Bluescope Steel Ltd v Maan Enterprises Pty Ltd
[2011] ATMO 26
•29 March 2011
TRADE MARKS ACT 1995
DECISION OF A DELEGATE OF THE REGISTRAR OF TRADE MARKS, WITH REASONS
Re:Opposition by BLUESCOPE STEEL LIMITED to registration of trade mark application 1253955, 1253966 (classes 1, 19) - BLUE SKY WATER - filed in the name of MAAN ENTERPRISES PTY LTD.
Delegate: T. E. Williams Representation: Opponent: Fiona Brittain, Davies Collison Cave, patent attorneys
Applicant: David Williams of counsel, instructed by Andrew Nicholson, Mullins Lawyers, solicitors: written submissions on substantive matter, telephone submissions in relation to further evidence applicationDecision: 2011 ATMO 26
S52 opposition: BLUE SKY WATER able to coexist with BLUESCOPE WATER. No ground of opposition established, registration to proceed. Statement of reasons for refusal of permission for applicant to rely on further evidence.Background
Maan Enterprises Pty Ltd (“the applicant”) has filed two applications to register the trade mark BLUE SKY WATER (“the trade mark”). Those applications were filed on 29 July 2008 (“the priority date”) and have been numbered as 1253955 and 1253966. I will not list the goods, in classes 6 and 19 specified in the applications but they can be summarized as “tanks and fittings therefor of metal” and “non-metallic tanks and fittings” respectively.
Registration of the trade mark is opposed by Bluescope Steel Ltd (“the opponent”), as provided for under s 52 of Trade Marks Act 1995 (“the Act”). The opposition process initially followed the course set out in the regulations. The opponent filed evidence in support of its opposition, and served a copy of this on the applicant. That evidence consists of declarations by Gavin Heitman, the Queensland Regional Business Manager of Bluescope Water Pty Ltd. (“Water”), Andrew Cropp, the General Manager of Water, and Robert Lynch, the Building Manager of Hallmark Homes Pty Ltd.
From the evidence, Water is wholly owned by the opponent. Mr Cropp gives evidence about how Water has used the trade mark BLUESCOPE WATER (“the opponent’s trade mark”) in respect of, primarily, steel water tanks, and gives details of revenue and advertising, both of which have been extensive since the opponent adopted its trade mark in 2004. The tanks that Water supplies are quite large, domestic ones being of 1-10,000 litres, with rural and school water tanks being significantly bigger again. Messrs Lynch and Heitman add detail and depth to this picture, with a particular focus on incidents or potential incidents of confusion between the trade mark and the opponent’s trade mark.
The applicant elected not to rely on evidence in answer to the opposition, and there the matter rested until August 2010 when the opponent requested to be heard and the opposition was listed for hearing on 7 December 2010. I was assigned to conduct that hearing, which was to be in Melbourne since the applicant did not propose to attend and would rely on written submissions. What follows is my decision of the opposition. However, there are some procedural complexities which it is necessary to explain beforehand.
Procedural matters
On 9 November 2010, having been assigned to conduct the hearing and decide the matter under delegation from the Registrar, I proposed directions under reg 5.16 of the Trade Mark Regulations 1995, to the effect that:
- the opponent specify, from among the list nominated in its notice of opposition, the grounds on which it would rely, following which, 7 days later,
- the parties were to exchange written submissions, starting with the opponent 14 days before the hearing, and then the applicant 7 days later.
Those directions took effect and the opponent has complied, though perhaps not in an ideal way, as I will explain. The opponent relies on grounds of opposition under sections 44, 60, 42(b) and 62A of the Act. It must be said that the last of those grounds, while present in the notice of opposition, was not listed when the opponent specified the grounds on which it intended to rely. It was raised a week later, when the opponent filed and served a copy of its written submissions. The opponent has, since then, sought to rely also on yet another ground, s 59, which it now believes can be established. The opponent also sought my permission to serve and rely on further evidence.
Leaving aside the opponent’s nimble footwork with respect to the grounds of opposition on which it will rely, I will have more to say below about the opponent’s further evidence. For the moment it is sufficient to say that the opponent’s further evidence simply adds to the number of alleged instances of confusion between the trade mark and the opponent’s trade mark. It updates the already-existing evidence but, since it does not establish a great deal beyond what is already in evidence, it does not put any significant new burden upon the applicant. Having looked at the opponent’s further evidence and the circumstances behind its disclosure at that late stage the pragmatic approach, in the lack of objection from the applicant, is to grant permission. I have done so. I subsequently gave the applicant the opportunity to revise its written submissions to deal with the further evidence. While it has not done this, the absence of any further submissions will not affect the outcome.
