Associated Kiln Driers Pty Ltd v Hyne & Son Pty Ltd

[2019] ATMO 25

TRADE MARKS ACT 1995

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

Re:Opposition by Associated Kiln Driers Pty Ltd to registration of trade mark application 1736258 (19) - T2 - in the name of Hyne & Son Pty Ltd.

Delegate:	Iain Campbell Thompson
Representation:	Opponent: Phillips Ormonde Fitzpatrick Applicant: The Lantern Legal Group Pty Ltd trading as Harwood Andrews
Decision:	2019 ATMO 25 Trade Marks Act 1995 Section 52 opposition to registration - section 41 - evidence does not establish opposition to the registration of the Trade Mark – if no appeal, registration to proceed.

Decision

1. In these proceedings under the Trade Marks Act 1995 (‘the Act’) Hyne & Son Pty. Ltd. (‘the Applicant’) has applied to register the trade mark which appears below:

Application No:         1736258

Filing Date:                20 November 2015

Goods:Class 19: Timber for building; sawn timber; treated timber; timber building materials in this class treated for pest and weather resistance

(‘the Goods’)

Trade Mark:               T2
  (‘the Trade Mark’)

Endorsement:             Evidence provided under subsection 41(3).

1. The Trade Mark was examined as is required by section 31 of the Act and advertised as accepted for possible registration on 8 December 2016 in the Australian Official Journal of Trade Marks.

2. On 8 February 2017, Associated Kiln Driers Pty Ltd (‘the Opponent’) filed a Notice of Intention to Oppose the registration of the Trade Mark.

3. On 8 March 2017, the Opponent filed a Statement of Grounds and Particulars detailing a single ground of opposition to registration under section 41 of the Act.

4. On 11 April 2017, the Applicant filed a Notice of Intention to Defend.

5. Thereafter, the opposition process under the Trade Mark Regulations 1995 (‘the Regulations’) has followed the following timetable:

   20 July 2017, the Opponent filed Evidence in Support of the opposition – declaration of:

   David McGinness, Chief Risk Officer of the Opponent, made on 20 July 2017, with Exhibits DM1 to DM17

   29 August 2017, the Applicant filed Evidence in Answer, the declarations of:

   Jeremy Mead, Marketing Manager of the Applicant, made on 28 August 2017, with Exhibits 1 to 6; and,

   Michael O’Donnell, a Partner of the firm Phillips Ormonde Fitzpatrick, made on 29 August 2017 with one exhibit, that being the declaration of:

   Alaric (Ric) Sinclair, Managing Director of Forest and Wood Products Australia Limited, made on 27 April 2016.

   15 January 2018 – written submissions of the Applicant;

   28 February 2018 – written submissions of the Opponent; and

   4 January 2018 – further written submissions of the Applicant.

6. Both parties have been advised of their right to be heard or to make written submissions.  As may be apprehended, both parties have made written submissions – the Opponent by its representatives Harwood Andrews and the Applicant by its representatives Phillips Ormonde Fitzpatrick.

Onus and Relevant Date

1. The Opponent bears the onus of establishing a ground of opposition which is detailed in the Statement of Grounds and Particulars on the balance of probabilities.[1]  In so observing, I note that the Applicant has submitted that:

   This is an opposition to registration of a trade mark. The application has been accepted. The onus is therefore on the Opponent to reverse that decision. The standard is to the balance of probabilities. The onus requires that the Delegate must be satisfied on the balance of probabilities that the acceptance is in error and should be overturned. It is not simply a matter of the Delegate forming a view that the Opposed Trade Mark should or should not be registered. This is a particularly relevant factor in this case, as the application has been assessed and accepted by the Examiner on the basis of evidence of use filed by the Applicant.

   [1] Pfizer Products Inc v Karam [2006] FCA 1663; 237 ALR 787; (2006) 70 IPR 599; [2006] AIPC 92-146 per Gyles J at [6] to [26]; Telstra Corporation Ltd v Phone Directories Co Pty Ltd [2015] FCAFC 156 at [132] to [133].

