Attic Ladders Pty Ltd v Kimberley Plastics Pty Ltd

[2012] ATMO 36

TRADE MARKS ACT 1995

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

Re:      Opposition by Kimberley Products Pty Ltd to registration of trade mark application 1175051 (6, 20) - ATTIC LADDERS - filed in the name of Attic Ladders Pty Ltd.

AND

Re:      Opposition by Attic Ladders Pty Ltd to registration of trade mark application 1186119 (6, 20) – KIMBERLEY ATTIC LADDER - filed in the name of Kimberley Plastics Pty Ltd.

Delegate:	Bianca Irgang
Representation:	Attic Ladders Pty Ltd: Angela Bowne of counsel instructed by Coleman Greig Solicitors and Notaries Kimberley Products Pty Ltd and Kimberley Plastics Pty Ltd: Mr Ben Fitzpatrick of counsel instructed by Gadens Lawyers
Decision:	2012 ATMO 36 s.52 cross oppositions 1175051: s41 - trade mark not to any extent adapted to distinguish – evidence failed to show trade mark does distinguish – s41(2) applies. Registration refused. 1186119: s44 - trade mark not deceptively similar to the opponent’s trade marks; s60 – trade mark reputation established but no likelihood of deception or confusion in the marketplace. Registration may proceed.

1. Application 1175051 to register ATTIC LADDERS as a trade mark was filed by Attic Ladders Pty Ltd (‘Attic’) on 7 May 2007 in classes 6 and 20 of the International Classification of Goods and Services. The application was accepted for possible registration and the official notice of acceptance was published in the Australian Official Journal of Trade Marks. Subsequently on 11 May 2009 Kimberley Products Pty Ltd (‘Kimberley Products’) filed a Notice of Opposition (‘the Notice’) to registration of the application.

2. Application 1186119 to register KIMBERLEY ATTIC LADDERS as a trade mark was filed by Kimberley Plastics Pty Ltd (‘Kimberley Plastics’) on 5 July 2007, in classes 6 and 20. The application was accepted for possible registration and the official notice of acceptance was published in the Australian Official Journal of Trade Marks. Subsequently on 2 November 2009 Attic filed a Notice of Opposition (‘the Notice’) to registration of the application.

3. I heard both oppositions in Canberra as a delegate of the Registrar of Trade Marks on 27 July 2011. Attic was represented by Ms Angela Bowne of counsel instructed by Coleman Greig Solicitors and Notaries. Kimberley Plastics and Kimberley Products were represented by Mr Ben Fitzpatrick of counsel instructed by Gadens Lawyers.

   Opposition to registration of application 1175051

4. Current details of application 1175051 are set out below.

   Trade mark:  Attic Ladders

   Trade mark application:      1175051

   Filing Date:  7 May 2007

   Specification:  Class 6: Ladders that fold into ceiling spaces, made of or predominantly of metal

   Class 20: Ladders that fold into ceiling spaces, made of or predominantly of wood

   Endorsements:  Provisions of subsection 41(6) applied

   Evidence and Grounds

5. The evidence consists of the following declarations:

Declarant	Position	Date Made	Exhibits
Evidence in Support
Jeff Rittenbaum	Sales and Marketing Director of Rittco Distributing Pty Ltd	10 December 2009	Exhibits JR-1 to JR-3
Frederick ‘Rick’ Kimberley	Director of Kimberley Products Pty Ltd	10 December 2009	Exhibits RK-1 to RK-13
Graeme Robinson	Director of GBR Distributors Pty Ltd	16 December 2009	-
Evidence in Answer
John Mclean Stewart	Managing Director of Attic Ladders Pty Ltd	23 July 2010	Exhibits JMS-1 to JMS-51
Evidence in Reply
Frederick ‘Rick’ Kimberley	Director of Kimberley Products Pty Ltd	22 November 2010	Exhibits RK-1 to RK-40

1. The Notice nominated most of the grounds of opposition available under the Act.  The onus is upon the opponent, Kimberley Products, to establish one or more of its grounds of opposition. Gyles J has referred to the standard of proof required in terms of a ‘balance of probabilities’.[1] His findings upon that issue, arrived at after a consideration of the relevant authorities, have been discussed with approval by Sundberg J in Chocolaterie Guylian NV v Registrar of Trade Marks[2].