The applicant too requested permission to introduce further evidence. To this the opponent objected and I convened a telephone hearing to determine that matter. At that telephone hearing the applicant was represented by David Williams of counsel, instructed by Andrew Nicholson, a partner of Mullins Lawyers, solicitors. The opponent was represented by Fiona Brittain, solicitor, of Davies Collison Cave. Having heard the parties I refused the applicant permission and awarded costs against the applicant in respect of that hearing. My reasons for doing so are set out in annexure 1 to this decision.
A further complication arose in that the opponent, when made aware of the applicant’s further evidence, sought my permission to rely on a second additional ground of opposition. Briefly, the opponent sought to traverse certain matters said to arise, under s 59, from the applicant’s further evidence. That evidence is not part of these proceedings, since I refused permission for it to be introduced, and the opponent now seeks to rely on Mr Williams’s submissions about the substance of the applicant’s further evidence. Before the hearing of the substantive matter I assured the applicant that, if the opponent looked like establishing a ground of opposition under s 59, and if no other ground of opposition already nominated was established, I would ensure that the applicant was not disadvantaged by being taken by surprise in this way.
Grounds considered
As Ms Brittain noted, the opponent bears the onus of establishing one or more of the grounds of opposition on the balance of probabilities[1].
[1] Following Gyles J in Pfizer Products Inc v Karam (2006) 70 IPR 599. See also Chocolaterie Guylian N.V. v Registrar of Trade Marks (2009) 82 IPR 13 at [22] to [26].
S 44– Deceptively similar prior registration
The most obviously relevant provision is sub-section (1), which reads:
(1) Subject to subsections (3) and (4), an 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) a trade mark whose registration in respect of similar goods or closely related services 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 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.
Note 1: For deceptively similar see section 10.
Note 2: For similar goods see subsection 14(1). (Relevantly, goods are similar to other goods if they are the same as the other goods; or if they are of the same description as that of the other goods. )
Note 3: For priority date see section 12.
The opponent relies on trade mark registration 982984, for the opponent’s trade mark BLUESCOPE WATER. This is registered for, among other things, metal goods, pipes and valves and I am satisfied that the applicant’s goods in classes 6 and 19 are similar to goods in classes 6, 11 and 20 in the registration[2]. Consistent with the applicant’s written submissions, the only issue remaining to be decided under s 44 is that of deceptive similarity between the trade mark and the opponent’s trade mark.
[2] Ms Brittain relied on Bobart v Ferry [2010] ATMO 43 to support her arguments on that issue, which I fully accept.
Deceptive similarity is dealt with in s 10:
For the purposes of this Act, a trade mark is taken to be deceptively similar to another trade mark if it so nearly resembles that other trade mark that it is likely to deceive or cause confusion.
Ms Brittain pointed to the identical beginning and ending words, BLUE and WATER, within the respective trade marks. She went on to draw an analogy with findings of deceptive similarity in respect of the trade marks REBOVIR/REVOVIR on one hand, and RETROVIR[3]; and of LITL and LIDL[4]. This is something that the applicant addressed in its written submissions, arguing that, in the case before me, the ideas of the marks are very different, on the one hand, “blue sky” and on the other “blue scope”, two words that, together, have no apparent reference as they have no apparent connection. I agree that the opponent’s analogy with invented words is somewhat forced. Prima facie, it seems to me that the way in which an ordinary English expression like “blue sky” would be perceived or recollected, if adopted as part of a trade mark, is not likely to be similar to the process governing more complex single-word trade marks like those on which Ms Brittain relied. As the delegate in the REVOVIR matter noted:
These identical beginnings and terminations are likely to contribute to the way the trade marks in questions are recognized, remembered and dealt with. With these particular trade marks an erroneous recognition may arise from the commonality of both the beginning and ending of the words – people tend to recognize words from the pattern or outline that they form.
The idea of “recognition by pattern or outline” is something about which Ms Brittain had more to say in relation to s 60, to which I will come later in these reasons.
