Basler Electric Company v Boge Elastmetall GmbH

[2017] ATMO 64

TRADE MARKS ACT 1995

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

Re:Opposition by Basler Electric Company to extension of protection of International Registration Designating Australia 1236087 (7, 9, 12, 16, 35, 38, 41) (Australian trade mark application 1675623) - B & DEVICE - held in the name of BOGE Elastmetall GmbH.

Delegate:

Jock McDonagh

Representation:

Opponent: Amanda Caldwell of Spruson & Ferguson Patent and Trade Marks Attorneys (via video)

Applicant: Peter Hallett of Watermark Patent and Trade Marks Attorneys (via telephone)

Decision:

2017 ATMO 64

Reg. 17A.29 opposition – Grounds pursued under sections 42, 58 and 60 not established – IRDA to be granted protection.

Background

1. On 17 November 2014, BOGE Elastmetall GmbH (‘the Holder’) applied for extension of protection to Australia of International Registration no. 1227675. The current details of the resulting International Registration Designating Australia (‘the IRDA’) are:

Trade mark:       

Trade mark application:

International Registration:

1675623

1236087

Filing Date:

17 November 2014

(convention priority date 20 May 2014)

Specification:

Class 7: Conventional and hydraulic engine mountings; switchable engine mountings; active engine mountings

Class 9: Online publications [downloadable]

Class 12: Damper bearings; suspension turret webs; axle guide bearings; leaf spring support bearings; hydraulically damping bearings; stabiliser bearings; suspension subframe bearings; differential bearings; torque supports; transmission bearings; pedals made of plastic for vehicles; pendulum supports made of plastic; connecting rods made of plastic; components for airbag systems made of plastic; ball cups made of plastic; oil containers made of plastic; the above goods are in each case for vehicles

Class 16: Office products; printing products; bookbinding products; forms; photos; calendars; catalogues; paper, paperboard [cardboard]; brochures; posters; boxes made of cardboard or of paper; stationery; teaching aids and materials [except apparatus]; packaging material made of plastic, not included in other classes; printing type; printing blocks; magazines; newspapers, all aforesaid goods in relation to vehicles and vehicle accessories

Class 35: Advertising; business management; business administration; office work; marketing; public relation work; online advertising on a computer network; organising exhibitions and trade fairs for commercial and promotional purposes; staging trade fairs and exhibitions for commercial or for promotional purposes; systemization and compiling of data in computer databases, in particular parts lists, material master files, documents, illustrations, order lists, spare parts catalogues and customer service information; retail and wholesale services for vehicles and vehicle accessories, all aforesaid services in relation to vehicles and vehicle accessories

Class 38: Telecommunications; providing access to computer programs on data networks, to information on the Internet and to a worldwide computer network, as well as platforms and portals on the Internet

Class 41: Training; entertainment; sport activities; cultural activities; desktop publishing [producing publications using the computer]; providing electronic, non-downloadable publications online; online publication of electronic books and magazines; organising and holding seminars, workshops, exhibitions, media events, all aforesaid services in relation to vehicles and vehicle accessories

1. The IRDA was examined as required by Regulation 17A.12 of the Trade Marks Regulations 1995 (‘the Regulations’). IP Australia advertised its intention to extend protection to Australia in the Australian Official Journal of Trade Marks on 5 March 2015. 

2. Basler Electric Company (‘the Opponent’) filed a Notice of Intention to Oppose the extension of protection to Australia of the IRDA on 4 May 2015. Thereafter the parties filed, respectively, a Statement of Grounds and Particulars (‘the Statement’) a Notice of Intention to Defend and evidence as provided by the Regulations.

3. I heard the matter in Canberra on 22 February 2017 as a delegate of the Registrar of Trade Marks. Amanda Caldwell of Spruson and Ferguson Patent and Trade Marks Attorneys appeared by video link for the Opponent. Peter Hallett of Watermark Patent and Trade Marks Attorneys Lawyers appeared by telephone link for the Holder.

   Evidence

4. The following evidence was filed in the opposition:

Declarant	Status	Date, Known as	Exhibits
Evidence in Support
Douglas Steinacher	Product Line Manager of the Opponent	14.10.15 ‘Steinacher’	Annexure A, DS-1 to DS-28
Alan Gerard Linklater	Sole Director and owner of Toyne Business Consultants	12.10.15 ‘Linklater’	Annexure A, AL-1 to AL-3
Amanda Caldwell	Employee of Spruson & Ferguson	16.10.15 ‘Caldwell 1’	AC-1 to AC-18
Evidence in Answer
James Russell	Managing Director Boge Elastmetall Australia Pty Ltd	27.01.16 ‘Russell’	1 to 5
Evidence in Reply
Amanda Caldwell	Employee of Spruson & Ferguson	11.04.16 ‘Caldwell 2’	1 to 8

Discussion

1. Regulations 17A.28 and 17A.34 extend grounds for rejection of and opposition under the Act to IRDAs. The Opponent relied primarily on sections 42, 58 and 60 of the Act as the grounds of opposition. The Opponent did not abandon the sections 59 and 62A grounds contained in the Statement; however, Ms Caldwell did not make submissions about them.

