devices or installations; online provision of web-based applications and software (non-downloadable) for accessing, browsing, searching, processing, transmitting, reporting and recording of directories, indexes, lists, and databases; online provision of web-based applications and software (non-downloadable) for, or to enable, the authoring, posting, uploading, sharing, downloading, transmitting, distributing, receiving, programing, extracting, encoding, decoding, storing, organising, showing, displaying, tagging, blogging, sharing, analysing, editing, manipulating, reproducing, processing, or otherwise providing, electronic media, multimedia content, images, text, news, data, documents, information, or user-generated content; project management (design); cloud computing; hosting of databases; offsite building project management; computer network services; internet portal services and web portal services (designing or hosting); computer support services (computer hardware, software and peripherals advisory and information services); computer support services (programming and software installation, repair and maintenance services); information technology (IT) services (computer hardware, software and peripherals design and technical consultancy); technical data analysis services; computer software consultancy and advisory services; providing information, advice and consultancy in relation to all the aforesaid services; including provision of all the aforesaid services online, via a website, the internet, global computer networks or other computer networks, by electronic means or wireless technology, or accessible by mobile phones or other Internet-enabled devices; all of the aforesaid software and technology services in relation to searching, identifying, sourcing, recommending, buying and selling of products, devices or installations based upon user, industry specific, or regulatory code preferences or requirements; none of the aforesaid software and technology services for use in relation to fire detection, prevention or protection; none of the aforesaid services in relation to fire alarm control panels; none of the aforesaid services being in relation to software for the operation and configuration of the following goods: instrumentation for fire alarms, fire indicator panels for fire alarms, emergency warning devices, evacuation systems, inter-communication equipment therefor, or fire detection equipment (‘Services’)

4. Both applications were examined as required by s 31 of the Act. The acceptance of the Services Application was advertised on 9 September 2020 and the Goods Application was advertised as accepted on 13 January 2022. The Opponent filed notices of intention to oppose each application, followed by Statements of Grounds and Particulars (‘SGPs’). The Applicant filed notices of intention to defend each application.

5. Evidence in Support (‘EIS’) was filed by the Opponent in each matter. The Applicant did not file any evidence in answer. An oral hearing was subsequently requested and the Registrar of Trade Marks (‘Registrar’) arranged for both matters to be heard in a single hearing. The Opponent filed its submissions on 2 August 2023 (‘Opponent’s Submissions’) together with additional evidence (‘Late Evidence’) that is addressed below. The Applicant filed its submissions on 9 August 2023 (‘Applicant’s Submissions’).

6. As a delegate of the Registrar, I held the hearing by video conference on 16 August 2023. Melissa Marcus of counsel presented submissions on behalf of the Opponent and Jacob Grumetza of IP Wealth presented submissions on the Applicant’s behalf.

   Grounds of opposition, onus and standard of proof

7. The SGPs nominated grounds of opposition under ss 42(b), 43, 44 and 60 of the Act. To be successful, the Opponent bears the onus of establishing at least one of these grounds in respect of each application.[1] If a ground of opposition is established in relation to all the Goods and Services, consideration of the remaining grounds is not required.

   [1] Food Channel Network Pty Ltd v Television Food Network GP [2010] FCAFC 58, [32] (Keane CJ, Stone and Jagot JJ).

8. The relevant standard of proof is the ordinary civil standard based on the balance of probabilities.[2] The date at which the rights of the parties are to be determined is the Relevant Date, being both the filing and priority date of each application for the Trade Mark in this instance.

   [2] Telstra Corporation Limited v Phone Directories Company Pty Ltd [2015] FCAFC 156, [133] (Besanko, Jagot

   Evidence

9. The following declarations were filed:

EIS

·     In respect of the Services Application, a declaration made on 10 May 2021 by Steven Thomas Chaplyn (Technical Director of the Opponent) with Exhibits 1 to 18 (‘Chaplyn 1’).

·     In respect of the Goods Application, a declaration made on 5 August 2022 by Steven Thomas Chaplyn with Exhibits 1 to 18 (‘Chaplyn 2’).

Late Evidence

·     Declaration made on 2 August 2023 by Marie Julienne Wong (Trade Mark Attorney of the Opponent’s representative) with Exhibits MJW-1 and MJW-2 (‘Wong Declaration’).

