ARA Electrical Engineering Services Pty Ltd

[2011] ATMO 37

TRADE MARKS ACT 1995

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

Re:Trade mark application number 1394099(9, 37) - BASS ELECTRICAL ENGINEERING + Device - in the name of ARA Electrical Engineering Services Pty Limited and proposal to revoke acceptance.

Delegate:

Alison Windsor

Representation:

Applicant – Written submissions by Michael Kobras of Schweizer Kobras, lawyers and notaries.

Decision:

2011 ATMO 37

S38 – proposal to revoke acceptance – grounds for rejection under provisions of s44 – appropriate in the circumstances to revoke acceptance – acceptance to be revoked.

Background

1. ARA Electrical Engineering Services Pty Limited (‘the applicant’) filed an application to register a trade mark under the provisions of Trade Marks Act 1995 (‘the Act’).  The examiner did not raise any grounds for rejection against the application and it was accepted for possible registration.  Current details of the application follow:

Application no: 1394099

Filed on:  18 November 2010

Goods/services:              Class 9:  Enclosed switchboards; fitted electrical switchboards; switchboards; switchboards for telephone exchanges; telecommunications switchboards; telephone switchboards; automated control panels; control panels comprising electrical apparatus; electrical control panels; electrical control panels for fire alarm systems; electricity control panels; fitted electric control panels; operation control panels (electric); electric control installations; electronic control installations; electronic data communications installations; fire detection installations; fire protection installations; apparatus for use in the automation of industrial robots; numerical control apparatus for industrial automation

Class 37:  Installation of security systems; maintenance and servicing of security alarms; fire alarm installation and repair; installation [of] fire detection systems; maintenance and servicing of fire alarm systems; building project management; electric appliance installation and repair; electrical apparatus installation; installation [of] fire detection systems; installation of security systems; maintenance, installation and repair of electrical items and equipment; electrical engineering services (construction); maintenance of electronic testing devices

Trade mark:                (‘the trade mark’)

1. The examination file is not clear on when or how it was decided that two earlier dated trade marks on the register, which had been considered by the examiner not to give rise to a ground for rejection under the provisions of section 44, should have done so. However, on 7 February 2011, an examination team leader issued a letter which notified the applicant of her opinion that the application should not have been accepted, and that she was proposing to revoke acceptance, because of the existence of two earlier-dated trade mark registrations owned by other parties which included goods and services which were similar or closely related. Relevant details of those trade marks appear in the following table :

Regn No	Trade Mark	Priority date	Goods/services
1089087	BASS ELECTRIC	5 December 2005	Class 9:  Computer software; pre-recorded video and audio cassettes, DVD’s and discs; sunglasses; electronic games, magnets including souvenir magnets; safety apparatus and equipment including clothing
1367811	BASS	18 June 2010	Class 37:  Building construction (fencing), maintenance, erection and repair; erection of security fences; construction, maintenance and repair information and advisory services.

1. The team leader’s reasons for considering that the provisions of section 44 should have been applied adversely to the application are quoted below:

1089087

·     Your trade mark closely resembles the earlier trade mark because the major memorable feature of both trade marks is the word BASS. Even though your trade mark includes the words ELECTRICAL ENGINEERING [and] a diamond and the earlier registered trade mark contains the word ELECTRIC, consumers are likely to believe that the goods and/or services provided under both trade marks come from the same trade source.

AND

·     The goods/services are similar because your claims in Class 9 for electrical control panels for fire alarm systems; fire detection installations; fire protection installations are similar to the claims of the earlier registered trade mark for safety apparatus and equipment including clothing  in the same class.

AND

·     The goods/services are similar because your claims in Class 37 for fire alarm installation and repair; installation fire detection systems; maintenance and servicing of fire alarm systems; electric appliance installation and repair; electrical apparatus installation; installation fire detection systems; installation and repair of electrical items and equipment are similar to the claims of the earlier registered trade mark for safety apparatus and equipment including clothing in class 9 as services relating to the installation, maintenance, repair, and servicing of particular items are considered closely related to the goods themselves.

1367811

·     Your trade mark closely resembles the earlier trade mark because the major memorable feature of both trade marks is the word BASS. Even though your trade mark includes the words ELECTRICAL ENGINEERING and a diamond, consumers are likely to believe that the goods and/or services provided under both trade marks come from the same trade source.