2. The Opponent is the owner of the following unregistered trade marks, which it claims have been used in Australia prior to the filing date of the IRDA.

‘B Mark’ ‘Basler Mark’ ‘Basler Electric Mark’

1. I note that the B Mark, while referred to in the covering declarations Steinacher and Linklater, is not otherwise shown in evidence in relation to use on the Opponent’s goods, while the Basler Mark and Basler Electric Mark are the only marks shown in exhibited annexures.

   Section 60

2. Section 60 of the Act is reproduced below:

   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.

3. To establish a ground of opposition under section 60 an opponent must demonstrate that as at the Priority Date there was another trade mark that had acquired a reputation in Australia amongst a significant number of persons in the relevant market such that use of the Trade Mark would be likely to deceive or cause confusion.

4. It is not necessary to show under section 60 that the respective trade marks are deceptively similar although such a finding can be relevant in determining the likelihood of deception or confusion.

5. Reputation is to be assessed according to the test set out in McCormick & Company Inc v McCormick (‘McCormick’)[1] by Kenny J at [81] – [82]:

   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”.

   Does the evidence establish that in Australia before 9 March 1992 the McCormick & Co marks were recognised by the public generally and, because of that, the use by Mary McCormick of her marks would be likely to cause the public confusion, as for example, by the public’s mistakenly attributing a business connection between the two or attributing her product to the company?

   [1] (2000) 51 IPR 102

6. Further, at [86], 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 evidence demonstrates that prior to May 2014, the Opponent had sold a fairly narrow range of specialized products in Australia, through a single distributor of electricity/power generation products to a small customer base.

8. Caldwell 2 shows that the Opponent has filed applications to register the Basler Mark and the Basler Electric Mark in classes 7 (inter alia electrical generators, alternators and motors) and 9 (including magnetic components, transformers and electrical generation goods). This demonstrates intended use in the electricity/power generation industry.

9. Linklater is made by the previous owner of the Australian distributer of the Opponent’s goods in Australia. He confirms that his company is a supplier and designer of electrical and electronic equipment that is primarily used in the generation and distribution of power.

10. Linklater states that his company typically spent between $10,000 and $30,000 per annum advertising and promoting the Opponent’s goods. Linklater believed the Opponent had acquired such a reputation that use of the IRDA in relation to the same or similar goods or related services as the Opponent would lead to consumer deception or confusion.

11. For the Holder, Russell states that the Holder supplies parts and components to the automotive industry. The statements of goods in classes 7 and 12 demonstrate that the kinds of goods are of the type intended to be used in the manufacture of motor vehicles.

12. I am not satisfied that the requisite reputation has been established. The evidence in Linklater is limited to the assertions of the amount of advertising, without any supporting documentation to show how it was effected and the particular sums involved. Likewise Steinacher deposes to catalogues being produced and distributed; however, there are no details as to the number distributed, how or to whom they were distributed.

13. Even if the requisite reputation had been established I am not satisfied that there would be a real tangible danger of confusion or deception. The Opponent’s goods are expensive and specialized electricity generation control products used in electricity generation and distribution. These products are entirely unrelated to the goods and services covered in the IRDA, being primarily vehicle components and associated services.

14. I consider that because of the relative expense of the products of both parties and their specialisms, they would be purchased after extensive research and due consideration and are not the kind of goods that might be purchased on impulse or in a hurry.

15. There is no evidence of any actual confusion in Australia, or elsewhere, between the Opponent and the Holder.

16. This ground of opposition has not been established.

    Section 42

17. Section 42 of the Act provides:

    42Trade mark scandalous or its use contrary to law

    An application for the registration of a trade mark must be rejected if:

    (a)the trade mark contains or consists of scandalous matter; or

    (b)its use would be contrary to law.

18. The Opponent argued that the use of the IRDA would be contrary to law under section 42(b) of the Act because its use would amount to a contravention of the Copyright Act 1968 (Cth), (hereafter ‘the CA’). Ms Caldwell submits that the IRDA is a reproduction of a substantial part of one (or both) of the Opponent’s works (referring to sections 14(1), 31(1)(a) and 36 of the CA).

19. The case of Advantage Rent-A-Car v Advantage Car Rental Pty Ltd makes clear the role of the Registrar in making decisions of this kind:

    I see no reason why some legislation should be able to be relied on before the Registrar to establish contrariety to law and other legislation such as the Copyright Act, albeit more complex, should not. Further, it is well-settled that a power granted to the Registrar and to a court can be at once administrative and judicial depending on who was exercising the power.[2]

    …

    [T]he Registrar has the comfort that the criterion is that the use "would" not "could" be contrary to law….It should also be noted that what is required is that the Registrar form a view as to whether the use of a trade mark would be contrary to law. Such opinion does not have a similar effect to say, a judicial conclusion of law as to breach of copyright in copyright proceedings; the effect is limited to the refusal of registration.[3]

    [2] Advantage Rent-A-Car v Advantage Car Rental Pty Ltd [2001] FCA 683, [26] (‘Advantage Rent-A-Car’).