1. There is significant factual overlap between Chaplyn 1 and Chaplyn 2. For this decision, these will be summarised together as simply the ‘Chaplyn Declaration’ referencing the relevant declaration where necessary.

   EIS

2. According to the Chaplyn Declaration, the Opponent ‘designs, manufactures and distributes a wide range of fire detection and alarm systems and equipment’ as well as associated products such as computer software.[3] The Opponent commenced operations in 1974 and its products are distributed both domestically and overseas.

   [3] Chaplyn 1, [13]; Chaplyn 2, [15].

3. The Opponent’s trade mark portfolio includes the following Australian trade mark registration:[4]

   Trade mark:  (‘Opponent’s Mark’)

   Number:  825224

   Owner:  Opponent

   Priority date:  24 March 1998

   Specification:  Class 9: instrumentation and fire indicator panels for fire alarms, emergency warning devices and evacuation systems; inter-communication equipment therefor; fire detection equipment; and parts and accessories for all of the aforementioned goods in this class (‘Opponent’s Goods’)

   Endorsement:  Provisions of subsection 41(5) applied

   [4] The Opponent has obtained registration of ‘FIREFINDER’ in the United Kingdom (trade mark number UK00002314462) and New Zealand (trade mark number 606371).

4. Mr Chaplyn asserts that the Opponent has used ‘FIREFINDER’ (which is defined as including the Opponent’s Mark) in relation to the Opponent’s Goods since at least 1998. He explains that the Opponent provides two fire alarm control panels under or by reference to ‘FIREFINDER’ – namely, a ‘FIREFINDER’ panel released in 1998 and a ‘FIREFINDER PLUS’ panel released in 2014. The Opponent’s Goods are sold throughout Australia via the Opponent’s distributors and agents as well as on its website accessible at (‘Website’).

5. According to the Chaplyn Declaration, ‘FIREFINDER’ has been used in the Opponent’s ‘marketing materials, product materials and user manuals for the Opponent’s Goods sold in Australia’.[5] The Opponent has also displayed or otherwise used ‘FIREFINDER’ when attending industry events and conferences concerning the Opponent’s Goods. Mr Chaplyn states that ‘FIREFINDER’ is used on the Website as well as on the Opponent’s business stationery and social media accounts.

   [5] Chaplyn 1, [24].

6. The Opponent’s advertising expenditure and revenue derived from sales of the Opponent’s Goods under ‘FIREFINDER’ are detailed in the Chaplyn Declaration. The advertising expenditure is not insignificant and the revenue figures are sizable. Mr Chaplyn believes that, as at the Relevant Date, ‘the Opponent had and continues to hold around 40% market share of sales of fire detection and warning and intercommunication systems in Australia’.[6]

   [6] Chaplyn 2, [14].

7. The Chaplyn Declaration reproduces definitions from the Macquarie Dictionary for the words ‘FIRE’ and ‘FINDER’. The former may be defined as ‘the active principle of burning or combustion, manifested by the evolution of light and heat or a burning mass of materials, as on a hearth or in a furnace’ and the latter may be defined as ‘someone or something that finds’.[7] On this basis, Mr Chaplyn contends that the Trade Mark indicates to consumers ‘that the [Goods and Services] are for, or relate to, fire detection, prevention or protection’.[8] He points out that this contention is consistent with the examination of each application in which a ground for rejection under s 41 of the Act was raised against the Trade Mark.

   Late Evidence

   [7] Ibid [39].

   [8] Chaplyn 1, [36]; Chaplyn 2, [40].

8. On 2 August 2023, the Opponent filed the Wong Declaration without a cover letter. Instead, a footnote in the Opponent’s Submissions mentioned that the Wong Declaration had been filed pursuant to reg 21.19 of the Trade Marks Regulations 1995 (Cth) (‘Regulations’).[9]

   [9] Opponent’s Submissions, [3] n 1. I note that reg 21.19 of the Regulations is to be read in conjunction with reg 21.15(4) which states: ‘The Registrar is not bound by the rules of evidence, but may be informed on any matter that is before the Registrar in a way that the Registrar reasonably believes to be appropriate’.