2. The above is quite plainly not the case as any adoption of the onus as suggested by the Opponent would make this decision, at least in part, a review of the examiner’s decision to accept the Trade Mark for possible registration and turn this decision into one paralleling the scheme under section 38 of the Act – it invites an approach which downplays the significance of any evidence filed by the parties that is now before the Registrar and which was not before the examiner and might be perceived as increasing the onus which is on an opponent. This is not a review of the decision to accept the Trade Mark for possible registration; it is a fresh and independent assessment of the ground in the light of the evidence filed by the parties, the submissions of the parties, and the provisions of section 41 of the Act. It follows that the fact an examiner accepted the Trade Mark for possible registration is not a factor that I will consider.

3. The relevant date (‘the Relevant Date’) at which the grounds must be considered is the filing date[2] of the opposed application.

Evidence

[2] Southern Cross Refrigerating Co v Toowoomba Foundry Pty Ltd [1953] HCA 73; (1954) 91 CLR 592.

The Opponent

1. Mr McGinness states that the Opponent is:

   … a privately-owned, integrated forestry and timber processing company based in the South-Western districts of the State of Victoria. [The Opponent] was founded in 1955 and has since established itself as the largest sawmilling company in Victoria, with a strong history in the Colac-Otway region.

   [The Opponent] owns and maintains approximately eight thousand (8,000) hectares of radiata pine plantations. Our business operations include two (2) sawmills, which process an estimated six hundred and eighty thousand cubic meters (680,000m³) per annum. We also maintain three post and preservation businesses, an in-house engineering and trucking division and export operations from three (3) locations.

   Our business is chiefly recognised as a saw mill and processing plant. We do not sell direct to members of the public, but have a client network including (but not limited to) timber wholesalers and truss & frame manufacturers. Typical end-use for AKO timber can include the structural framing of residential and commercial buildings, roof trusses, outdoor structures and landscaping, and packaging.

2. Mr McGinness explains that the Australian Timber Preservation Standards are set by Australian Standard AS1604 which specifies the industry requirements for timber preservation that will protect timber used in Australia from local species of decay organisms and insect pests including termites.  Treatment specifications vary depending on the type of timber (hardwood, softwood), its durability, its exposure and its service requirements.

   The Standards consists of a system for determining the level of treatment the timber requires (based on exposure, service conditions and biological hazard). The system is known as the hazard class system for timber and consists of a number prefixed with the letter ‘H’, identifying the degree or class of hazard (Timber Hazard Class System). Each ‘hazard class’ identifies a certain degree of decay or attack that timber could be exposed to. These range from H1 (lowest) to H6 (highest). The Timber Hazard Class System is an industry standard in the building/construction and timber industries.

   Below is a basic reproduction of the Timber Hazard Class System, and attached here and marked as Exhibit DM01 is a guidance sheet from the New South Wales Environment Protection Authority detailing the system in more detail:

Hazard class	Exposure environment	Biological hazards	Typical uses
H1	Inside or above ground, completely protected from the weather.	Insects other than termites	Susceptible framing, flooring, furniture, interior joinery
H2	Inside, above ground.	Insects including borers and termites	Framing, flooring and similar, used in dry situations
H3	Outside, above ground	Moderate  decay, borers and termites	Weatherboard, fascia, pergolas (above ground),  window joinery, framing, decking
H4	Outside in the ground	Severe decay, borers and termites	Fence posts, garden wall less than 1m high, greenhouses, pergolas (in ground), landscaping timbers
H5	Outside and in contact with ground or fresh water and/or where the critical use requires a high degree of protection	Very severe decay, borers and termites	Retaining walls, piling, house stumps, building poles, cooling tower fill
H6	Subject to prolonged immersion in  sea water	Marine wood  borers and decay	Boat hulls, marine piles, landing steps, similar

Treated timbers that are used in inside or above ground building frames or flooring [south of the Tropic of Capricorn] must achieve a hazard level of at least H2 or H2F to be successfully protected against termites and borers. This requirement is widely known, and can be found published on many industry websites. The H2 or H2F hazard level therefore plays a key role in establishing the quality and service life of timber. It is also a key requirement for all builders when selecting the timber for their projects and therefore is a key product for our business.

