Automotive Product Licencing Pty Ltd v Superstop Brake & Clutch Pty Ltd

[2012] ATMO 4

TRADE MARKS ACT 1995

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

Re:Opposition by Automotive Product Licencing Pty Ltd to registration of trade mark application 1239432 (35, 37) - SUPERSTOP - filed in the name of Superstop Brake & Clutch Pty Ltd.

Delegate:

Heath Wilson

Representation:

Opponent: Tracey Berger of Spruson & Ferguson, Patent and Trade Mark Attorneys.

Applicant: Ben Fitzpatrick of Counsel instructed by Actuate IP, Patent and Trade Mark Attorneys.

Decision:

2012 ATMO 4

Section 52 opposition – grounds pressed under sections 44, 58A and 60 of the Trade Marks Act 1995 – none established and trade mark may proceed to registration - costs awarded against opponent.

Background

1. On 8 May 2008, Superstop Brake & Clutch Pty Ltd (‘the Applicant’) applied for the registration of the trade mark SUPERSTOP in relation to the following services:

   Class: 35

   Retailing, wholesaling and distribution of automotive parts and accessories

   
   
   Class: 37

   Reconditioning services including reconditioning of vehicle engines and their parts; installation, maintenance and repair services including maintenance and repair of vehicles; provision of information, advisory and consultancy services in relation to the aforementioned services

2. During the examination of the trade mark application a ground for rejection was raised under section 44 of the Trade Marks Act 1995 (‘the Act’). The conflicting trade mark is the following trade mark registration currently in the name of John Nemanic:

TM No.	Trade Mark	Filing Date	Class / Statement of Goods
951899	(‘ADB SUPERSTOP’)	29 April 2003	Class 12: Parts and fittings included in class 12 for land air and water vehicles including disc brake pads, brake blocks and linings, and clutches and hydraulic components

1. In response to the ground for rejection, the Applicant provided evidence of use of the trade mark SUPERSTOP prior to 29 April 2003 which was sufficient to satisfy the examiner the provisions of subsection 44(4) could be applied. The trade mark was duly accepted and that acceptance was advertised in the Australian Official Journal of Trade Marks on 11 December 2008.

2. On 9 March 2009, Automotive Product Licencing Pty Ltd (now ‘the Opponent’) filed a notice of opposition to the registration of the Applicant’s trade mark, citing grounds of opposition under sections 41, 43, 44, 58, 58A, 59, 60 and 177 of the Act. Evidence was filed and served by the parties as follows:

Evidence

Evidence in Support

• Statutory declaration of John Nemanic (Director of the Opponent) dated 5 June 2009 with exhibits JN-1 to JN-9 (‘Nemanic 1’).

• Statutory declaration of John Nemanic dated 5 June 2009 with exhibits JN01 to JN-10 (‘Nemanic 2’).

• Statutory declaration of John Nemanic dated 9 October 2009 with exhibits JN-1 to JN-4 (‘Nemanic 3’).

Evidence in Answer

• Statutory declaration of Stephen Paul Kreti (Director and secretary of the Applicant) dated 27 April 2010 with exhibits SPK-1 to SPK-21 (‘Kreti 1’).

Evidence in Reply

• Statutory declaration of John Nemanic dated 16 December 2010 with Exhibits JN-1 to JN-11 (‘Nemanic 4’).

Applicant’s Further Evidence

• Statutory declaration of Steven Paul Kreti dated 8 March 2011 (‘Kreti 2’) with exhibits SPK2-1 to SPK2-6 (including the statutory declarations of June Tayler, Malcolm Draffin and Michael Cree). 

1. Mr Nemanic made his statutory declarations in his capacity as managing director of a number of companies including Ampco Sales Pty Ltd, Ampco Automotive Pty Ltd, Australia Disc Brakes Pty Ltd, East West Pty Ltd and the Opponent. All of the companies have been licensed to use the Opponent’s ADB SUPERSTOP trade mark. 

2. The Nemanic 2 declaration also annexes the statutory declaration of Stephen Paul Kreti dated 3 November 2008 which constituted the evidence before the examiner and the basis on which the trade mark was accepted under the provisions of section 44(4) of the Act.

Onus and Grounds of Opposition

1. The onus for establishing a ground of opposition rests with the Opponent and the relevant standard of proof before the Registrar is the balance of probabilities (Sports Warehouse, Inc v Fry Consulting Pty Ltd (2010) 87 IPR 300 per Kenny J at [30] to [40]; NV Sumatra Tobacco Trading Company v British American Tobacco Services Limited [2011] FCA 1051 (9 September 2011) at [16] to [32]).

