Batmark Limited v ZLL Trading Pty Ltd

[2009] ATMO 103

TRADE MARKS ACT 1995

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

Re:Opposition by BATMark Limited to registration of trade mark application 1235810(34) - BAT & DEVICE - filed in the name of ZLL Trading Pty Ltd.

Delegate:

Jock McDonagh

Representation:

Opponent: Trevor Stevens of Davies Collison Cave, Attorneys

Applicant: Ms Lucy Shen

Decision:

2009 ATMO 103

Section 52 opposition: ss 44 and 60 grounds established

Costs awarded against the applicant

Background

1. ZLL Trading Pty Ltd (“the applicant”) has filed application to register the trade mark, details of which follow:

Application Number:	1235810
Priority date:	17 April 2008
Goods:	Class 34: Cigarette lighters, other than for use in motor vehicles; electronic cigarette lighters
Trade Mark:
Advertised:	21 August 2008

1. On 29 August 2008, BATMark Limited (“the opponent”) filed a notice of opposition pursuant to section 52 of the Trade Marks Act 1995 (“the Act”). The notice specified 12 grounds of opposition, in effect each of the grounds provided by the Act.

2. The matter came before me, as a delegate of the Registrar of Trade Marks, for hearing in Sydney on 8 September 2009.  The opponent was represented by Mr Trevor Stevens of Davies Collison Cave, Patent and Trade Mark Attorneys of Sydney.  The applicant was represented by its officer, Ms Lucy Shen, at the hearing.

3. Four grounds of opposition were relied on at the hearing, being those under sections 42, 44, 58 and 60 of the Act. The opponent did not pursue the remaining grounds. For the sake of completeness, I treat the remaining grounds of opposition as having been abandoned.

Evidence

1. The evidence filed in these proceedings consisted of a declaration by Nicholas Mercer, the Trade mark Manager of BATMark Limited of London.  The declaration was executed on 17 November 2008 and contained 15 exhibits, numbered Exhibit 1 to Exhibit 15.

2. The applicant did not file any evidence in these proceedings.

Preliminary matters

1. The evidence in support of the opposition included a copy of my decision in the trade mark opposition matter  BATMark Limited v Speedlight Pty Ltd [2004] ATMO 5 (30 January 2004), in which I had refused to register the following trade mark:

Application Number:

866941

Priority date:

21 February 2001

Goods:

Class 9: Goggles and sunglasses; head gear and face gear for cyclists for protection against accident and injury; protective gloves for cyclists; fashion spectacles; optical goods; reading glasses

Class 34: Tobacco, raw or manufactured; smokers' articles; matches

Trade Mark:

1. In that 2004 matter, the opponent in this matter opposed registration on a number of grounds. I refused registration with respect to the Class 34 goods because the opponent established grounds under sections 44 and 60 of the Act. However, the trade mark was registered for the Class 9 goods.

2. My role in the earlier matter was brought to the attention of the parties by the Deputy Registrar Hearings by letter dated 28 August 2009. The Deputy Registrar did not believe any problems regarding my impartiality would arise, but gave the parties an opportunity to make submissions on the issue. No submissions were received.

3. At the beginning of the hearing, because the applicant’s officer was not represented by an IP professional and the applicant obviously had not been represented throughout the pre-hearing process, I explained the process to her.

4. Mr Stevens, for the opponent, also raised some issues arising from the lack of representation of the applicant. He stated that the evidence in support of the opposition had raised issues of ownership of the applicant’s trade mark, which went to the sections 42 and 58. The lack of evidence in reply would, he said, entitle me to draw certain inferences. I noted this submission and advised that I would deal with such issues as they arose.

5. It is obvious that the applicant has not availed itself of professional IP advice in this matter. However, the applicant has had the opportunity to do so and I am satisfied that the applicant understands the process that must be followed and has had a proper chance to put its case. Having chosen a course of action, the applicant must accept any consequences that follow. It is not for me to act as advocate for the unrepresented party.

Ground 1: Section 58 - Applicant Not Owner of the Trade Mark

1. Section 58 of the Act states:

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

   Note:  For applicant see section 6.

1. In order to establish this ground, it is incumbent upon an opponent to show that, in the time before filing, the applicant is not the first user in trade in Australia of the applied-for trade mark.  To do so, the opponent must show, at a minimum, that not only is the applied-for trade mark at least substantially identical to an older trade mark, but that it is applied to the same kind of goods: Re Hicks’ Trade Mark (1897) 22 VLR 636 at 640.