1. Mr McGinness goes on to explain his view of the connection between the signs H2 and T2.  He states:

   It is common practice to use the level 2 from the Timber Hazard Class System or H2 when describing termite-resistant timber. This reference allows for easy identification.

   To achieve H2, timber is commonly treated using one of two chemicals: Tanalith T RTU or Vacsol T Timber.

   The chemical Vacsol T Timber Insecticide (Vacsol T) is a water-based solution that is used on commercial timber such as radiata pine to protect it from wood-eating insects or fungal decay.  It incorporates a synthetic pyrethroid insecticide called permethrin, and is approved under the Standards. Another popular chemical compound available to the Australian market for this purpose is the Tanalith T RTU (Tanalith T). Many traders use these chemicals to meet the H2 or H2F treatment requirement for termite-resistance.

   You will see that these two chemicals reference the letter T. It is my experience that the letter T in the name of these chemicals stands for termites.

   As the popularity of these chemicals has increased over the years, the letter ‘T’ used in the name of these chemicals has come to be associated with the Timber Hazard Class System or H2. As a result. ‘T2’ has become the short trade expression used by builders and tradesmen alike to identify wood that is protected against attack from termites and other insects, combining the “T” from the chemical and the number 2 from the Timber Hazard Class System.

2. Mr McGinness gives examples of what he asserts are descriptive/generic uses of the sign T2 with supporting exhibits.  For the sake of brevity, I observe that these examples fall into four general headings, these being industry representative and/or research bodies; construction firms, other timber traders; and, trade magazines.  A few examples of the several given by Mr McGinness will suffice at this juncture:

   … the FAQ section of the WoodSolutions website ( entitled “Building codes & compliance”.  WoodSolutions is an industry initiative designed to provide independent, non-proprietary information about timber and wood products to professionals and companies involved in building design and construction. WoodSolutions is resourced by Forest & Wood Products Australia Ltd, a not for profit company that provides national research and development and promotional services to the Australian forest and wood products industry. Exhibit DM02 sets out the following question and answer:

   “Question: Does AS1684 [the Australian government standard covering Residential Timber Framed Construction] specify that all roof and ceiling structures have to be built with H2 treated structural pine?

   Answer: There is no requirement in AS 1684 for houses to be built with T2 treated pine.”

   that although the question does not reference T2, the answer to the question about H2 replaces H2 with T2;

   that people in the trade use H2 and T2 interchangeably and the use of T2 is understood in the industry to mean H2, that is, termite treatment under the Timber Hazard Class System of H2;

   that as this exchange was published on the WoodSolutions website which is supported by industry bodies and technical associations including Forest & Wood Products Australia Ltd, it is a typical example of trade speak relating to the interchangeability of H2 and T2; and

   if industry bodies like WoodSolutions are using H2 and T2 interchangeably, it is reasonable that the rest of the industry and related industries also have a legitimate need to use T2 to refer to termite treated timber.

3. As an example from a trade journal Mr McGinness provides:

   Attached here and marked Exhibit DM05 is an article from the Autumn 2012 edition of “Building Connection” magazine entitled “The truth about termites”. The Building Connection magazine is a leading industry guide for building and renovation professionals and provides the market with technical advice. It is therefore an important industry magazine offering guidance to traders and consumers. Exhibit DM05 sets out in paragraph 3 of page 47, the following statement:

   “I’d use H2 or T2 treated timber or steel frames”;

   that the author considers H2 and T2 treated timber to be one and the same;

   that the author, as the founder of the Institute of Building Consultants and experienced in the industry, personally uses H2 and T2 interchangeably; and

   it is reasonable that others in the trade have a legitimate need to use the term T2 to refer to termite treated timber.