2. As a delegate of the Registrar of Trade Marks I heard this matter in Canberra on 12 October 2011. Tracey Berger of Spruson & Ferguson, Patent and Trade Mark Attorneys appeared for the Opponent and Ben Fitzpatrick of Counsel appeared for the Applicant instructed by Actuate IP, Patent and Trade Mark Attorneys.

3. Ms Berger had provided written submissions in relation to the grounds of opposition under sections 44, 58, 58A and 60. However, at the hearing Ms Berger elected to press only sections 44, 58A and 60 as the relevant opposition grounds. I will now address those grounds in numerical order.

Reasons

Section 44

1. Sections 44(2) to 44(4) of the Act provide:

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)         it 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 services see subsection 14(2).

   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 with, 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.

3. If the Registrar in either case is satisfied:

   (a)         that there has been honest concurrent use of the 2 trade marks; or

   (b)         that, because of other circumstances, it is proper to do so;

   the Registrar may accept the application for the registration of the applicant’s trade mark subject to any conditions or limitations that the Registrar thinks fit to impose. If the applicant’s trade mark has been used only in a particular area, the limitations may include that the use of the trade mark is to be restricted to that particular area.

   Note:For limitations see section 6.

4. If the Registrar in either case is satisfied that the applicant, or the applicant and the predecessor in title of the applicant, have continuously used the applicant’s trade mark for a period:

   (a)beginning before the priority date for the registration of the other trade mark in respect of:

   (i)the similar goods or closely related services; or

   (ii)the similar services or closely related goods; and

   (b)ending on the priority date for the registration of the applicant’s trade mark;

   the Registrar may not reject the application because of the existence of the other trade mark.

   Note 1:An authorised use of the trade mark by a person is taken to be a use of the trade mark by the owner of the trade mark (see subsection 7(3)).

   Note 2:For predecessor in title see section 6.

   Note 3:For priority date see section 12.

5. For the Opponent’s argument under section 44, Ms Berger relied on the ADB SUPERSTOP trade mark extracted at paragraph 2 of this decision. The Opponent’s trade mark has an earlier priority date than the trade mark of the Applicant. In the case of Registrar of Trade Marks v Woolworths [1999] FCA 1020, Justice French said:

   The logic of subs 44(2) suggests that the determination whether goods are closely related to the services in question is logically antecedent to the determination whether the trade mark in respect of the services is deceptively similar to that in respect of the goods. Wilcox J at first instance in this case saw the questions as "conceptually distinct" but accepted that one could not be addressed in isolation from the second:

   
   "The closer the relationship between the services and particular goods, the more likely any similarity in marks will prove deceptive."

6. In the current matter, the services in the specification for the Applicant’s trade mark and the goods of ADB SUPERSTOP are closely related. The class 12 goods of ADB SUPERSTOP are (broadly) parts for vehicles but the emphasis is clearly on disc brake pads, brake blocks and linings, clutches and hydraulic components.  The class 35 services of the Applicant’s trade mark encompass the sale and distribution of these automotive parts and the class 37 services concern the reconditioning, maintenance and repair of vehicles.

7. Taking into account the notional use of the Applicant’s trade mark on all of the services, it is evident that they can be performed directly upon or in relation to the Opponent’s goods. This is particularly true for the selling of automotive parts. The maintenance and repair of vehicles also involves the provision of new brake pads or maintenance of other vehicle parts. I find that the respective goods and services are “generally regarded by the ordinary consumer as originating in, or being part of, the one industry or trade, or, a closely related trade or industry” (see Re Aussat Pty Ltd (1993) 27 IPR 309 (at 311)).

8. On a side-by side comparison I find that the trade marks ADB SUPERSTOP and SUPERSTOP are not substantially identical. In considering the deceptive similarity between the trade marks I refer to the case of Australian Woollen Mills Ltd v F. S. Walton and Company Ltd (1937) 58 CLR 641 per Dixon and McTiernan JJ (at 658):

   the marks ought not … to be compared side by side. An attempt should be made to estimate the effect or impression produced on the mind of potential customers by the mark or device for which the protection of an injunction is sought. The impression or recollection which is carried away and retained is necessarily the basis of any mistaken belief that the challenged mark or device is the same … The usual manner in which ordinary people behave must be the test of what confusion or deception may be expected. Potential buyers of goods are not to be credited with any high perception or habitual caution. On the other hand, exceptional carelessness or stupidity may be disregarded.