AND

·     The goods/services are the same/similar because your claim in Class 37 for building project management is similar to the claims of the earlier registered trade mark for building construction (fencing), maintenance, erection and repair; erection of security fences; construction, maintenance and repair information and advisory services in the same class.  Additionally, all of the remaining services you have claimed in class 37 are the same/similar to the claims of the earlier registered trade mark for building construction (fencing), maintenance, erection and repair; erection of security fences; construction, maintenance and repair information and advisory services in the same class as the respective services are either related to security or, in the case of many of the services claimed by 1367811, are not restricted to any particular field and could be provided in the same/similar field or for the same/similar purpose.

AND

·     The goods/services are similar because your claims in Class 9 are similar to the unrestricted claims of the earlier registered trade mark for maintenance, erection and repair; maintenance and repair information and advisory services as the claim by 1367811 for maintenance, erection and repair is not restricted to any particular field or purpose and information and advisory services and services relating to the maintenance and repair of particular items are considered closely related to the goods themselves.

1. The letter allowed the applicant one month in which to apply to be heard, to request a written decision or to withdraw the application.  On 25 February 2011 the application filed a request for a decision on the written record, accompanied by some information in support of the application.

2. I have been delegated by the Registrar of Trade Marks to decide this matter and my decision and reasons for that decision follow.

Legal framework

1. Section 33 of the Act governs acceptance and rejection of an application after its examination. Subsection 33(1) provides that the Registrar must accept the application for possible registration if satisfied that the application has been made in accordance with the Act and there are no grounds for rejecting it. Subsection 33(3) provides the alternative in that the Registrar must reject the application if satisfied that it has not been made in accordance with the Act or if there are grounds under the Act for rejecting it.

2. Section 38 of the Act refers to revocation of acceptance and provides the following:

   (1)  Before a trade mark is registered, the Registrar may revoke the acceptance of the application for registration of the trade mark if he or she is satisfied that: 

   (a) the application should not have been accepted, taking account of all the circumstances that existed when the application was accepted (whether or not the Registrar knew then of their existence); and

   (b) it is reasonable to revoke the acceptance, taking account of all the circumstances.

   (2)  If the Registrar revokes the acceptance: 

   (a) the application is taken to have never been accepted; and

   (b) the Registrar must examine, and report on, the application as necessary under section 31; and

   (c) sections 33 and 34 again apply in relation to the application.

3. Section 38 provides for the Registrar to take account of any circumstances that existed which should have prevented acceptance of a trade mark. It is important to note that the legislation as it currently reads, and unlike earlier forms, does not limit the Registrar in what she may consider. Previously the ambit of the Registrar was construed narrowly and focused on those cases involving ‘error and omission’ or ‘special circumstances’. This, however, is no longer the case.

4. My decision in this case goes to the issue of whether the original acceptance was unsound, taking into account all of the circumstances that existed at the time the application was accepted and whether, in the face of those circumstances, it is now reasonable to revoke the acceptance.  The circumstances include those of which the Registrar was cognisant, as well as any unknown but relevant circumstances which existed at the time. 

Discussion

1. This matter will be initially determined by a consideration of whether the provisions of sections 44(1) and/or 44(2) of the Act should have been adversely applied to the application during examination, thereby preventing its acceptance at that time. If I find that section 44 does apply in this case, then I will be required to decide if it is reasonable, in all the circumstances, to revoke the acceptance and return the application for further examination.

Section 44 – identical etc trade marks

1. Section 44 relevantly provides:

   Identical etc. trade marks

   44(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 s           imilar 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.

   Note 1:  For deceptively similar see section 10.

   Note 2:  For similar goods see subsection 14(1).

   Note 3:  For priority date see section 12.

   Note 4:  The regulations may provide that an application must also be rejected if the trade mark is substantially identical or deceptively similar to, a protected international trade mark or a trade mark for which there is a request to extend international registration to Australia:  see Part 17A.

   44(2) Subject to subsections (3) and (4), an application for the registration of a trade mark (applicant's trade mark) in respect of services (applicant's services) 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 services or closely related goods; or

   (ii) a trade mark whose registration in respect of similar services or closely related goods 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 services is not earlier than the priority date for the registration of the other trade mark in respect of the similar services or closely related goods.