4. An example of the several usages by construction firms given by Mr McGinness is:

   Attached here and marked Exhibit DM07 are two brochures published by Morcraft Homes on their website Morcraft Homes is a building company in Mooloolaba, Queensland. Exhibit DM07 sets out at paragraph 2 of the brochure entitled ‘Our Building Methods’, the following statement:

   “We use stress-graded T2 and H2 termite-treated timber for all stud wells and trusses, and their design is engineer-certified to give long-term quality”;

   at bullet point 10 of the brochure entitled ‘Inclusions Checklist’, the following statement:

   “All these items are standard and included in every Morcraft Home ..... [bullet point 10] Termite treated house frame and trusses H2/T2 timber”.

   both documents show how Morcraft Homes use H2 and T2 interchangeably and together ensuring that customers who are familiar with either terms would recognise the product as timber products are treated to the class 2 Timber Hazard Class System; and

   that given this business uses T2 to refer to termite treated timber, it is reasonable that others in the trade have a legitimate need to use the term T2 to refer to termite treated timber.

5. And an example of use by a timber merchant given by Mr McGinness is:

   Attached here and marked Exhibit OM12 is a Safety Data Sheet (SDS) published by Timberlink Australia on their website for their “Tanalith Ti (lmidacloprid) Treated Plantation Softwood” product dated 22 August 2016. Timberlink Australia is an independent plantation pine manufacturer with a range that includes termite and EHB[3] protected framing. Exhibit OM12 sets out:

   on page one of the SDS, a list of synonyms for ‘Tanalith T’ treated plantation softwood including the following:

   H2 treated timber framing and T2 treated timber;

   the main toxic ingredient in the product is Tanalith T;

   a clear statement that H2 and T2 are the same product and mean the same thing, that is, termite-treated timber that meets the Timber Class Hazard System of H2 using Tanalith T; and

   that given this business uses T2 to refer to termite treated timber, it is reasonable that others in the trade have a legitimate need to use the term T2 to refer to termite treated timber.

   [3] European house borer.

The Applicant

1. Mr Mead, in his declaration for the Applicant, states:

   Timber durability is rated according to its natural resistance to attack by wood destroying fungi and insects. Such ratings are based on the testing of stakes and poles embedded in the ground and on expert opinion of historical performance. Timber is treated according to hazard classes. In the timber industry, hazard classes can be H1, H2, H3, H4, H5 or H6.

   […]

   [The Applicant] coined the T2 trade mark to use in relation to hazard class 2 or H2 timbers.

   The T2 trade mark was first used[4] in Australia in 2003 in relation to timber for building, sawn timber, treated timber and building materials treated for pest and weather resistance. The trade mark has been in continuous use since that time primarily in Victoria, South Australia, Queensland, New South Wales and the ACT.

   [The Applicant] has expanded its use of the T2 trade mark to treated timber suitable for use in different geographical locations. In particular, [the Applicant] uses T2 BLUE and T2 RED as a means of visual identification in respect of H2-F and H2 treated timber respectively. The colours reflect the products’ suitability for use in different geographical locations.

   [The Applicant] has actively promoted the T2 trade mark since 2003 by means of advertisements in trade magazines such as Build IT and Timber Trader, at trade shows and events, including Mitre 10 Conferences, Porters Trade Night, FTMA National Conference, Bunnings National Trade Shows, Natbuild Conference, Frame Australia, Danks Conference, HBT Conference, NHS Newcastle Trade Show, Faggs Trade Show, Bowens Trade Expo and Bretts Expo, in brochures, pamphlets, promotional items and point of sale signs and offers.

   [The Applicant] has also promoted the T2 trade mark and the goods in relation to which it is used in agricultural and construction trade media, via websites, television commercials, radio commercials and various events and forums.

   [4] Although it is not expressly stated, I infer that Mr Mead asserts that the first use of the Trade Mark in Australia was by the Applicant.

2. Mr Mead exhibits to his declaration examples of the advertising and promotion of the Trade Mark and also the annual expenditure on advertising and promotion by the Applicant of the Trade Mark, and annual revenue to the Applicant under the Trade Mark in Australia.