   [1] Pfizer Products Inc v Karam [2006] FCA 1663; (2006) 70 IPR 599

   [2] [2009] FCA 891, para 22-27 (2009) 82 IPR 13. See also Sports Warehouse Inc v Fry Consulting [2010] FCA 664; (2010) 87 IPR 300 at [36] to [39]; NV Sumatra Tobacco Trading Company v British American Tobacco Services Limited [2011] FCA 1051 (9 September 2011) at [16] to [32])

2. At the hearing Mr Fitzpatrick, counsel for Kimberley Products, advised that it was not formally withdrawing any of the grounds of opposition listed in the Notice but that it would provide submissions only on the ground under section 41 of the Act. None of the evidence served and filed by Kimberley Products goes to the other grounds in the Notice and for the sake of completeness I find that these grounds have not been established.

   Section 41 - Trade mark not distinguishing applicant’s goods or services

   8.   Section 41 of the Act provides:

   41Trade mark not distinguishing applicant’s goods or services

   (1)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)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 (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.

   (3)In deciding the question whether or not a trade mark is capable of distinguishing the designated goods or services from the goods or services of other persons, the Registrar must first take into account the extent to which the trade mark is inherently adapted to distinguish the designated goods or services from the goods or services of other persons.

   (4)Then, if the Registrar is still unable to decide the question, the following provisions apply.

   (5)If the Registrar finds that the trade mark is to some extent inherently adapted to distinguish the designated goods or services from the goods or services of other persons but is unable to decide, on that basis alone, that the trade mark is capable of so distinguishing the designated goods or services:

   (a)the Registrar is to consider whether, because of the combined effect of the following:

   (i)the extent to which the trade mark is inherently adapted to distinguish the designated goods or services;

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

   (iii)any other circumstances;

   the trade mark does or will distinguish the designated goods or services as being those of the applicant; and

   (b)if the Registrar is then satisfied that the trade mark does or will so distinguish the designated goods or services—the trade mark is taken to be capable of distinguishing the applicant’s goods or services from the goods or services of other persons; and

   (c)if the Registrar is not satisfied that the trade mark does or will so distinguish the designated goods or services—the trade mark is taken not to be capable of distinguishing the applicant’s goods or services from the goods or services of other persons.

   Note 1:For goods of a person and services of a person see section 6.

   Note 2: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 (1) and 7(3) and section 8).

   (6)If the Registrar finds that 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, the following provisions apply:

   (a)if the applicant establishes that, because of the extent to which the applicant has used the trade mark before the filing date in respect of the application, it does distinguish the designated goods or services as being those of the applicant—the trade mark is taken to be capable of distinguishing the designated goods or services from the goods or services of other persons;

   (b)in any other case—the trade mark is taken not to be capable of distinguishing the designated goods or services from the goods or services of other persons.

   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: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 (1) and 7(3) and section 8). 

   9.   The application of the provisions of section 41 of the Act was discussed in detail by Branson J in Blount Inc v Registrar of Trade Marks [1998] FCA 440 (‘Blount’):

   Subsections (3) to (6) of s 41 of the Act are designed to control the process by which the Registrar is to reach a conclusion as to whether the trade mark for which registration is sought is 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”). If the trade mark is not so capable, the application for its registration must be rejected (s 41(2)). Subsection (3) requires the Registrar first to “take into account the extent to which the trade mark is inherently adapted to distinguish the designated goods or services from the goods or services of other persons”. Having taken such matter into account, it is theoretically open to the Registrar to conclude:

   (a) that the trade mark is inherently adapted to distinguish the designated goods or services from the goods or services of other persons and capable, on that basis alone, of so distinguishing the designated goods or services; or

   (b) that 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; or

   (c) that the trade mark is to some extent inherently adapted to distinguish the designated goods or services from the goods or services of other persons, but there is uncertainty, on that basis alone, that the trade mark is actually capable of so distinguishing the designated goods or services.

   The structure of s 41 of the Act dictates that if the Registrar reaches conclusion (a) above, then he or she will decide the question whether or not the trade mark is capable of distinguishing the designated goods or services from the goods or services of other persons by reaching the answer that it is so capable by reason of its inherent adaptability to distinguish (s 41(2) and (3)). The Registrar will, in such circumstances, be required, by reason of the terms of s 33(1) of the Act, to accept the application unless he or she is satisfied that the application has not been made in accordance with the Act, or that there are grounds, independent of capacity to distinguish, for rejecting the application.

   If the Registrar reaches conclusion (b) or (c) above, he or she is, within the meaning of s 41(4) “unable to decide the question”. That is, he or she is unable, simply by taking into account the extent to which the trade mark is inherently adapted to distinguish the designated goods or services, to answer the question whether or not the trade mark is capable of distinguishing the designated goods or services from the goods or services of other persons.