1. Firstly, the Applicant’s trade mark SUPERSTOP is completely encompassed within the Opponent’s trade mark. The common word element ‘SUPERSTOP’ is presented in a standard font, with identical construction and spelling to the Applicant’s trade mark. It is also distinct and separate from the acronym and device in ADB SUPERSTOP. I find that the expression ‘Superstop’ is the essential element in the trade marks and is most likely to the means of recalling and identifying the trade marks.

2. The words ‘Australian Disc Brakes’ which apparently appear below the acronym in the ADB SUPERSTOP trade mark are barely visible and would be easily overlooked in contrast with the word SUPERSTOP. The presence of the acronym ‘ADB’ for Australian Disc Brakes does not alter the overall meaning of the trade mark or affect the expression SUPERSTOP. It is much more likely that consumers will refer to SUPERSTOP rather than the acronym within the logo, despite any descriptive quality that ‘SUPERSTOP’ may have in relation to brake pads.

3. I find that potential customers of these goods and services are more likely than not to believe that the trade marks originate from the same source. The likelihood of confusion occurring in the Australian marketplace between the two trade marks is real and tangible. A prima facie ground under subsection 44(2) has been made out. However, this ground of opposition may be overcome if the Applicant can establish prior continuous use of its trade mark.

Prior Continuous Use

1. The issue under subsection 44(4) of the Act is whether the Applicant can demonstrate continuous use of the trade mark on the relevant services before 29 April 2003, being the priority date for ADB SUPERSTOP. During examination, the Applicant provided evidence sufficient to convince the examiner that the Applicant’s trade mark had prior use and was acceptable under subsection 44(4) of the Act.

2. Kreti 1 states that the use of SUPERSTOP by the Applicant (and its predecessors in title) in relation to the services has been continuous in Australia since 1975. The Opponent disputes that such use has been continuous and also highlights the lack of documentation relating to the transfer of the assets in the businesses. Due to this lack of documentation, it says, the Applicant is not entitled to rely on the prior use of its purported predecessors in title.

3. The Kreti declarations attest to the following history of the Applicant’s trade mark. In 1975, Bruce Tayler began trading under “Bruce Tayler’s SUPERSTOP Brake Service” in relation to services identical to those in the specification of the Applicant’s trade mark. The evidence of use of SUPERSTOP in and around this period consists of a promotional surfboard featuring “SUPERSTOP Brake Service”, a newspaper advertisement from 1979, and an undated business card. According to June Tayler (widow of the late Bruce Tayler), the signage at the business premises itself which prominently featured the word ‘SUPERSTOP’ also remained unchanged from 1982 until January 2008. 

4. In 1985 Mr Tayler sold the business to John Fewson. There are no documents in evidence relating to the sale from Mr Tayler to Mr Fewson but a number of people attest to that sale occurring. For example, Mrs Tayler attests: “We sold [the SUPERSTOP business] to John Fewson in or around 1985…”, and that “The Original SUPERSTOP business was continued by John Fewson as “Superstop Brake Service”.

5. Mr Fewson became the director of the company Superstop Brake Service Pty Ltd (‘SBS’) when it was incorporated on 28 March 1988. The evidence indicates that the SUPERSTOP business was operating in relation to the services at least until 1995. The Applicant provided an extract from a 1994 financial report of the company and a portion of a Director’s report from 1995 to support these assertions. The subsequent piece of dated evidence consists of a sales invoice dated from 2004 under the SBS company name.    

6. In October 2007, the business was sold to the Applicant (then operating under the name of Worldcorp Pty Ltd) and has operated under SUPERSTOP since that time.  

7. In terms of whether the use of the Applicant’s trade mark has been continuous, there is an absence of documentary evidence in the period between 1995 and 2004. The Applicant concedes this lack of documentation and notes that evidence of use from prior companies is difficult to obtain, as the premises were cleared to make way for new owners. In addition to this explanation, the Applicant has provided supporting declarations in Kreti 2 to address the deficiency in the evidence.

8. The Applicant has provided statements (albeit unsworn) from suppliers and customers of the business attesting to the continuous trade of the SUPERSTOP business by Mr Tayler, SBS and the Applicant. There is also sworn evidence from a number of parties that the business has been financially successful under Tayler, SBS and the Applicant. However, it is the statutory declarations of Malcolm Draffin, June Tayler and Michael Cree that carry particular weight in regard to the continuous use of the Applicant’s trade mark.

9. Malcolm Draffin has been the chartered accountant for the SUPERSTOP business since 1999. He declares (at SPK-9):

   [I]t is my understanding that Superstop Brake Service Pty Ltd did not at any stage cease trading, nor did it cease to use the brand name “SUPERSTOP” to promote the SUPERSTOP business or its services.              