2. The opponent cited trade mark registration 866941 in support of this ground. While I am satisfied that the cited trade mark is at least substantially identical to the applicant’s trade mark, I am not satisfied that the earlier registered trade mark is used with the same kind of goods. Therefore, I find that this ground of opposition is not established.

Ground 2: Section 60 - Prior Reputation

1. The application was filed after the Trade Marks Act Amendment Act 2006 amendment to section 60 came into effect. Accordingly, the amended version of section 60 applies[1], which no longer requires that the applicant’s mark be substantially identical with or deceptively similar to the opponent’s prior marks as a threshold issue to be determined before considering reputation. The section states:

   [1] Apple Computer Inc v Gundy Computer Services Pty Ltd [2008] ATMO 33 (20 May 2008)

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

60. 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.

1. To satisfy section 60, the opponent has the burden of establishing the following elements:

¨    a pre-existing trade mark;

¨    the acquisition of a reputation in Australia by the pre-existing trade mark; and

¨    a likelihood that, because of that reputation, use of the applied for trade mark would be likely to deceive or cause confusion.

1. 
   The opponent relied on a common law trade mark (which is part of a registered trade mark) that appears as follows:

1. I am satisfied that the evidence before me demonstrates that the above mark has been used as a trade mark in relation to tobacco products internationally and in Australia since about 1963.

2. The next question in respect of the section 60 ground, however, is whether the opponent has shown a sufficient reputation in its trade mark to satisfy the requirements of subsection 60 (b), such that the reputation is wide enough that deception and confusion is likely.

3. It is not necessary to prove reputation by direct evidence of consumer appreciation; it is commonplace to infer reputation from a high volume of sales, together with substantial advertising and other promotions: McCormick & Company v McCormick [2000] FCA 1335, at paragraph 86.

4. The evidence shows that the opponent has a 45% market share in the tobacco industry in Australia.  It is forbidden to advertise tobacco products in Australia; however, it still has a substantial volume of sales.  I am satisfied that evidence allows me to infer a substantial reputation in respect of tobacco products.

5. I am also satisfied that there is a real and tangible likelihood that use of the applicant’s mark would deceive or cause confusion.  The source of the deception or confusion is obvious - the use of the word bat, with or without a bat device, with tobacco-related products such as cigarette lighters is likely to suggest to likely purchasers that the products are either those of the opponent, or somehow endorsed by the opponent.

6. I find that this ground of opposition has been established.

Ground 3: Section 44 - Conflicting Trade Mark

1. To establish the section 44 ground, the opponent must establish all of the following:

¨    At the priority date

¨    there was a substantially identical or deceptively similar trade mark application or registration

¨    in respect of similar goods or closely related services

¨    in the name of a person other than the applicant.

1. 
   The opponent has the following trade mark, number 634885, registered in Australia with a priority date of 13 July 1994:

1. This trade mark is registered in Class 34 for cigarettes, tobacco, tobacco products, smokers’ requisites, lighters and matches.  I am satisfied that these are similar goods to those of the applicant.

2. In BATMark Limited v Speedlight Pty Ltd I found that registration 634885 is deceptively similar to registration 866941.  In that decision, I applied the well known tests derived from Australian Woollen Mills Ltd v F.S. Walton & Co Ltd (1937) 58 CLR 641, and Shell Co of Australia Ltd v Esso Standard Oil (Australia) Ltd (1961) 109 CLR 407, and was satisfied that the applicant’s mark, when used in relation to tobacco products, was deceptively similar to the opponent’s registered trade mark.

3. Having concluded, for the purposes of section 58, that the applicant’s trade mark is at least substantially identical to registration 866941, I am satisfied that the applicant’s trade mark is likewise deceptively similar to the opponent’s registered mark.

4. I find that this ground of opposition has been established.

Decision and Costs

1. Having found in favour of the opponent in terms of sections 44 and 60 there is no need for me to discuss the remaining ground pressed by the opponent, although this ground or any others in the Act may also be relied on in the event of an appeal of this decision.

2. Subsection 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.

3. The onus is upon the opponent to establish one or more of its grounds of opposition. I find that the opponent has met the onus upon it, in terms of the grounds of opposition under sections 44 and 60 argued at the hearing. Accordingly, and subject to a successful appeal from my decision, I refuse to register trade mark application 1235810.

4. 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 ZLL Trading Pty Ltd.

Jock McDonagh

Hearing Officer

Trade Marks Hearings

17 December 2009