   If the Registrar reaches conclusion (b) above, then the provisions of paragraphs (a) and (b) of s 41(6) are brought into operation. If the applicant establishes that, because of the extent to which the applicant has used the trade mark before the filing date of the application, the trade mark does distinguish the designated goods or services as being those of the applicant, the Registrar will not reject the application pursuant to s 41(2). The Registrar will, in such circumstances, accept the application unless he or she is satisfied that the application has not been made in accordance with the Act, or that there are grounds, independent of capacity to distinguish, for rejecting the application (s 33(1)). If the applicant fails to establish that because of the extent to which the applicant has used the trade mark before the filing date of the application, the trade mark does distinguish the designated goods or services as being those of the applicant, the Registrar must reject the application pursuant to s 41(2).

   If the Registrar reaches conclusion (c) above, then the provisions of paragraphs (a), (b) and (c) of s 41(5) are brought into operation. If the Registrar, having considered the combined effect of the matters listed in subparagraphs (i), (ii) and (iii) of s 41(5)(a), is satisfied that the trade mark does or will distinguish the designated goods or services as being those of the applicant, he or she will not reject the application pursuant to s 41(2). The Registrar will, in such circumstances, accept the application unless he or she is satisfied that the application has not been made in accordance with the Act, or that there are grounds, independent of capacity to distinguish, for rejecting the application (s 33(1)). If the Registrar, having considered the combined effect of the matter listed in subparagraphs (i), (ii) and (iii) of s 41(5), is not satisfied that the trade mark does or will distinguish the designated goods as being those of the applicant, the Registrar must reject the application (s 41(2)).

   The above examination of subsections (3) to (6) of s 41 of the Act demonstrates that the section limits the scope of operation of s 33(1) of the Act so far as the question of capacity to distinguish is concerned. Subsection (4) has the effect that unless the Registrar, having taken into account the extent to which the trade mark is inherently adapted to distinguish the designated goods or services from the goods or services of other persons, is able to answer positively the question whether or not the trade mark is capable of distinguishing the designated goods or services from the goods or services of other persons, then he or she must apply the provisions of either subsection (5) or (6). Subsection (5) has the effect that an application must be rejected pursuant to s 41(2) unless the Registrar is satisfied that the trade mark does or will distinguish the designated goods or services as being those of the applicant. Subsection (6) has the effect that an application must be rejected pursuant to s 41(2) unless the applicant establishes that because of its use of the trade mark, the trade mark does distinguish the designated goods or services as being those of the applicant. The applicant will so “establish” by placing before the decision maker material upon which he or she is persuaded, on the balance of probabilities, that, because of its use of the trade mark, the trade mark does distinguish its goods and services from those of other persons.

   It is thus not the case, as might otherwise be concluded from the terms of s 33(1), that if the Registrar is uncertain whether a trade mark is capable of distinguishing the applicant’s goods or services from the goods or services of other persons then he or she must accept the application. The question of whether or not a trade mark is to be taken for the purposes of s 41(2) as capable or not capable of distinguishing the designated goods or services from the goods or services of other persons is governed entirely by s 41(3) to (6). The effect of such subsections is that a trade mark is not to be taken as capable of distinguishing the goods or services of an applicant from the goods or services of other persons unless the Registrar is satisfied of certain matters or the applicant establishes a certain matter, in the sense discussed above.

   10.  The start-point of my considerations therefore lies in subsection 41(3) – it is a consideration of the extent to which the trade mark is inherently adapted to distinguish the designated goods or services from the goods or services of other persons.

   11.  In Clark Equipment Company v Registrar of Trade Marks [1964] HCA 55; (1964) 111 CLR 511 at 514, Kitto J put the test under the 1955 Act as follows:

   “[T]he question whether a mark is adapted to distinguish [is to] 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 connexion with similar goods in any manner which would infringe a registered trade mark granted in respect of it

3. A consideration of Attic’s trade mark shows that it is for the two words ATTIC LADDERS in plain text. ATTIC is defined in the Macquarie Dictionary as:

   1. That part of a building, esp, a house, directly under a roof; a garret. 2. A   room or rooms in that part, frequently used for storage.

4. Mr Fitzpatrick for Kimberley Products, submitted that I should find the trade mark ATTIC LADDERS when used in relation to ladders that fold into ceiling spaces predominantly made of wood and metal to be purely descriptive of those goods. He said that Kimberley Products’ evidence showed many traders used the expression ATTIC LADDERS in the ordinary course of trade in these goods.

5. I also note that the internet reveals that a common interpretation of the meaning of “attic ladders” is that they are retractable ladders that are installed into the floor of an attic and ceiling of the floor below the attic and are typically made of wood, metal, aluminum or fiberglass. Given this general meaning and perception I find that ATTIC LADDERS is an ordinary description of the goods for which registration is sought.