[3] Glaxo Wellcome Australia Ltd v Bukwang Pharm Co Ltd [2008] ATMO 12
[4] Lidl Stiftung & Co KG v Aquest LLC [2010] ATMO 21.
Mr Williams also argued that the applicant’s goods were not sold by verbal orders given to “shopkeepers”. Here he sought to counter Ms Brittain’s reliance (her underlining) on Aristoc Ltd v Rysta Ltd[5]:
It is the person who only knows the one word, and has perhaps an imperfect recollection of it, who is likely to be deceived or confused. Little assistance, therefore, is to be obtained from a meticulous comparison of the two words, letter by letter and syllable by syllable, pronounced with the clarity to be expected from a teacher of elocution. The court must be careful to make allowance for imperfect recollection and the effect of careless pronunciation and speech on the part not only of the person seeking to buy under the trade description, but also of the shop assistance ministering to that person's wants.'
[5] Aristoc Limited v. Rysta Limited (1943) 60 RPC 87 at 108 and approved by the majority on appeal in (1945) 62 RPC 65 at 72-73.
In Mr Williams’s view, the buyers of water tanks were developers and builders, not property owners[6]. In that context, Mr Williams argued that it was highly unlikely that, during the process of determining the size, suitability, location and plumbing requirements for a water tank, “a trade professional would somehow pick up the phone and inadvertently order one of the applicant’s tanks”.
[6] Both parties, in argument before me, have contended that their respective cases can be won or lost on the outcome in the developer/builder market. I will thus leave to one side the fact that both metal and non-metallic water tanks are also sold direct to property owners, in smaller sizes, through hardware and rural stores. For the sake of completeness, I state that I would reach the same conclusion on the broader view of the market as I do in relation to the developer/builder market, in respect of each of the grounds of opposition.
This grossly oversimplifies the issue to be decided. For the purposes of a finding of deceptive similarity, it is sufficient if the trade marks resemble each other to the point that there is a real risk of confusion. Confusion includes the state of uncertainty, of being caused to wonder. Outright mistake, such as that to which Mr Williams referred, will be too high a benchmark for that test. None the less, the opponent sought to stress the potential for outright mistake, arising from the look and sound of the two trade marks[7]. Ms Brittain also noted that those in the building trade are probably not “masters of elocution”, another reference to Aristoc vRysta, and also probably a fairly apt observation.
[7] Pianotist Co’s Application (1906) 23 RPC 774 at 777
Both sides devoted a fair proportion of their submissions to the significance (or otherwise) of the evidence about alleged confusion. Evidence of actual confusion is, as Ms Brittain noted, of great weight[8]. I find the applicant’s view of the evidence is, however, largely appropriate. That evidence consists almost entirely of second-hand allegations that do not bear close scrutiny. These come from the two declarations of Mr Heitman, one of which makes up part of the opponent’s evidence in support, the other comprising the opponent’s further evidence. Mr Heitman asserts that, “On a daily basis, our sales people talk to customers who state either:
a) ‘We are already using BlueScope tanks’ and we learn they are purchasing from Blue Sky Water, or who
b) believe they are talking with BlueSky (sic) Water when talking with us”.[8] Australian Woollen Mills Ltd v FS Walton & Co Ltd (1937) 58 CLR 641 at 658.
One would reasonably expect to see a convincing body of evidence if that was the case, as Mr Heitman has known of the existence of the applicant’s trade mark since March 2009 and his two declarations cover the period up to November 2010. Curiously, however, in the period February to November 2010, when he prepared the opponent’s further evidence, Mr Heitman has declared that only one new instance came to his attention. Moreover, the evidence is no more convincing in detail than in extent, and he appears to be giving evidence about matters of which he does not necessarily have first-hand knowledge.
In assessing the opponent’s evidence, it would be inappropriate for me to adopt an unduly critical or partisan role. However, I am very aware that, when looked at carefully, the evidence is a long way from matching the view that Mr Heitman has set out and which I have previously quoted. The extent and nature of the discrepancies between the broad view set out by Mr Heitman and what I see in the evidence and are both quite troubling, as I will explain.
The first specific instance that Mr Heitman relates involves a Mr Payne, the general manager of what appears to be a building company. Mr Heitman states that:
Mr Payne was approached by a representative of Blue Sky Water in about March 2009 and he was lead (sic) to believe that the company was offering for sale Bluescope Water tanks at a cheaper price, when they do not in fact stock such tanks.