   Note 1:  For deceptively similar see section 10.

   Note 2:  For similar goods see subsection 14(2).

   Note 3:  For priority date see section 12.

2. Deceptive similarity is defined at section 10 of the Act, and provides:

   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”. 

3. There is no question but that the two registrations shown in the table in paragraph 2 have earlier priority dates than that of the application. If the provisions of section 44 are applicable, I need to decide if the application and the conflicting trade marks are substantially identical or deceptively similar, as well as deciding whether or not the goods and services in question are similar or closely related. It is appropriate to decide the latter issue first.[1]

   [1] Registrar of Trade Marks v Woolworths (1999) 45 IPR 411 at 425 (the Metro case)

Similarities between goods and services specifications

1. Section 14 of the Act provides the following definition:

   Section 14. Definition of similar goods and similar services

   (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.

2. I note here that the Act provides no guidance in respect of closely related goods and services. However, some guidance may be found in cases such as Caterpillar Loader Hire (Holdings) Pty Ltd v Caterpillar Tractor Co (1983) 48 ALR 511; 1 IPR 265 (the Caterpillar case) where Lockhart J listed some examples of goods and closely related services.  He said (at ALR 522; IPR 276):

   … It is obvious that there is likely to be confusion if substantially the same or deceptively similar trade marks are used by different proprietors, one for goods and the other for services, where the goods and services are closely related. Examples that present practical difficulties are the sale of goods such as data processing equipment and the sale of programs for their operation; the sale of curtains and furnishing materials on the one hand, and the sewing of curtains on the other, as interior decorators often sell curtains and perform the service of sewing; the sale of clothes on the one hand and tailoring on the other because the service of custom tailoring is frequently provided in addition to the sale of ready-made clothes; and the sale of educational material on the one hand and educational services (language courses, home study programs) on the other.

3. French J in Metro also considered this matter and said at 424:

   … The relationships may, and perhaps in most cases will, be defined by the function of the service with respect to the goods. Services which provide for the installation, operation, maintenance or repair of goods are likely to be treated as closely related to them. Television repair services in this sense are closely related to television sets as a class of goods. A trade mark used by a television repair service which resembles (to use the language of s 10) the trade mark used on a prominent brand of television sets could be deceptively similar for suggesting an association between the provider of the service and the manufacturer of the sets.

Registration 1089087

1. This registration claims goods in class 9, including “safety apparatus and equipment including clothing”.  The application also includes goods in class 9, including the following:  “electrical control panels for fire alarm systems; fire detection installations; fire protection installations”.  The team leader contended, and I agree, that fire alarm and fire detection controls and installations are goods similar to or the same as safety apparatus and equipment. 

2. In respect of the applicant’s services, and keeping in mind the previous comments from both Caterpillar and Metro, the installation, repair, maintenance and servicing of fire alarm and fire detection systems must be seen as services closely related to safety apparatus and equipment appearing in the registration.  I am accordingly satisfied that the application covers both goods of the same description as, and services closely related to, the “safety apparatus and equipment” covered by the registration.

Registration 1367811

1. In this case the issue, as set out in the team leader’s letter, is not as clear-cut as with registration 1089087 but I am satisfied that there are similar services involved in respect of the applicant’s claim for the item ‘building project management’ in class 37.  This term is not qualified in any way, and it therefore appears to be relevant to all the services claimed by the registered owner in class 37.  I am satisfied that there are similar services in class 37 in both application and registration. 

Comparison of trade marks

1. In Metro, French J said (at 425 and 426):

   In the end there is one practical judgement to be made.  Whether any resemblance between different trade marks for goods and services renders them deceptively similar will depend upon the nature and degree of that resemblance and the closeness of the relationship between the services and the goods in question.

   …

   For there to be a deceptive similarity between a service mark and a mark in respect of closely related goods the degree of resemblance must be such that the service mark is “likely to deceive or cause confusion”.  The use of the word “likely” in this context does not import a requirement that it be more probable than not that the mark has that effect.  The probability of deception or confusion must be finite and non-trivial.  There must be a “real tangible danger of it occurring”…. 