6. In his declaration, Mr Stewart of Attic, provided examples of traders describing their similar goods as:

   • access ladders (exhibit JMS-35);
   • attic stairs (exhibit JMS-36);
   • disappearing stairway (exhibit JMS-37);
   • loft ladders (exhibit JMS-38);
   • roof space ladders (exhibits JMS-40 and JMS-41);
   • attic access ladders (exhibit JMS-42);
   • ceiling ladders (exhibit JMS-44)

   and Ms Browne submitted that this shows other traders do not need to use the expression ATTIC LADDERS in the ordinary course of trade.

7. Mr Fitzpatrick argued that the supposed interchangeable use of words such as LOFT or ROOF with the word ATTIC could not possibly confer the requisite capacity to distinguish on ATTIC LADDERS. The phrase ATTIC LADDERS has, according to Mr Fitzpatrick, no inherent adaptation to distinguish and could not satisfy subsection 41(3) of the Act. He pointed to the section 41 ground for rejection raised during examination and that the application was accepted under the provisions of subsection 41(6).  He argued that Attic had failed to file and serve any evidence during opposition proceedings which would be sufficient to find ATTIC LADDERS did distinguish the applicant’s goods at the date on which it applied for registration as required by subsection 41(6). Under these circumstances, he argued, the ground of opposition under section 41 should succeed.

8. Ms Browne’s submission that there are other ways an attic ladder may be described does not lessen or negate the general descriptive meaning of ATTIC LADDERS. I note the comments of Justice Kitto regarding the registrability of the word MICHIGAN in Clark Equipment Co. v Registrar of Trade Marks (1964) 111 CLR 511 at paragraph 8:

   It is no answer to say that if registration be granted such a manufacturer may nevertheless describe his goods as “made in Michigan” or in some other ways indicate that Michigan is their place of origin.  He is not to be excluded by the registration of a trade mark from any use of the word Michigan that he may fairly want to make in the course of his business.

1. While other traders in the same goods do have the option of using other terms to describe those goods does not mean the ordinary meaning of the expression ATTIC LADDERS can be ignored.

2. Ms Bowne referred to the Westinghouse[3] and Rimmington[4] cases to support Attic’s argument that ATTIC LADDERS is not a generic and descriptive expression in Australia. I am not persuaded by this argument. I note that Westinghouse involved the term LAUNDROMAT and that the court held that:

   [3] Westinghouse Electric Corporation v Thermopart Pty Ltd [1968] WAR 39; (1967) 1A IPR 647

   [4] Rimmington v Zen Do Kai Pty Ltd [2002] ATMO 114; (2002) 57 IPR 127

   ``Laundromat'' may be on its way into the language but has not yet achieved a rightful place as a generic term in common parlance or in a dictionary. In Australia the evidence is much more flimsy and all one can say is that perhaps some people may use the word in a general sense but it has not been proved that it has achieved anything like a generic meaning.

3. However, this case is from the late 1960s and I believe that the Australian marketplace has significantly altered in the intervening years with expressions from overseas becoming much more accepted and adopted in everyday use particularly English expressions. While ATTIC LADDERS may have been an unusual term in Australia when Attic commenced trading in 1975 that is no longer the case. In my opinion an Australian consumer would be well aware of what ‘ATTIC LADDER’ means without needing to be educated in the definition.

4. I find ATTIC LADDERS is not to any extent inherently adapted to distinguish the applicant’s goods. I therefore need to consider whether ‘because of the extent to which the applicant has used ATTIC LADDERS as a trade mark before the filing date of the application, the trade mark does distinguish the designated goods or services as being those of the applicant’ (para41(6)(a).

   Acquired distinctiveness

   22.  The issue to be assessed is whether the applicant has established in its evidence that, because of the extent to which the applicant has used the trade mark before the filing date in respect of the application, it does distinguish the designated goods or services as being those of the applicant. As observed by Branson J in Blount, above, the onus is on the applicant to satisfy me that the trade mark had become distinctive of the applicant’s goods at the priority date of the application.

5. In his declaration Mr Stewart of Attic states that he has been involved in the business of manufacturing and supplying ladders allowing access into roof space in houses since 1976. Mr Stewart states that when Attic first started business it was difficult to convince Australian consumers that their roof space was an ‘attic’ that could be used for storage or an extra room. Since that time Mr Stewart asserts that Attic has spent over 30 years and significant advertising and marketing dollars to promote the use of and access to roof space by an ATTIC LADDER which is why he and Attic’s staff tell their customers, ‘we introduced this concept to Australia and that is why we are called “Attic Ladders”.