As Mr Williams pointed out in the applicant’s written submissions, this evidence does not establish any confusion of the two trade marks in the mind of Mr Payne. It may simply be that Mr Payne and the representative of the applicant were at cross-purposes. There are any number of ways in which this might arise and perhaps Mr Payne, had he given evidence, would have given an account that eliminated any uncertainty. How the representations (if that is what they were) allegedly put to Mr Payne came to the attention of Mr Heitman is itself unclear. It is not clear, from his declaration, that Mr Heitman has spoken directly to Mr Payne about the incident.
All but two of the remaining instances of purported confusion are expressly said to involve a single sales representative of Water, referred to as either Clint or Clinton Armstrong. This is a noteworthy factor, since Mr Heitman asserts that the other sales representatives are also witnesses (“daily”) to the alleged confusion, yet it goes completely without explanation. I will set out Mr Heitman’s account of the first of the incidents verbatim:
Alan Lawson, an employee of Weldon Homes, confused Sales Representative Clinton Armstrong of Bluescope Water with Trent from Blue Sky Water in a telephone call which took place on 30 March 2009. He commented that the company names were similar and that it would be easy for people to be mistaken.
As Mr Williams pointed out in the applicant’s written submissions, Mr Lawson himself was apparently not confused by or about the trade marks, though he expressed an opinion about the potential for other people to be mistaken. If I accept that Mr Heitman’s account is accurate, what happened is that Mr Lawson confused one sales representative with another, as distinct from confusing one trade mark with another. Simple coincidence cannot be eliminated from this particular episode but, in the lack of better evidence than this, almost anything is possible.
Mr Heitman goes on to declare that “Tiki from Javica Homes of Cleveland, Queensland confused Bluescope Water with Blue Sky Water in a telephone conversation with Clinton Armstrong”. Mr Williams simply argued that this matter was so imprecise that it should be given no weight. I have to agree. There is no evidence that the purported confusion was the result of similarity between the trade marks in question.
Mr Williams was also critical of an allegation that Mr Heitman puts as follows:
Clint Armstrong visited a builder Coral Homes of Robina which services Queensland and New South Wales who mistakenly believed he was a Blue Sky Water sales representative.
Why, asked Mr Williams, are there no other details of this episode, and on what basis is it said to evidence confusion of trade marks? I share some of his scepticism.
Mr Heitman’s account of another instance of confusion also has aspects that I find somewhat puzzling. Mr Heitman declares :
Clint Armstrong made follow-up contact with one of BlueScope Water's former customers, Cosmic Homes of Brisbane Queensland, who had not purchased from BlueScope Water since May 2008. After about 5 minutes it became evident that the lady he was talking to, Peta Lanham, believed she was talking with Blue Sky Water. She stated that Cosmic Homes were still buying from BlueScope Water and had a tank being delivered next week. In fact, they were getting a tank from Blue Sky Water.
Mr Williams would have me dismiss this instance because there is no evidence that any such event has resulted in a re-direction of business from Water to the applicant. There, his proposition misses the point: confusion is a state of mind and need not persist up until the point of sale[9]. Confusion can exist when there is nothing more than a reasonable level of uncertainty; that which, for instance, gets a salesman an interview they would otherwise not have had.
[9] Registrar of Trade Marks v Woolworths [1999] FCA 1020 at 47, following Southern Cross Refrigerating Co. v Toowoomba Foundry Pty Ltd, (1954) 91 CLR,
None the less Mr Heitman’s second-hand account does not give me any real sense of what actually went on. Cosmic Homes is a “former customer” of Water. Ms Lanham, if she held a relevant position in the company (something that is not at all clear) was presumably also aware that her employer had recently changed suppliers, from Water to the applicant. She was presumably, therefore, in a good position to have avoided simple confusion. Mr Heitman’s account thus raises issues at a number of levels and is not as convincing as it might at first appear to be.