3. I note that the exhibits to Mr Mead’s declaration shows asserted use of trade marks in the following forms (or in forms substantially identical to those forms):

(‘the Hyne Blue Logo’)

HYNE T2

(‘the Hyne T2 Word Mark’)

(‘the Hyne T2 Logo’)

T2 Blue

(‘the T2 Blue Word Mark’)

Hyne T2 Blue

(‘the Hyne T2 Blue Word Mark’)

(‘the T2 Blue Logo Trade Mark’)

(‘the T2 Red Trade Mark’)

(‘the Blue Trade Mark’)

1. Before leaving this discussion of Mr Mead’s declaration I will note that there are several references[5] in the exhibits thereto to a timber treatment under the trade mark TANALISED which is registered in Australia under, inter alia:

   [5] For example, at page 65.

Registration No:         96975

Owner:  Arch Timber Protection Limited
Priority Date:             10 Nov 1948
Goods:  Class 19: Impregnated timber (sawn or otherwise manufactured),

Trade Mark:               TANALISED

Registration No:         1003871

Owner:  Arch Timber Protection Limited
Priority Date:             26 May 2004

Goods/Services:         Class 1: Chemical products used in industry, science, agriculture, horticulture, forestry, chemical substances for preserving timber and timber products

Class 2: Paints, varnishes, lacquers; preservatives against rust and against deterioration of wood; wood preservative chemicals and compositions; protective surface coatings including coatings to protect against stains, mould and wood deterioration; raw natural resins; sealant in the nature of paints or wood preservatives
Class 19: Non-metallic building products including timber and wood products; treated timber including preservative-treated timber products

Class 40: Services rendered in the treatment and preservation of timber and wood products

Trade Mark:               TANALISED

1. In his declaration Mr Sinclair, who is Managing Director of Forest and Wood Products Australia Limited (‘FWPA’) states:

   FWPA is a not-for-profít company being a service provider to the forestry and wood industries, FWPA invest in research and development the results of which are provided to the forest and wood products industry in Australia. FWPA seeks to improve both the competitiveness and sustainability of the forest and wood products industry by means of innovation and investment in effective and relevant research and development.

   […]

   The commonly used designation for indicating that timber used for inside or above ground framing, flooring, etc. which is protected from wetting, borers and terminates [sic] is H2.

   ln my opinion, the designation T2 is associated exclusively with the timber and timber products of [the Applicant].

Section 41

Statement of Grounds and Particulars

1. In its Statement of Grounds and Particulars the Opponent asserts:

   1.1. As at 20 November 2015 (Application Date), the [Trade Mark] was not inherently adapted to distinguish the goods claimed in class 19, from the goods of other persons because:

   1.1.1. the Trade Mark, is not to any extent inherently adapted to distinguish; and

   1.1.2. notwithstanding any use with respect to the goods claimed in class 19 prior to the Application Date, does not in fact distinguish any such goods as being those of the Applicant.

   Particulars

   1.1.2.1. The Australian Government’s Department of Agriculture and Water Resources requires timber preservative treatments to be applied to hard and soft woods for the purposes of protecting local species of wood from decay organisms and insect pests. The Australian Standard 1604 for determining the level of treatment consists of a hazard class system that identifies the degree of the hazards. The number “2” in the [Trade Mark] refers to the biological hazard number 2 for protection against borers and termites, which is typically used in building frames and flooring in dry conditions.

   1.1.2.2. The letter “T” contained in the [Trade Mark] signifies and/or refers to “termites”, “timber”, the “treatments” or the name of the chemical that are applied to the goods claimed in class 19.

   1.1.2.3. T2 therefore, is not inherently adapted to distinguish the class 19 goods from those of other traders.

   1.1.2.4. Other traders around Australia, have prior to the Application Date, used (and continue) to use T2 to describe and refer to timber products that have been treated with chemicals for borers and termite resistance.

   1.1.2.5. T2 therefore, does not distinguish any of the class 19 goods from goods used by other traders.

   1.2 If at the Application Date, the [Trade Mark], was to some extent but not sufficiently, inherently adapted to distinguish the goods claimed in class 19, from the goods of other persons, notwithstanding the combined effect of:

   1.2.1. the extent to which it is inherently adapted to distinguish the goods claimed in class 19 from the goods of other persons; and

   1.2.2. the Applicant’s use of the Trade Mark; and

   1.2.3. other circumstances;

   the Trade Mark does not and will not so distinguish the goods claimed in class 19 from the goods of other traders.