6. The actual sales revenue and advertising expenditure figures that Attic has provided for the years 1985 through to 2008 are reasonable even if approximately 25% of the sales figures are not related to sale of Attic’s wood or metal ladders. They show that there has a steady increase in sales over the years (Exhibit JMS-24). Exhibit JMS-3 is a copy of a leaflet which was distributed by Attic at Home Shows and Trade Fairs between 1978 and 1983. This early leaflet does use the expression ATTIC LADDERS as a trade mark for the sale of ‘disappearing staircases’. However, many leaflets and advertisements in exhibits JMS-9 and JMS-12 which are asserted to have been published between 2000 through to 2007 show that the trade mark used by Attic is not the plain words ATTIC LADDERS but those words depicted in a stylized form, sometimes with graphic devices as shown below:

7. When the plain words ATTIC LADDERS are used, it is mostly as a description as shown below:

1. In his declaration Mr Stewart asserts that as Attic was the first trader to use the expression and remains the only Australian trader using the expression ATTIC LADDERS it has established such a reputation in the expression that there is a strong association in the minds of the relevant market between it and that expression. I am of the opinion that these appearances of the trade mark might contribute to reputation but not to the acquired distinctiveness of the trade mark. The meaning of ‘reputation’ was discussed by Kenny J in McCormick & Company Inc v McCormick [2000] FCA 1335 at paragraph 81:

   What is intended by the word “reputation” in s 60? The word is defined in The Macquarie Dictionary as follows:

   reputation ... 1. the estimation in which a person or thing is held, esp. by the community or the public generally; repute ... 2. favourable repute; good name ... 3. A favourable and publicly recognised name or standing for merit, achievement, etc. ... 4. The estimation or name of being, having done, etc, something specified.

   Cf. The Oxford English Dictionary. In s 60, the word is, I think, apt to refer to “the recognition of the  McCormick  & Co marks by the public generally”.

   27.  Acquired distinctiveness is, however, the acquisition of a secondary meaning of the word as a trade mark which denotes the goods of the applicant. In this regard, see Re Johnson and Johnson Australia Pty Limited v Sterling Pharmaceuticals Pty Limited [1991] FCA 310; (1991) AIPC 90-823; 101 ALR 700; 21 IPR 1; 30 FCR 326 where Lockhart, Burchett and Gummow JJ said at paragraph 51:

   A word may be so totally descriptive of the goods concerned as to be unregistrable, for example, ELECTRICS for electrical apparatus: see Electrix (1959) RPC 283 at 288. In less extreme cases the question is one of degree. There must be a sufficient degree of distinctiveness to counter balance the descriptive character of the word: see Coats (1936) 53 RPC 355 at 368 and The Yorkshire Case (1954) 71 RPC 150. A word which is prima facie descriptive may become distinctive in connection with particular goods and yet retain its descriptive meaning : see Burberrys v J.C. Cording and Co. Ltd. (1909) 26 RPC 693 per Parker J. at 704, and the Perfection Case at 857-8. But the word must in order to become distinctive have a new and secondary meaning  different from its primary descriptive one and thus cease to be purely descriptive: see Reddaway v Banham (1896) AC 199 per Lord Herschell at 213.

   28.  The assumption that reputation is the same as distinctiveness in fact suffers from the same logical flaw as does the assumption that use equals distinctiveness in fact – in British Sugar Plc v James Robertson & Sons Ltd [1996] RPC 281 Jacob J stated (at 302):

   I have already described the evidence used to support the original registration. It was really no more than evidence of use. Now it is all too easy to be beguiled by such evidence. There is an unspoken and illogical assumption that “use equals distinctiveness”. The illogicality can be seen from an example: no matter how much use a manufacturer made of the word “Soap” as a purported trade mark for soap the word would not be distinctive of his goods. He could use fancy lettering as much as he liked, whatever he did would not turn the word into a trade mark. Again, a manufacturer may coin a new word for a new product and be able to show massive use by him and him alone of that word for the product. Nonetheless the word is apt to be the name of the product, not a trade mark.

2. Thus, while reputation and acquired distinctiveness are related concepts, they are different from each other. They are different species that swim in the same stream. It would seem that a trade mark might be recognised by the public generally well before a secondary meaning for the word has developed. If Attic’s early use of the expression ATTIC LADDERS was noted by the public, then that use of the trade mark would have contributed to the reputation of the trade mark, rather than contribute to a secondary meaning for ATTIC LADDERS. Also, apart from an early period, Attic has not consistently used the plain words ATTIC LADDERS as a trade mark. Attic  may have a reputation as the manufacturer of attic ladders but I am not satisfied that on seeing the plain words ATTIC LADDERS consumers will recognize it as indicating Attic’s goods. 