Similarly, in the opponent’s further evidence, Mr Heitman declares that (omitting some extraneous details):
My Company engages a marketing company Blue Frog Marketing to provide PR and advertising services. Blue Frog Marketing was recently instructed by my Company to conduct market research in relation to the builder market for rainwater tanks. As part of the research, a representative of Blue Frog Marketing made phone contact with Mark Henry (an estimator with a home design company[…]). The Blue Frog Marketing representative enquired whether Mark would be available to participate in a short phone survey regarding rain water tank supply and BLUESCOPE WATER. Mark consented to participate in the survey and did so, including consenting to a meeting with a representative of my Company.
Subsequently my Company's Market Development Manager, Scott Poidevin, contacted Mark to arrange a follow-up meeting. During the course of the meeting mid-October 2010, it transpired that Mark was under the impression that he was discussing BLUE SKY WATER (the current supplier of rainwater tanks for [his employer…]) with Blue Frog Marketing. In particular, he stated that over the phone the two names BLUE SKY WATER and BLUESCOPE WATER sound the same and are confusing.
The evidence shows that, during the course of a meeting with Mr Poidevin, Mr Henry admitted that, previously, when he was taking part in some sort of marketing survey with Blue Frog, he had been confused as to the trade mark involved. I would have found this account to be more convincing if Mr Henry had given evidence as to why and how his “impression” arose. What went on at that time is not clear, however. A number of explanations are possible but there may well be either some impairment in the hearing of Mr Henry or in the diction of the phone surveyor if Mr Henry can correctly say, as Mr Heitman alleges he does, that BLUE SKY WATER and BLUESCOPE WATER “sound the same”. Thus, for all that imperfect hearing or diction must be allowed for as part of assessing the potential likelihood of deception or confusion, this evidence lacks the detail that would allow me to assign it the appropriate weight it might otherwise have carried.
Mr Heitman also alleges that there is “confusion with our other suppliers”. One of Water’s female employees tried to order some components from a retailer called Johnny the Bolt King and “was required to state on 3 occasions that the order was for BlueScope Water, not BlueSky (sic) Water”. It seems to me that this account evidences little more than that the retailer knew of the applicant’s trade mark and assumed, wrongly, that the customer was herself in error. On the face of it, however, both of them were quite clear about the trade mark they had in mind, and neither of them was confused by the trade mark that the other articulated.
Finally, Mr Heitman introduces documents which clearly show that a delivery driver’s run sheet was mistakenly made out to nominate the opponent, at the opponent’s address, as the intended recipient of a shipment from Monarch Pool Systems Pty Ltd to the applicant. Mr Williams was dismissive of this. He asks, “What does it matter?” He argued that Mr Heitman had no basis from which to assert that the confusion arose because of any similarity in the names, and that this was “mere speculation”. Mr Williams then went on to make some speculations of his own, about why the opponent “really” objected in this matter. His written submissions put the matter as follows:
Furthermore, the Opponent’s real complaint is that it will lose market share as a result of a deceptive similarity between the marks. Market share is unlikely to be affected by the odd instance of an administrative officer mistaking the recipient’s address.
This submission has mistaken a well-established principle of trade mark law for something else entirely. Deceptive similarity arises when confusion becomes a reasonable likelihood. It is enough if the ordinary person entertains a reasonable doubt[10]. Having a test for deceptive similarity cast more broadly than those for passing off or misleading conduct, about which I will say more in due course, is presumably intended to discourage just the sort of conduct that, if left unchecked, might later mature into such losses of market share.
[10] Southern Cross Refrigerating Co v Toowoomba Foundry Pty Ltd (1954) 91 CLR 592; Registrar of Trade Marks v Woolworths Ltd (1999) 45 IPR 411 at 427–8 per French J (Tamberlin J agreeing)
The delivery run-sheet therefore stands as an unambiguous example - albeit the only one - of outright mistake; and one which is, moreover, supported by contemporaneous documentation. In general, however, I think that the evidence of purported confusion can be described as of little weight. It would be consistent with a finding that the resemblance between the trade mark and the opponent’s trade mark is such as to deceive or cause confusion, but does not support such a finding to any great degree.
I will therefore deal with that issue on first principles, as set out in the appropriate authorities. There was broad agreement between Mr Williams and Ms Brittain as to some of these, and I have noted some of them already. Overall, Ms Brittain fortified her position by reference to the doctrine of imperfect recollection and by stressing the possibilities of less than perfect pronunciation, as I have said. She noted that the evidence of Messrs Cropp and Lynch stresses the importance of telephone orders. I accept, therefore, that those principles relating most strongly to the self-selection of products from the shelves of a supermarket or department store are probably a poor guide here. I have already set out Mr Williams’s view on the likelihood that, during the process of determining the size, suitability, location and plumbing requirements for a water tank:
… a trade professional would somehow pick up the phone and inadvertently order one of the applicant’s tanks.