   The SUPERSTOP Business was acquired from Superstop Brake Service Pty Ltd by SUPERSTOP Brake & Clutch Pty Ltd on 1 October 2007.

10. Mr Draffin later supplies (in Kreti 2 - SPK2) a copy of the contract for the sale of business between SBS and Worldcorp Pty Ltd from September 2007. The contract does not specifically mention the trade mark but sells all the goodwill in the business and allows the Applicant to register the name ‘Superstop Brake Service’. In the absence of evidence of an agreement to the contrary, the transfer of the goodwill of a business impliedly includes a trade mark (see “Weston” Trade Mark [1968] RPC 167 at 183)). I find nothing in the evidence of the Opponent, beyond a criticism of the lack of documentation, to doubt that the transfer of the assets in the company occurred and that such transfer included the use of the SUPERSTOP trade mark.

11. Further, the Applicant and all of the predecessors in title operated out of the same premises in Mont Albert, Victoria. If there were any remaining doubt regarding the chain of title and continuous trade between Bruce Tayler, John Fewson, SBS and the Applicant, it is resolved by the statutory declaration of Michael Cree. Mr Cree is now the General Manager of the Applicant’s SUPERSTOP store and has been working at the same premises for 36 years. He worked as a mechanic for Bruce Tayler in 1975 and can attest to the use of the word ‘SUPERSTOP’ at that time. He also declares that the use continued when the business was sold to Mr Fewson in 1985 and:

    Throughout my career at SUPERSTOP, I have not once seen the business operate under any other name or trade mark. Further, I have always known the business to operate at a profit.

12. Given the above circumstances, I am satisfied that the Applicant has demonstrated use of the trade mark prior to 29 April 2003 with the earliest use of SUPERSTOP being in 1979. In the event I am incorrect and the use of “Bruce Tayler’s SUPERSTOP Brake Service” does not constitute use of the trade mark SUPERSTOP, the earliest use of the Applicant’s trade mark by the predecessor in title (SBS) was in 1988 at the latest. On the balance of probabilities, I am also satisfied that the use of the trade mark has been continuous since that time such that the provisions of subsection 44(4) may be applied to the Applicant’s trade mark. The ground of opposition under section 44 has not been established.

13. Section 58A provides:

Section 58A: Opponent’s earlier use of similar trade mark

(1)This section applies to a trade mark (section 44 trade mark) the application for registration of which has been accepted because of:

(a) subsection 44(4); or

(b)a similar provision of the regulations made for the purposes of Part 17A.

Note:Subsection 44(4) prevents rejection of an application for registration of a trade mark that is substantially identical with, or deceptively similar to, a registered trade mark or a trade mark whose registration is being sought where the first‑mentioned trade mark has been continuously used since before the priority date of the other trade mark.

(2)The registration of the section 44 trade mark may be opposed on the ground that the owner of the substantially identical or deceptively similar trade mark (similar trade mark) or the predecessor in title:

(a) first used the similar trade mark in respect of:

(i)similar goods or closely related services; or

(ii)similar services or closely related goods;

before the owner of the section 44 trade mark or the predecessor in title in relation to the section 44 trade mark first used the section 44 trade mark; and

(b) has continuously used the similar trade mark in respect of those goods or services since that first use.

Note:For predecessor in title see section 6.

1. As the provisions of prior use under section 44(4) have been applied to the Applicant’s trade mark at the acceptance stage, the ground of opposition under section 58A is available to the Opponent. In order to succeed under section 58A, the Opponent must establish use of the ADB SUPERSTOP trade mark prior to the Applicant’s first use of its SUPERSTOP trade mark. Under the section 44 ground, I have already found those trade marks to be deceptively similar.

1. The Opponent asserts that it has, since 1994, been manufacturing brake pads and importing, distributing and selling goods in Australia under the SUPERSTOP trade mark. Since 2002, the Opponent’s products have been sold directly to Supercheap Auto stores. Nemanic 1 indicates (at 36):

   Goods bearing the Superstop ® name have been stocked or purchased by my companies since about late 1994, and continuously from 2002.

2. The Opponent has not provided any evidence that ADB SUPERSTOP was used as far back as 1994 beyond unsupported assertions (such as the one above). The above statement indicates that any use prior to 2002 was not continuous and/or that the Opponent’s products were not sold to Australian consumers in the period between 1994 and 2002.

3. Some of the Opponent’s evidence refers to ‘AMPC Superstop’ brake pads rather than the ADB SUPERSTOP trade mark. I am of the view that the substitution of ‘ADB’ with ‘AMPC’ is an alteration that substantially affects the identity of the ADB SUPERSTOP trade mark. Accordingly, ‘AMPC Superstop’ is not the ‘similar trade mark’ for which section 44(4) was applied to the Applicant’s trade mark and the use of ‘AMPC Superstop’ therefore cannot be relied upon to support this particular opposition ground.