3. As the evidence fails to establish that ATTIC LADDERS does distinguish the Attic’s goods, para41(6)(b) applies. I find ATTIC LADDERS is not capable of distinguishing the applicant’s goods and the ground for refusing to register application 1175051 pursuant to section 41 is established.

   Opposition to registration of application 1186119

4. Current details of application 1186119 are set out below.

   Trade mark:  KIMBERLEY ATTIC LADDER

   Trade mark application:      1186119

   Filing Date:  5 July 2007

   Specification:  Class 6: Building materials made principally or wholly of metal; ladders, frames, rails (guard, grab, hand) (all the foregoing non-electric and of metal); parts, fittings and accessories (all the foregoing non-electric and of metal) for ladders, frames and rails (guard, grab, hand)

   Class 20: Ladders (excluding rope ladders), frames, rails (guard, grab, hand) (all the foregoing not made principally or wholly of metal); parts, fittings and accessories (all the foregoing not made principally or wholly of metal) for ladders, frames and rails (guard, grab, hand)

   Endorsements:  Provisions of subsection 41(5) applied.

   Evidence and Grounds

5. The evidence consists of the following declarations:

Declarant	Position	Date Made	Exhibits
Evidence in Support
John Mclean Stewart[5]	Managing Director of Attic Ladders Pty Ltd	23 July 2010	Exhibits JMS-1 to JMS-51
Evidence in Answer
Frederick ‘Rick’ Kimberley[6]	Director of Kimberley Products Pty Ltd	22 November 2010	Exhibits RK-1 to RK-40

[5] This statutory declaration and accompanying exhibits is identical the Stewart declaration and shall be referred to as such.

[6] This statutory declaration and accompanying exhibits is identical to Kimberley 2 and shall be referred to as such.

1. The Notice nominated most of the grounds of opposition available under the Act.  As previously noted the onus is upon the opponent, in this case Attic, to establish one or more of its grounds of opposition on the balance of probabilities. At the hearing Ms Browne, counsel for Attic, advised that she would provide submissions only on the grounds of opposition under sections 44 and 60 of the Act. None of the evidence served and filed by the Attic appears goes to the other grounds in the Notice and for the sake of completeness I find that these grounds have not been established.

   Section 44 - Identical etc. trade marks:

2. Section 44 of the Act relevantly provides:

   44Identical etc. trade marks

   (1)Subject to subsections (3) and (4), and 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)…; 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.

3. To establish its opposition in terms of section 44 of the Act Attic must show all of the following:

   Ø  a trade mark (or trade marks), either registered or pending registration, in the name of a person other than the present applicant, and in relation to which the opposed trade mark is either substantially identical or deceptively similar;

   Ø  the trade mark(s) in the name of the other person must be in respect of similar services or closely related goods; and

   Ø  the priority date(s) of the other person’s trade mark(s) is (are) the earlier.

4. Attic is the registered owner of trade mark registrations 674658 and 1175050 which have earlier priority dates than that of the opposed trade mark application. The opposed trade mark application covers the same goods in classes 6 and 20 as those specified for Attic’s trade marks. The remaining issue for me to determine is whether the opposed trade mark is either substantially identical or deceptively similar to the Attic’s previously registered trade marks. The details of Attic’s trade mark registrations are as follows:

   Trade mark:  

   Trade mark registration:     674658

   Filing Date:  11 October 1995

   Specification:  Class 6: Ladders that fold into ceiling spaces made of or predominantly of metal

   Class 20: Ladders that fold up into the ceiling being made of or predominantly of wood

   Trade mark:  

   Trade mark registration:     1175050

   Filing Date:  7 May 2007

   Specification:  Class 6: Ladders that fold into ceiling spaces made of or predominantly of metal

   Class 20: Ladders that fold up into the ceiling being made of or predominantly of wood

   Endorsements:   The trade mark registration is limited to the colours BLUE, RED and WHITE as shown in the representation of the trade mark attached to the application form.

5. It is obvious KIMBERLEY ATTIC LADDER is not substantially identical to either of Attic’s ATTIC LADDERS trade marks according to the side-by side test set out by Windeyer J. in Shell Co. (Aust) Ltd v Esso Standard Oil (Aust) Ltd[7]. Kimberley Plastic’s trade mark includes the additional word KIMBERLEY.