I have noted that, beyond this, the Registrar must also have regard to the possibilities of confusion. In assessing the likelihood of either deception or confusion, Ms Brittain argued that I should have regard to what she called the “generally similar idea” of the two marks. However, as Mr Williams pointed out, this should not be taken to extremes. In Cooper Engineering Company Pty Ltd v Sigmund Pumps Ltd the High Court held RAIN KING and RAIN MASTER sufficiently distinguishable for water sprinklers, and observed[11]:
In the present case the prefix of the two words is the same word "Rain", but the suffix "master" differs from the suffix "King" in appearance and in sound. This makes the two marks as a whole quite distinct and the marks must be judged as a whole. "Rainmaster" does not look like "Rain King" and it does not sound like it. There is not a single common letter in master and in King. The two words are so unlike to the eye and to the ear that counsel for the appellant was forced to rely on the likelihood of deception arising from the two words conveying the same idea of the superiority or supremacy of the article as a mechanism for making a spray similar to falling rain or artificial rain as it was called during the argument. But it is obvious that trademarks, especially word marks, could be quite unlike and yet convey the same idea of the superiority or some particular suitability of an article for the work it was intended to do. To refuse an application for registration on this ground would be to give the proprietor of a registered trademark a complete monopoly of all words conveying the same idea as his trademark. The fact that two marks convey the same idea is not sufficient in itself to create a deceptive resemblance between them, although this fact could be taken into account in deciding whether two marks which really looked alike or sounded alike were likely to deceive.
[11] (1952) 86 CLR 536 at 539
French J observed in Registrar of Trade Marks v Woolworths[12] that whether two trade marks are deceptively similar “is not susceptible of much discussion: It depends on a combination of visual impression and judicial estimation of the effect likely to be produced in the course of the ordinary conduct of affairs”; yet discussion proliferates. Neither party made submissions in relation to CA Henschke & Co v Rosemount Estates Pty Ltd[13], so I will not compound the discussion at this stage. Even so, while I acknowledge that, factually, the Henschke matter does not have a great deal in common with that which is before me, it seems to me that the trade marks with which I am now dealing are no more deceptively similar than were HILL OF GOLD and HILL OF GRACE. Ultimately, I believe that the potentials that Ms Brittain sought to maximise are simply possibilities, not likely to occur with the sort of frequency that would establish a ground of opposition under s 44. As Mr Williams argued, BLUESCOPE WATER, when seen in the context of the way the relevant goods are bought and sold, neither looks sufficiently like BLUE SKY WATER nor sounds sufficiently like it, and there is nothing about the two that would invite any sort of contextual confusion. Ms Brittain was not able to convince me otherwise and the s 44 ground is, accordingly, not established.
[12] (1999) 45 IPR 411 at 428
[13] (2000) 52 IPR 42
Section 60 – Likely to deceive or cause confusion
Here, as Ms Brittain noted, the current wording of the provision is:
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.
This, as she noted, does not involve a stipulation that the competing trade marks be deceptively similar. She noted that Mr Williams’s submissions were supported by a thorough analysis of Mr Cropp’s declaration in the opponent’s evidence in support. I have to agree with his conclusion, to the effect that the reputation of BLUESCOPE WATER is linked to that of another of the opponent’s trade marks, BLUESCOPE STEEL. Ms Brittain therefore argued that, if the linkage was “incontrovertible”, as Mr Williams put it, so was the strength of the reputation that would result in deception or confusion.
Mr Williams had relied on a proposition from Mars Australia Pty Ltd v Sweet Rewards Pty Ltd [2009] FCA 606 in relation to s 44:
A corollary appears to be that in assessing the notion of a consumer’s imperfect recollection of a mark, the fact that a mark is notoriously so ubiquitous and of such long standing that consumers generally must be taken to be familiar with it and its use in relation to particular goods or services is a relevant consideration: Crazy Ron’s at 232-233 [90].