2. I am satisfied that, according to the often quoted test articulated in the Shell case,[2] on a side by side comparison there are sufficient differences between the trade marks under comparison here that they are not substantially identical.  Deceptive similarity, however, is a different matter.

   [2] See Shell Co (Aust) Ltd v Esso Standard Oil (Aust) Ltd (1963) 109 CLR 407 at 414-415 per Windeyer J. (‘Shell’)

3. In Shell the applicable test is articulated as follows:

   On the question of deceptive similarity, a different comparison must be made from that which is necessary when substantial identity is in question. The marks are not now to be looked at side by side. The issue is not abstract similarity, but deceptive similarity.

   Therefore the comparison is the familiar one of trade mark law. It is between, on the one hand, the impression based on recollection of the plaintiff’s mark that persons of ordinary intelligence and memory would have; and, on the other hand, the impressions that such persons would get from the defendant’s television exhibitions.

4. Each of these trade marks has as its major (or only) memorable component the word BASS. The additional words of the trade marks of the application and of 1089087 appear to be descriptive words. I am satisfied that that there is a real tangible danger of deception or confusion resulting from registration of the application. I am therefore satisfied that grounds for rejecting the application exist under the provisions of section 44 of the Act.

Is it reasonable, in all the circumstances, to revoke acceptance?

1. Having found that a ground for rejection applies to the application, I now must decide if, taking account of all the surrounding circumstances, it is reasonable for me to revoke acceptance of the application. 

2. The examiner made notes on the file that she had considered both of these applications, but had decided that although the trade marks were similar, the goods and services concerned were “different”.[3]  The question to be asked is whether the proposal to revoke points merely to a difference of opinion between staff members, a circumstance which would not reasonably support revocation.

   [3] I take this to mean that she considered the goods and services not to be similar, the same or closely related.

1. When assessing the risk of deception or confusion relevant to a section 44 consideration, it is important to remember that both trade marks may potentially be used in a “normal and fair manner”[4] for all the goods or services covered by the registration or application in question – the matter of ‘notional use’.  During examination of an application, it is necessary to consider the statutory rights of use of an earlier dated proprietor and any enquiry as to any actual modes of use discovered via research is appropriate only as a way of illuminating that enquiry. 

   [4] Per Evershed J in Smith Hayden &Co Ltd's Application (1946) 63 RPC 97 at 101

2. This is relevant to the case under consideration where internet research demonstrated that registration 1089087 appeared to be used only in respect of goods related to fishing, including a fishing competition.  The examiner decided, quite erroneously, that this was sufficient information to distinguish the applicant’s goods and services from those of the registration.  Similarly, in respect of registration 1367811, she considered that because all the services could be seen to relate to fencing, building project management services in particular were not similar services.

3. It is clear to me that the more senior staff members have taken into account the matter of the notional use, and as a result, have determined that there are similar goods and closely related services involved here.  I have set these out earlier in this decision.  Under these circumstances, this is not a case of a mere difference of opinion, but an appropriate re-assessment of a flawed examination process. 

4. This brings me to the additional information which the applicant has provided.  The applicant states that it and the owners of the registered trade marks operate in different markets which do not overlap; that it has prior and current substantial use of its trade mark for a period of more than eleven years; and that there is no evidence of any confusion in the public regarding the three parties.  Also supplied are five examples of the trade mark in use on invoices and correspondence, one dated in 1999 and the others in 2002.

5. While this information shows that the applicant has used its trade mark to some extent, the evidence was not provided in declaratory form, and more detail would be appropriate in order to allow consideration of the provisions of subsection 44(3) and/or 44(4).  Revoking acceptance will allow the applicant time to provide evidence of use in an appropriate form and to have its scope, merit and weight considered by an examiner before the application could be re-accepted. 

6. I am satisfied that the surrounding circumstances clearly point to an acceptance which is flawed and which should be revoked and the application returned to the examination section for further consideration.

Decision

1. I revoke the acceptance of application 1394099.  If the Registrar has been served with a notice of appeal within one month of this decision, I direct that re-examination of the application shall not occur until the appeal has been discontinued, or in the event of a decision of the court, that the application be subject to that order. 

Alison Windsor

Hearing Officer

Trade Marks Hearings

10 May 2011