   [7] (1963) 109 CLR 407 at 414

6. Deceptive similarity is defined by section 10 of the Act. The determination of deceptive similarity requires a comparison of the impression persons of ordinary intelligence and memory would have, in recalling the opponent’s trade mark, with the impression they would get from the opposed trade mark.[8] The probability of deception must be finite and non-trivial.[9]

   [8] The Shell Company of Australia Ltd v Esso Standard Oil (Australia) Ltd (1961) 109 CLR 407, per Windeyer J at 415

   [9] Registrar of Trade Marks v Woolworths Limited 45 IPR 411, per French J at [43]

7. Attic’s trade mark registration no.  674658 consists of the words ATTIC LADDERS combined with a graphic device depicting a staircase which runs up along the leading stroke of the ‘A’ in ATTIC. The word LADDERS is in small font underneath the word ATTIC. Attic’s trade mark registration no.  1175050 consists of the words ATTIC LADDERS where the word ATTIC is rendered in large font at the top of the mark. The letter ‘A’ is stylized in that the second downward stroke of the ‘A’ continues on to underline the remaining letters “-TTIC’ and the word LADDERS in emblazoned on the underline stroke in small font. This trade mark registration is limited to the colours blue, red and white as shown in the representation of the trade mark. It is fair to say that the main word elements of both of these registrations are the words ATTIC LADDERS.

8. Kimberly Plastic’s trade mark is for the words KIMBERLEY ATTIC LADDER. Comparing Attic’s trade marks with Kimberley Plastic’s trade mark reveals that the words ATTIC LADDER are the shared element between all the marks. Attic has argued that the expression ATTIC LADDER is an unusual term when applied to the Australian marketplace. Ms Bowne, Counsel for Attic, states it is likely that consumers would become deceived between the trade marks due to this common element. However, I am not persuaded by this reasoning.

9. As already discussed, the expression ATTIC LADDERS is the common element in all the trade mark representations. The Macquarie Dictionary defines ATTIC as part of a building directly under a roof. When combined with the word LADDERS, this expression is descriptive of the goods of interest to both Attic and Kimberley Plastic. ATTIC LADDERS is also an expression which other traders dealing in such goods are likely to use in the ordinary course of their business. The use of such a prima facie non-distinctive term within each of the trade marks is unlikely to cause the potential consumer to wonder whether the trade marks are related. On top of this, Kimberley Plastic’s trade mark contains the additional word KIMBERLEY at the beginning of its trade mark.

10. In light of these consideration, I am not satisfied the opposed trade mark is deceptively similar to either of Attic’s registered trade marks, particularly when the trade marks are considered, as they must be, as wholes. To base a finding of deceptive similarity on the fact that both marks contain the common and descriptive term ATTIC LADDERS would impermissibly seize on a single similarity between the trade marks, while ignoring the trade marks in their entirety - ‘it is the whole mark as used which is the subject of the comparison with the registered mark.’[10].

    [10] Anheuser-Busch Inc v Budejovicky Budvar (2002) 56 IPR 182, 218 (Allsop J).

11. Therefore, I am not satisfied there would be a real, tangible danger of confusion arising[11] between the respective trade marks. I find that the respective trade marks of the two parties are neither substantially identical nor deceptively similar. As a result of this finding, the ground of opposition under section 44 has not been made out.

    [11] Registrar of Trade Marks v Woolworths Ltd (1999) 93 FCR 365, per French J at 382

Section 60  Trade mark similar to trade mark that has acquired a reputation in Australia

1. Section 60 of the Act provides:

   60       Trade mark similar to trade mark that has acquired a reputation in Australia

   The registration of a trade mark in respect of particular goods or services may be opposed on the ground that:

   (a)another trade mark had, before the priority date for the registration of the first‑mentioned trade mark in respect of those goods or services, acquired a reputation in Australia; and

   (b)because of the reputation of that other trade mark, the use of the first‑mentioned trade mark would be likely to deceive or cause confusion.

2. To establish the ground of opposition under section 60, the opponent must demonstrate:

   ØThat, at the priority date of the opposed application, another trade mark had acquired a reputation in Australia; and

   ØThat because of the reputation of the second trade mark, use of the applicant’s trade mark would be likely to deceive or cause confusion.

3. Section 60 does not require that the goods upon which the opponent uses its trade mark be of a specified standard of similarity with the goods and services of interest to the applicant, nor is there a requirement that the trade marks be substantially identical or deceptively similar.

4. It is now for me to determine if Attic has established a reputation in Australia for its ATTIC LADDERS trade marks which is sufficient to establish that use of the opposed KIMBERLEY ATTIC LADDER trade mark would be likely to deceive or cause confusion. This is more than merely indicating prior use, the opponent’s trade mark needs to be “associated in the minds of the Australian public”[12].