The application of these principles is, so it seems to me, relatively straightforward. The Maltesers marks are very famous. Consumers generally must be taken to be familiar with them. That is relevant to assessing a consumer’s imperfect recollection of the mark. So viewed, a comparison between the impression held in the consumer’s mind and the direct impression of Sweet Rewards’ mark is one which, in this case at least, occurs in a context in which the chances of the average consumer having forgotten the Maltesers mark are vanishingly small.
Ms Brittain argued that, in the present case, the extensive reputation would act in the other direction entirely. She suggested that, while the reputation of the opponent’s trade mark may be well-established because of its obvious linkage to BLUESCOPE STEEL, the opponent’s trade mark was not ubiquitous or of such long-standing reputation as to put this matter on all fours with the MALTESERS trade mark in the case to which Mr Williams referred. This, she argued, left the opponent’s trade mark as one that was particularly liable to be confused with the opponent’s trade mark in a situation where a builder or developer, well aware of the opponent’s trade mark, encounters one that, while distinguishable, has the same general form as that of the opponent’s. This would, I imagine, be similar to the “gestalt” process referred to by Gummow J in Johnson & Johnson v Kalnin (1993) 26 IPR 435 at 441, in contrasting the trade marks BAND-AID and BAND>>IT:
The evidence does not admit any conclusions as to the precise mechanisms involved in cognitive processes. But it does suggest that the process of perception and recognition of a word involves not so much the reading of the entire word or, in this case, the compound expressions BAND-AID or BANDIT but the seeing and identification of certain features which are then matched to that which is contained in the memory, so that the word then is recognised. It is that process which is liable in the present situation to lead persons into error.
Ms Brittain was also highly critical of the applicant’s decision to adopt the word “blue” as part of its trade mark. That word, as she said, “has no logical or descriptive connotations in relation to the supply and installation of water tanks”. However, the expression “blue sky” has an obvious meteorological meaning and, from this, meanings that can allude variously to either freedom from commercial concerns or to, generally, optimism. It is true that, as Ms Brittain argued, water tanks are not typically blue, but I think that she has simply put undue emphasis on this aspect of the matter.
I understand the principles to which Ms Brittain has referred, but I do not think they will stretch to situations where the goods are of considerable value, and are not bought and sold in the way that bags of sweets are, almost notoriously, sold. Despite the significant reputation of the opponent’s trade mark, I find that the opponent has not established that the use of the trade mark will be likely to deceive or cause confusion. The opponent has therefore not established a ground of opposition under s 60.
Section 42(b) – Contrary to law
Ms Brittain noted that use of a trade mark which would amount to misleading or deceptive conduct, or that would amount to a passing off of the applicant’s goods as those of the opponent, would be caught by this provision. However, given that I am not satisfied that a reasonable risk of confusion has been established for the purposes of s 60, it follows that I am also not satisfied that this ground is established.
Section 62A - Bad faith
The relevant provision reads, “The registration of a trade mark may be opposed on the ground that the application was made in bad faith”. Ms Brittain reiterated her comments about the evidence of confusion between the trade mark and the opponent’s trade mark. She argued that, given the evidence of the opponent’s reputation, the applicant must have been aware of the opponent’s trade mark at the time it adopted the trade mark. Ms Brittain stressed that there was no evidence from the applicant as to why the trade mark contains the word “blue”, and argued that, as per Hard Coffee Pty Ltd v Hard Coffee Main Beach Pty Ltd.[14] “such a silence … goes towards a failure to address the issue of bad faith”.
[14] [2009] ATMO 26
Those arguments might have supported an adverse inference as per Jones v Dunkel[15] if I was satisfied that the trade mark would cause deception or confusion in the first place, or if there was anything else that might suggest either that the applicant had an improper motive in adopting the trade mark, or that a reasonable person in the shoes of the applicant would have realized that the trade mark should not have been adopted. There is nothing before me to suggest such things and I decline to draw any adverse inference(s). This ground of opposition has not been established.
[15] (1959) 101 CLR 298,
Section 59 – no intention to use on class 6 tanks
This provision reads:
The registration of a trade mark may be opposed on the ground that the applicant does not intend:
(a) to use, or authorise the use of, the trade mark in Australia; or
(b) to assign the trade mark to a body corporate for use by the body corporate in Australia;
in relation to the goods and/or services specified in the application.