4. In terms of the use of ADB SUPERSTOP since 2002, the evidence of the Opponent demonstrates sales and advertisements of the brake pads from at least 2005 to date. The unsworn statement from the Business Manager of Supercheap Auto indicates that the Applicant has been selling the Superstop brake pads to Supercheap Auto since October 2003.

5. In any event, the Applicant has already demonstrated use of its trade mark prior to 2003 on its own closely related services. As a result, the Opponent has not established itself as the first user in relation to the goods and the ground of opposition under section 58A of the Act has not been made out.

6. Section 60 of the Act provides:

Section 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.

Note:For priority date see section 12.

1. For the purposes of establishing the section 60 ground of opposition, the Opponent relies on the reputation in its trade mark ADB SUPERSTOP. To successfully establish the ground, the reputation existing in that trade mark as at 8 May 2008 must be sufficient for the use of the Applicant’s SUPERSTOP trade mark to deceive or cause confusion in the Australian marketplace.

2. As previously addressed, the first established use of the Opponent’s trade mark ADB Superstop was in 2003 at which time the goods were advertised and sold from Supercheap Auto stores. While this particular distributor is well-known and has stores across Australia, it appears (according to the evidence) to be the only store that stocks the Opponent’s goods in Australia.

3. The evidence regarding the number of Supercheap Auto stores in Australia does not assist in establishing the existence of a reputation in the opponent’s trade marks. Elsewhere in the evidence it is clear that only some of the Australian Supercheap Auto stores actually stock the Opponent’s goods. Despite this, there is clear evidence that products described as “Disc Pads SUPER STOP” were in stock and sold from certain Supercheap Auto stores in Australia and New Zealand well before the priority date.

4. As mentioned under the section 58A ground, some of the catalogue advertisements and packaging constitute evidence of use of ‘AMPC SUPERSTOP’ brake pads rather than ADB SUPERSTOP. Mr Nemanic does not initially differentiate between these two trade marks, describing both generally as the SUPERSTOP ® trade mark. In Nemanic 3 attempts to clarify the presence of the second logo (at paragraph 4) by indicating that:

   The packaging/box has been marked with the ADB or AMPCO logos concurrently. The packaging in which the brake pads are sold has been labelled either [ADB SUPERSTOP] as registered under No. 951899, or AMPCO SUPERSTOP Logo…  

5. In any event, the common element in both trade marks, namely SUPERSTOP, is prominent on all of the opponent’s products.

6. The Opponent has advertised its ADB SUPERSTOP brake pads and rotors through the distributors’ catalogues and on its website. There is, however, no indication of the amount of advertising expenditure on the Opponent’s trade mark. In McCormick & Co Inc v McCormick (2000) 51 IPR 102 at 127, Kenny J said:

   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.

7. The estimated wholesale sales of the Opponent’s products to date are significant (Nemanic 1: paragraph 34). Despite the Opponent’s statement to that effect, the actual evidence of sales which are dated and occur before the priority date is negligible. Viewed as a whole, the evidence before me does not support such a high number of sales, there is no indication of whether those sales occurred in Australia or New Zealand, whether they were sales direct to the Australian consumer and which of those sales occurred prior to 8 May 2008. I find that I cannot infer a reputation in Australia on the basis of this statement.

8. I am satisfied that the Opponent has been trading in its products bearing the ADB SUPERSTOP (or AMPC Superstop) trade mark from 2003 to the current date. That said, the contents of Nemanic declarations are not sufficient to demonstrate the level of reputation existing in the Opponent’s trade mark such that confusion from the use of the Applicant’s trade mark would result.   

9. The ground of opposition under section 60 of the Act has not been established.

Decision

1. Section 55 (1) of the Act provides:

   (1) 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.

   Note:  For limitations see section 6.

2. The Opponent has not established a ground of opposition under the Act. I direct that trade mark application no. 1239432 SUPERSTOP may proceed to registration after one month from the date of this decision.

3. If the Registrar is served with a notice of appeal on or before that time, I direct that registration shall not occur until the appeal has been discontinued, or in the event of a decision from the court, that the application be subject to that order. 

Costs

1. The Applicant has been successful and I find that it is entitled to an award of costs. I award costs against the Opponent as per Schedule 8 of the Trade Marks Regulations 1995.

Heath Wilson

Hearing Officer

Trade Marks Hearings

23 January 2012