    [3] Ibid [28].

20. Section 32(1) of the CA provides that "copyright subsists in an original literary, dramatic, musical or artistic work that is unpublished and of which the author was a qualified person at the time when the work was made". A qualified person is defined in section 32(4) as an Australian citizen, an Australian protected person or a person resident in Australia. However, section 184(1)(c) allows for the provisions of the CA to apply to persons who are citizens of another country in the same manner that they apply to qualified persons. The United States of America is one of the countries to whose citizens the protection of the CA applies.

21. Ms Caldwell submitted that the Opponent’s B Mark is an "artistic work". An artistic work is defined in section 10(1)(a) of the CA to include a drawing whether it is of artistic quality or not. Although the applicant's trade mark is not what one would consider to be particularly artistic and uses a simple transposition of the letter ‘E’ over the letter ‘B’, the authorities are clear that the threshold for what is an artistic work is low and, for copyright to subsist, the work does not need to be remarkably artistic: see for example Roland Corporation v Lorenzo & Sons Pty Ltd.[4]

    [4] [1991] FCA 617; (1991) 33 FCR 111 per Pincus J at 114.

22. The next requirement for copyright to subsist in an artistic work is that the mark must be original. The concept of originality is also not a particularly rigorous one; however, there is no specific evidence in relation to the identity of the author of the B Mark and when and where it was first published.

23. In any event, I am not satisfied that the Holder has reproduced, or reproduced a substantial part, of the Opponent’s B Mark. The Opponent’s B Mark is substantially a dark E superimposed on B device, whereas the IRDA is substantially a light stylized B (that looks very much like the figure 3) on a dark background and which does not suggest the letter E at all.

24. The substantial differences in the marks are such that I cannot be satisfied that that the use of the IRDA would be contrary to law.

25. This ground of opposition has not been established.

    Section 58 – Applicant not owner of trade mark

    33.   Section 58 of the Act is reproduced below:

    The registration of a trade mark may be opposed on the ground that the applicant is not the owner of the trade mark.

    34.   The applicable law regarding ownership of a trade mark, or IRDA, in Australia is well known.  As eloquently put by Hearing Officer Michael Kirov in L.T. Overseas Limited v Chemico Pty Ltd[5]  at [18]:

    The word “owner” is not defined in the Act, although there are numerous decisions where courts have considered its meaning.  It is well established that in the absence of fraud the owner of a trade mark in Australia for particular goods is taken to be the first person to use it in the course of trade in Australia in relation to those goods[6] (or in relation to goods considered to be “the same kind of thing” or to apply to register it).[7]

    [5] [2008] ATMO 44

    [6] Seven Up Co v OT Ltd (1947) 75 CLR 203.

    [7] Re Hicks’ Trade Mark (1897) 22 VLR 636.

26. The reference to a trade mark includes one that is at least substantially identical to it[8]. As discussed above, the B Mark and the IRDA are not substantially identical. Additionally, I have discussed earlier that the use of the respective marks are not in relation to the same kind of goods or services

    [8] Carnival Cruise Lines Inc v Sitmar Cruises Ltd [1994] FCA 936; (1994) 120 ALR 495; (1994) 31 IPR 375; [1994] AIPC 91-049

27. I am not satisfied that the Opponent has established this ground of opposition.

    The Other Grounds

28. The grounds in the Statement under sections 59 and 62A of the Act were not supported by evidence or submissions.

29. Russell provides evidence that the Holder does in fact sell its goods in Australia under the IRDA, which along with no evidence to the contrary from the Opponent effectively refutes the section 59 ground.

30. Section 62A effectively requires substantial identity of the IRDA with the Opponent’s trade marks or other circumstances adduced in the evidence to support a finding of bad faith. There was nothing in evidence or submissions that could support this ground.

31. The grounds in the Statement under sections 59 and 62A of the Act have not been established.

    Decision

32. Regulation 17A.34N provides:

    (1)Unless the opposition proceedings are discontinued or dismissed, the Registrar must decide:

    (a)to refuse protection in respect of all of the goods or services listed in the IRDA; or

    (b)to extend protection in respect of some or all of the goods or services listed in the IRDA (with or without conditions or limitations);

    having regard to the extent (if any) to which the grounds on which the IRDA was opposed have been established.

    (2)The Registrar must notify the International Bureau of the Registrar’s decision.

33. The Opponent has not established the grounds on which the IRDA was opposed and it is appropriate that the Registrar decides to extend protection to the IRDA.

34. The IRDA may proceed to protection 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 protection shall not occur until the appeal has been decided or discontinued and the disposition of the IRDA is to be in accordance with the Court’s order or direction.

    Costs

35. As the Holder has been the successful party, it is appropriate that the Registrar award costs against the Opponent at the scale set out in Schedule 8 to the Regulations.

    Jock McDonagh

    Hearing Officer

    Trade Marks Hearings

    30 June 2017