   [12] Seven Up Co v OT Ltd (1947) 75 CLR 203 at 211

5. In relation to reputation Justice Kenny states in McCormick & Co Inc. v McCormick, 51 IPR 102, at 128:

   In ConAgra Inc v McCain Foods (Aust) Pty Ltd (1992) 33 FCR 302 at 343; 23 IPR 193 at 234, Lockhart J said:

   [R]eputation within the jurisdiction may be proved by a variety of means including advertisements on television or radio, or in magazines and newspapers within the forum.

   At 129 Justice Kenny continues:

   In practice, it is commonplace to infer reputation from a high volume of sales, together with substantial advertising expenditures and other promotions, without any direct evidence of consumer appreciation of the mark, as opposed to the product: …

6. There is no direct evidence of consumer appreciation of Attic’s trade marks before me.  However there are sales and advertising figures in evidence.  Exhibit JMS-24 accompanying the Stewart declaration outlines the actual sales revenue and advertising expenditure figures for Attic for the years 1985 through to 2008. These figures are reasonable and show that there has a steady increase in sales and advertising expenditure over the years. A number of advertisements and leaflets have also been provided by Attic in support of its claims of extensive advertising through home shows and trade fairs (exhibit JMS-5), letterbox drops and direct inquiry.  

1. Mr Stewart states that it was typical practice for Attic to have its advertising brochures printed in a minimum of 2, 000 runs and often in 5, 000 runs although there is limited evidence to support the frequency of these print runs. Exhibit JMS-4 is an invoice from Worldwide Printing dated 9 March 2006 which does show that Attic ordered 5000 brochures in 2006. Mr Stewart further states that 5 000 brochures were distributed to Attic’s distributors and handed out at Home Shows and Trade Fairs between 1978 and 1983. Attic also engaged in advertising through magazines (exhibit JMS-12), newspapers (exhibit JMS-11), television and radio adverts (exhibit JMS-18), the Yellow Pages (exhibits JMS-16 and JMS-17) and through promotional materials such as t-shirts, and pens (exhibit JMS-19).

2. It is clear from the evidence that Attic has engaged in a reasonable level of advertising which has resulted in growing sales as the years have progressed. It is also clear that Attic has been using its ATTIC LADDERS trade marks for a lengthy period of time which predates the opposed trade mark’s priority date. I am satisfied that within the Australian marketplace specific to Attic’s goods those trade marks did have reputations at the priority date of the opposed application.

3. I now need to consider if, given this reputation, use of Kimberley Plastic’s trade mark would be likely to deceive or cause confusion. In my considerations I am not to be influenced by the evidence of how Kimberley Plastic uses its trade mark. I am to consider any of the modes of use that would be within the scope of the registration, should it be granted in the terms presently sought. In this matter I find the comments by Stephen J in Hornsby Building Information Centre Pty Limited v Sydney Building Information Centre Limited[13] to be particularly apt.  His Honour said:-

   [13] [1978] HCA 11; (1978) 140 CLR 216 at 229-230

   There is a price to be paid for the advantages flowing from the possession of an eloquently descriptive trade name. Because it is descriptive it is equally applicable to any business of a like kind, its very descriptiveness ensures that it is not distinctive of any particular business and hence its application to other like businesses will not ordinarily mislead the public. [emphasis added]

4. Both parties have used their trade marks on the same goods which have been sold in the same market. There are no instances in evidence of actual confusion having occurred in that time.  Of themselves the trade marks themselves are not deceptively similar.  I see no basis for finding that Attic’s trade marks have such reputations that any use by another trader of the descriptive words ATTIC LADDERS would cause consumers to wonder whether the goods were from the same source as Attic’s goods.

5. Accordingly, I find that the ground of opposition under section 60 has not been established.

   Decision

6. Subsection 55(1) of the Act provides:

   Unless the proceedings are discontinued or dismissed, 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.

Trade Mark Application number 1175051

1. I find that Kimberley Products has met the onus upon it, in terms of the grounds of opposition under section 41 argued at the hearing. Accordingly, I refuse to register trade mark application 1175051.

Trade Mark Application number 1186119

1. Attic has not established any of the grounds of opposition against this trade mark application.

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

   Costs

Trade Mark Application number 1175051

1. It is usual for costs to follow the event, and I see no reason to depart from that principle here. I award costs, according to the official scale set out in Schedule 8 of the Trade Marks Regulations 1995, against the unsuccessful trade mark applicant Attic Ladders Pty Ltd.

Trade Mark Application number 1186119

1. Attic has not established any of the grounds of opposition with regards to this application. As the successful party, Kimberley Plastics Pty Ltd are entitled to costs and I accordingly award costs against Attic Ladders Pty Ltd as per Schedule 8 of the Trade Marks Regulations 1995.

   Bianca Irgang
   Hearing Officer
   Trade Marks Hearings
   13 April 2012