9. The Wong Declaration exhibits screenshots of a domain name search result and pages from the Applicant’s website accessible at At the hearing, counsel for the Opponent remarked that the admission of the Wong Declaration was not prejudicial given it was concise and the screenshots were obtained from the Applicant’s website. It was explained that the purpose of the Wong Declaration was to shed light on the Applicant’s fields of endeavour because evidence in answer had not been filed in either matter. Despite being provided with the opportunity to do so, the Applicant’s representative did not make any submissions in relation to the Late Evidence.

10. Broadly speaking, evidence that is filed out of time will not be considered by the Registrar unless a compelling case in favour of it being allowed is established.[10] Here, the Opponent has not identified any circumstances that make it reasonable for the Late Evidence to be considered. The evidence sought to be admitted was available prior to and during the evidence stages of each matter. Even if the Opponent expected an opportunity to file evidence in reply, it remains unexplained why the Late Evidence was filed two weeks prior to the scheduled hearing date and not, for example, in August 2021 when the Opponent first became aware that evidence in answer had not been filed in respect of the opposition to the Services Application. Furthermore, for reasons that will become apparent, the Late Evidence is not crucial to the outcome of this proceeding. Accordingly, this decision will only have regard to the evidence which has been properly filed.

    Discussion

    [10] See, eg, part 51.2.5 of the Australian Trade Marks Office Manual of Practice and Procedure. See also Fed Square Pty Ltd v Federation IP Pty Ltd [2015] ATMO 42.

    Section 43

11. Section 43 of the Act provides:

    Trade mark likely to deceive or cause confusion
    An application for the registration of a trade mark in respect of particular goods or services must be rejected if, because of some connotation that the trade mark or a sign contained in the trade mark has, the use of the trade mark in relation to those goods or services would be likely to deceive or cause confusion.

12. This ground of opposition is concerned with a connotation arising from the Trade Mark itself.[11] To establish this ground, the Opponent must show that there is a connotation within the Trade Mark and, because of this connotation, the use of the Trade Mark in relation to the Goods and Services would be likely to deceive or cause confusion.

    [11] T.G.I. Friday's Australia Pty Ltd v TGI Friday's Inc [2000] FCA 720, [43] (Wilcox, Kiefel & Emmett JJ); Winton Shire Council v Lomas [2002] FCA 288, [19] (Spender J).

13. The word ‘connotation’ is not defined in the Act. In McCorquodale v Masterson, Kenny J observed that:

    The word “connotation” is defined in The Oxford English Dictionary (Oxford, 2^nd ed, 1989) as meaning:

    1. The signifying in addition; inclusion of something in the meaning of the word besides what it primary denotes; implication.

    …

    b. That which is implied in a word in addition to its essential or primary meaning.[12]

    [12] [2004] FCA 1247, [26] (emphasis in original).

14. In Pfizer Products Inc v Karam, Gyles J clarified that a connotation ‘is a secondary meaning implied by the mark’.[13] The connotation of a trade mark differs from its denotation insofar as the latter refers to ‘what the trade mark must be for the purposes of the [Act]’[14] – namely, a badge of origin for the applicant’s goods and/or services. As was explained in Primary Health Care Limited v Commonwealth of Australia:

    The connotation with which s 43 is concerned is a meaning secondary to that which is denoted by the subject of the application to the Registrar. In other words, the section is concerned with whether the mark the subject of the application (or a sign contained in the mark) connotes something other than a connection in the course of trade between the relevant goods or services and the person who applied (or intended to apply) it to those goods or services.[15]

    Connotation

    [13] [2006] FCA 1663, [53].

    [14] [2017] FCAFC 174, [10] (Greenwood J) (emphasis in original).

    [15] Ibid [113] (Katzmann J) (emphasis added).

15. The particulars of the SGPs for this ground were couched in similar terms. In essence, the Opponent’s position is that the Trade Mark connotes that the Goods and Services are for, or relate to, detecting or locating fire. However, the Goods and Services specifically exclude goods and services for use in connection with ‘fire detection, prevention or protection’. As such, the Opponent asserts that use of the Trade Mark in connection with the Goods and Services would be likely to deceive or cause confusion.