   Particulars

   1.2.3.1. The Opponent refers to and repeats the particulars contained in paragraph 1.1 above.

2. I note now that the ground as stated is not that the sign T2 (being a combination of a letter and numeral) lacks inherent adaption to distinguish the Goods per se but rather that it is understood to be descriptive of the nature of the Goods and is used by other traders in respect of the Goods.

Discussion

1. Section 41 of the Act provides:

   41Trade mark not distinguishing applicant’s goods or services

   (1)An application for the registration of a trade mark must be rejected if the trade mark is not capable of distinguishing the applicant’s goods or services in respect of which the trade mark is sought to be registered (the designated goods or services) from the goods or services of other persons.

   Note:For goods of a person and services of a person see section 6.

   (2)A trade mark is taken not to be capable of distinguishing the designated goods or services from the goods or services of other persons only if either subsection (3) or (4) applies to the trade mark.

   (3)This subsection applies to a trade mark if:

   (a)the trade mark is not to any extent inherently adapted to distinguish the designated goods or services from the goods or services of other persons; and

   (b)the applicant has not used the trade mark before the filing date in respect of the application to such an extent that the trade mark does in fact distinguish the designated goods or services as being those of the applicant.

   (4)This subsection applies to a trade mark if:

   (a)the trade mark is, to some extent, but not sufficiently, inherently adapted to distinguish the designated goods or services from the goods or services of other persons; and

   (b)the trade mark does not and will not distinguish the designated goods or services as being those of the applicant having regard to the combined effect of the following:

   (i)the extent to which the trade mark is inherently adapted to distinguish the goods or services from the goods or services of other persons;

   (ii)the use, or intended use, of the trade mark by the applicant;

   (iii)any other circumstances.

   Note 1:Trade marks that are not inherently adapted to distinguish goods or services are mostly trade marks that consist wholly of a sign that is ordinarily used to indicate:

   (a)    the kind, quality, quantity, intended purpose, value, geographical origin, or some other characteristic, of goods or services; or

   (b)    the time of production of goods or of the rendering of services.

   Note 2:For goods of a person and services of a person see section 6.

   Note 3:Use of a trade mark by a predecessor in title of an applicant and an authorised use of a trade mark by another person are each taken to be use of the trade mark by the applicant (see subsections (5) and 7(3) and section 8).

   (5)For the purposes of this section, the use of a trade mark by a predecessor in title of an applicant for the registration of the trade mark is taken to be a use of the trade mark by the applicant.

   Note 1:For applicant and predecessor in title see section 6.

   Note 2:If a predecessor in title had authorised another person to use the trade mark, any authorised use of the trade mark by the other person is taken to be a use of the trade mark by the predecessor in title (see subsection 7(3) and section 8).

2. In Kevin Murphy Asia Pte Ltd v Lab Brands Ltd[6] the Registrar’s delegate stated:

   [6] [2018] ATMO 58 at [13].

   In F. H. Faulding & Son Ltd v Imperial Chemical Industries of Australia and New Zealand Ltd. [1965] HCA 72; (1965) 112 CLR 537 at 555 (“Barrier Cream Case”), Kitto J summarised the appropriate inquiry as follows:

   The question to be asked in order to test whether a word is adapted to distinguish one trader’s goods from the goods of all others is whether the word is one which other traders are likely in the ordinary course of their business and without any improper motive, to desire to use upon or in connection with their goods.

   The High Court in Cantarella Bros Pty Limited v Modena Trading Pty Limited [2014] HCA 48 (“Cantarella”) endorsed that the proper test for assessing the inherent capacity of a trade mark to distinguish still remains that articulated by Kitto J in Michigan. In doing so, the majority discussed the meaning of Kitto J’s words:

   [The] question whether a mark is adapted to distinguish be tested by reference to the likelihood that other persons, trading in goods of the relevant kind and being actuated only by proper motives - in the exercise, that is to say, of the common right of the public to make honest use of words forming part of the common heritage, for the sake of the signification which they ordinarily possess - will think of the word and want to use it in connection with similar goods in any manner which would infringe a registered trade mark granted in respect of it.