16. The Opponent’s Submissions drew attention to previous decisions which it alleged were analogous.[16] For example, in Westchester Media Media Co LP v Australian Polo Magazine Pty Ltd, the Registrar’s delegate opined that deception or confusion was likely to occur if ‘Polo Magazine’ was used in relation to magazines that did not contain material on the game of polo.[17] The Opponent similarly reasoned that use of ‘FIREFINDER’ in relation to goods and services which are not for or relate to detecting or locating fire would cause deception or confusion amongst consumers. At the hearing, counsel for the Opponent emphasised that even the Applicant acknowledged, albeit in relation to the s 60 ground of opposition, that the connotation arising from ‘FIREFINDER’ is that it pertains to goods ‘that finds fires’.[18]

    [16] See, eg, Commonwealth v Primary Health Care Ltd [2014] ATMO 92; Westchester Media Co LP v Australian Polo Magazine Pty Ltd [2000] ATMO 100; Seven-Up Co v Bubble Up Co Inc (1987) 9 IPR 259 (King J). Reference was also made to part 29.4 of the Australian Trade Marks Office Manual of Practice and Procedure which provides the example of a trade mark for ‘PLATYPUS – Meat free snack’ claiming ‘snack foods predominately made of meat’ as being a situation in which a ground for rejection under s 43 of the Act would be appropriate.

    [17] [2000] ATMO 100. The s 43 ground of opposition was ultimately not established because the goods in question were ‘a periodical/magazine relating to polo’. In the delegate’s opinion, ‘any likelihood of deception in this sense has been removed by the goods being suitably qualified as containing subject matter on the sport of polo’.

    [18] Applicant’s Submissions, [101].

1. The Applicant rejected the submissions advanced by the Opponent and highlighted that ‘FIRE’ has a multitude of meanings. For instance, ‘FIRE’ may be defined as ‘burning passion’, ‘vigour; energy’, ‘liveliness of imagination’ or ‘to dismiss (an employee) from a job’.[19] In the Applicant’s view, the Trade Mark ‘could connote a great many things’ including that the Goods and Services are for (or relate to) ‘finding inspiration’, ‘finding things with vigour or energy’ or ‘finding ways to dismiss (an employee) from a job’ (collectively ‘Alternative Connotations’).[20] On this basis, it asserted that ‘fire detection, prevention or protection is not the only, immediate, primary or natural connotation of the phrase FIREFINDER’.[21] Reliance was placed on Time Warner Entertainment Company LP v Just Spectacles Pty Ltd (‘Time Warner’),[22] which the Applicant says supports its proposition that ‘the lack of any evidence showing that the expression FIREFINDER is any more widely known or recognised than any other signification’ meant that consumers will not ‘necessarily link [the Trade Mark] to fire detection, prevention or protection’.[23]

   [19] Ibid [114].

   [20] Ibid [117].

   [21] Ibid [116].

   [22] [2003] ATMO 43 (‘Time Warner’).

   [23] Applicant’s Submissions, [120].

2. The Opponent’s position has considerable force. The Trade Mark is comprised of two unembellished and commonly understood English words, being ‘FIRE’ and ‘FINDER’. The conjoining of these words does not transform the Trade Mark into an invented term or imbue it with ambiguity. Rather, consumers will readily apprehend and intuitively pronounce the Trade Mark as two separate words. Based on their ordinary dictionary definitions,[24] I am satisfied that ‘FIRE’ and ‘FINDER’, as sequenced, possess a clear connotation that the purpose of the goods and services is for, or relates to, detecting or identifying fire (‘Identified Connotation’). Put simply, the Trade Mark connotes that the purpose of the goods and services is to find fire and the existence of this connotation is not disputed.[25] Where the parties diverge is with respect to the likelihood of the Identified Connotation being drawn from the Trade Mark relative to the Alternative Connotations.

   [24] See [16] of this decision.

   [25] Opponent’s Submissions, [54]; Applicant’s Submissions, [101], [116].

3. In my assessment, it is unlikely that ordinary consumers would conceive of the Alternative Connotations instead of or prior to the Identified Connotation. Given the nuances within the English language, I accept that different connotations can arise from the same trade mark depending on context. However, the simple fact that a trade mark can encompass more than one connotation does not preclude it from falling within the scope of s 43 of the Act. This much is plain from the text of s 43 which refers to ‘some connation’. Here, in the absence of additional words, the Alternative Connotations are fanciful or too obscure. I do not consider that any of these interpretations could be reasonably characterised as a connotation naturally conveyed by the Trade Mark. To this end, even if consumers were to deduce one of the Alternative Connotations, I am not satisfied that any of these would displace or eclipse the obviousness of the Identified Connotation.

4. As regards to Time Warner, this decision does not assist the Applicant. In that matter, the delegate was not persuaded that consumers would associate ‘MATRIX’, within the trade mark ‘MATRIX EYEWEAR’ for optical goods, to ‘THE MATRIX’ movie as opposed to the dictionary meanings of the word. Relevantly, the delegate commented that ‘the term MATRIX has a more commonplace signification that does not necessarily connote connection with the movie THE MATRIX’ and found that ‘the expression MATRIX in its movie guise as THE MATRIX is [not] any more widely known or recognised than any other signification’.[26] Time Warner is clearly distinguishable from the present proceeding insofar as it concerned an alleged connotation of association which did not overshadow the ordinary meaning of the word ‘MATRIX’. By contrast, the Identified Connotation arises solely from the dictionary definition of the words that constitute the Trade Mark and it is the most likely connotation to be drawn from same.

   Likely to deceive or cause confusion

   [26] Time Warner (n 22) [28]. The delegate was also not satisfied that the opponent had ‘engaged in merchandising in the same way as in cases where connotation has been found’.

5. The mere existence of the Identified Connotation in the Trade Mark is not sufficient to establish the s 43 ground of opposition. The Opponent must also demonstrate that because of the Identified Connotation, the use of the Trade Mark in relation to the Goods and Services would be likely to deceive or cause confusion. The expression ‘likely to deceive or cause confusion’ requires that the ‘probability of deception or confusion must be finite and non-trivial’ and that there ‘must be a “real tangible danger of its occurring”’.[27] It has been observed that ‘the threshold for confusion is not high’[28] and confusion can be established even if it does ‘not result in any deception or confusion that induces a sale or persists until the moment of sale’.[29]

   [27] Registrar of Trade Marks v Woolworths Ltd [1999] FCA 1020, [43] (French J).

   [28] Australian Postal Corporation v Digital Post Australia Pty Ltd [2013] FCAFC 153, [70] (North, Middleton and Barker JJ).

   [29] Vivo International Corporation Pty Ltd v Tivo Inc [2012] FCAFC 159, [115] (Nicholas J).

6. In the present proceeding, the Goods and Services contain various exclusions which the Applicant added to enable the acceptance of each application. Relevantly, the Goods contain the exclusion ‘none of the aforesaid goods for use in connection with fire detection, prevention or protection’ and the Services contain a similar exclusion, being ‘none of the aforesaid software and technology services for use in relation to fire detection, prevention or protection’.[30] An inspection of the examination history of each application reveals that these particular exclusions were added to overcome the s 41 ground for rejection that had been raised.

   [30] Emphasis added.

7. In the above circumstances, the Identified Connotation directly contradicts the goods and services to which the Trade Mark can be notionally used. By specifically excluding the goods and services that the Trade Mark described, the Trade Mark becomes misdescriptive of the resultant goods and services.[31] It follows that the use of ‘FIREFINDER’ in relation to goods and services which specifically exclude goods and services which are for, or relate to, fire detection or identification presents a ‘real tangible danger’ of consumers being misled into what they are purchasing. For this reason, because of the Identified Connotation, I am satisfied that use of the Trade Mark in relation to the Goods and Services is likely to deceive or cause confusion amongst consumers.

   [31] I note that the true scope of these exclusions extends beyond goods and services for detecting or identifying fire and instead encompasses all goods and services for use ‘in connection with’ or ‘in relation to’ fire detection, prevention or protection.

8. Accordingly, the s 43 ground of opposition has been established in respect of each application.

   Decision

9. Section 55 of the Act relevantly provides:

   Decision
   (1)  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.

10. The Opponent has established the s 43 ground of opposition in relation to all the Goods and Services. As such, I refuse to register trade mark numbers 2040616 and 2040617.

    Costs

11. Both parties have sought an award of costs. Costs usually follow the event. Accordingly, in respect of trade mark number 2040616, I award costs against the Applicant per s 221 of the Act in the amounts set out in Schedule 8 of the Regulations. In respect of trade mark number 2040617, I award reduced costs against the Applicant in the same manner as indicated in Hume Industries (Malaysia) Berhad v James Hardie & Coy Pty Ltd.[32]

    [32] [2001] ATMO 78.

    Nicholas Barbey
    Hearing Officer
    Delegate of the Registrar of Trade Marks
    14 November 2023

    
    

and Edelman JJ).