   The test as aptly summarized in the Trade Mark Examiner’s Manual at Part 22.3 is:

   In summary, the Cantarella decision makes clear that when considering the inherent  distinctiveness of a trade mark, consideration should first be given to the “ordinary signification” (or “ordinary meaning”) of the words comprising the trade mark to anyone in Australia purchasing, consuming or trading in the relevant goods/services. Consideration should then be given as to the likelihood of other persons desiring to use the words for the sake of their ordinary signification, in keeping with the principles espoused in the Michigan case.

   … As stated by Bennett J in Unilever Australia Ltd v Société Des Produits Nestlé S.A. [2006] FCA 782 at [35]:

   Evidence of use does not assist in the consideration of inherent capacity or adaptability of the expression to distinguish or become distinctive (Samuel Taylor Pty Ltd v Registrar of Trade Marks [1959] HCA 69; (1959) 102 CLR 650 at 658). Evidence of use is relevant only to the question of whether the mark possessed the required capability at the priority date (Austereo at [33]). Evidence that a particular expression has assumed a secondary and distinctive meaning after registration may afford some indication that, initially, the expression had a capacity to become distinctive but as the High Court noted in Samuel Taylor at 657, use in combination with another trade mark makes it “difficult to see how the critical words could have acquired a distinctiveness of their own.”

3. I consider that here the Opponent has not established its opposition to registration for the following reasons:

   1.The Opponent has not established that the alphabetical letter ‘T’ in the Trade Mark indicates something in particular: it might indicate ‘timber’ or ‘termites’ or ‘treated’ or ‘Tanalised’^® or even ‘Tumut’ where the Applicant has a saw mill.  However, I consider that, in order to establish its opposition at the relevant standard to the satisfaction of the Registrar, the Opponent should be able point to something more definite as an ‘ordinary meaning’ than asserted possibilities; and

   2.Counterweighing the instances of use by traders other than the Applicant in the Evidence in Support, the Opponent has not established that those in the same trade as the Applicant (other than itself) in fact use the Trade Mark in respect of their similar goods.  Whilst Timberlink Australia uses the term ‘T2’, it apparently distinguishes the term from ‘H2’ rather than treats the terms as being interchangeable as complained of by the Opponent.  The significance of this distinction is not clear.  It is not apparent that the usages by builders, retailers, trade journals and so forth are not either references to the Trade Mark or lack of appreciation that the term might be a trade mark and, further, these other traders are not in the same trade as the Applicant.  While Mr McGinness includes the picture hereunder (which is apparently from May 2017, well after the Relevant Date) in his declaration and asserts use of the sign ‘T2’ by the Opponent since 2006, the claims are not supported by corroborating evidence of such use nor are the circumstances clear how the term came to be used by the Opponent:

3.The declaration of Mr Sinclair, Managing Director of FWPA, an independent industry body, who states that ‘ln my opinion, the designation T2 is associated exclusively with the timber and timber products of [the Applicant]’, must be given due weight.

4.The officially recognised sign ‘H2’ is available for those in the same trade as the Applicant to use in respect of their similarly treated timber.

1. When the above factors are considered the question lies, in my consideration, very much in the balance.  This being so, and in view of the presumption of registrability, the matter must be decided in favour of the Applicant.

2. Accordingly the Opponent has not established its opposition under section 41 of the Act.

Decision

1. Section 55 of the Act relevantly provides:

   55Decision

   (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.

   Note:For limitations see section 6.

2. The opposition to registration of the Trade Mark has not been established.

3. The trade mark application may then proceed to registration one month from the date of this decision.  If the Registrar has been served with a notice of appeal before that time, I direct that registration shall not occur until the appeal has been decided or discontinued.

Costs

1. Both parties requested their costs in the event that they were successful in these proceedings and, since the Applicant is the successful party, and as provided by section 221 of the Act, I award costs against the Opponent at the official scale at Annexure 8 to the Trade Marks Regulations 1995.

Iain Thompson
Hearing Officer
Trade Marks Hearings
22 February 2019