Ms Brittain argued that, in seeking permission to rely on further evidence, Mr Williams had made submissions based on a proposition of the form “the opponent’s tanks are of metal, ours are not”. The statutory declaration of Mr Nicholson relied on to support the introduction of the further evidence does indeed refer to “the material differences in the services and products which the Applicant and the Opponent offer, the principal one being the opponent’s production of tanks through the use of steel, and the Applicant’s use of polyethylene”.
I have refused to delay these proceedings while the applicant introduces the further evidence, and I think it would be very unsafe to give any significant weight to aspects based on what the further evidence would have established had I allowed it in. Firstly, and most importantly, the statement by Mr Nicholson is in the present tense and thus silent as to the applicant’s intentions (at the filing date) as regards future use. This is a key element of s 59.
Secondly, the statement on which Ms Brittain would rely is made by a partner in the applicant’s solicitors, not by an officer of the applicant company. It is clear that Mr Nicholson either speaks in general terms or is incorrect, since the declaration of Mr Cropp states that Water does, in fact, supply polyethylene tanks. If Mr Nicholson is either wrong or speaking very broadly about something arising from the opponent’s evidence, with which he should be familiar, what weight should go to his assertions about another matter for which there is as yet no evidence at all?
Accordingly, there is no basis on which I could safely find that the s 59 ground has been established.
Conclusion
No ground of opposition has been established. The trade mark application may therefore proceed to registration one month from the date of this decision. If the Registrar has been served with a notice of appeal before that time, I direct that registration shall not occur unless the appeal has been discontinued or, otherwise, the court so orders.
I award costs against the opponent, to be taxed as per James Hardie & Co Pty Ltd v Hume Industries (Malaysia) Berhad (2001) 53 IPR 591.
T. E. Williams
Hearing Officer
29 March 2011Annexure 1: Reasons for refusing to grant permission for the applicant to rely on further evidence
The further evidence on which the applicant sought to rely is “further” in the sense that the process for adducing such evidence is further to that of the earlier evidence stages set out in regulations.
There have been one or two unpublished decisions made at the Trade Marks Office in earlier years, to the effect that a party that had elected not to rely on evidence at first instance cannot describe any evidence that it later seeks to tender as being further evidence, since it is not “further to that which it has already filed”. The effect of viewing the word “further” in those narrow terms is that such a party may bring its evidence into contention only by way of a late extension of time to file, in the present matter, evidence in answer.
I reject such an interpretation on two bases. Firstly, as I have said above, the logical reading of the word “further”, where it occurs at reg 5.15 is as meaning further to the evidence stages that have been previously defined, by regs 5.7 to 5.9.
Secondly, the very considerable extension of time fees that would apply to some cases - but not to others, depending on the history of the matter – makes a restricted reading of the word “further” undesirable. In Estate of Diana Princess of Wales v Masterson (2001) 52 IPR 264 I said that an applicant who had previously filed a notice under reg 5.11 had not forfeited her entitlement to bring in evidence. In that matter, as it happened, the evidence was presented by way of a late application for an extension of time, and I considered the application in those terms. In the present matter, the new evidence is described as further evidence. I believe that it is better to determine the merits of allowing such evidence in, when the need arises, without having a nagging apprehension that extension of time fees, sometimes covering a period of years, have had an arbitrary, but always restrictive, influence on the flow of information.
In the present matter, a declaration by Andrew Nicholson, a partner in the applicant’s solicitor firm, sets out the broad nature of the further evidence and the circumstances which the applicant says would justify the grant of permission to rely on that evidence. Mr Nicholson, whose firm has only recently been engaged in this matter, declares that he has been informed - by whom, he does not say – that “the applicant” had “overlooked” some of the opponent’s evidence. Mr Nicholson does not explain how this came to be. He notes both that the declaration so “overlooked” is voluminous and fills two lever-arch files; and that it was received by the applicant. It appears to me that Mr Nicholson has tried to put a more acceptable face on unexplained actions that probably amount, in the lack of better explanation, to a disregard of the opposition process, in the sense of the applicant having “overlooked” the need to do anything, at the proper time, with or about the evidence in support of the opposition.
Mr Nicholson goes on to declare that:
… the Applicant's Application is inadequately presented as a result of the absence of any relevant evidence on a number of matters. Relevantly, and based on instructions received by me directly from the Applicant, those include:
· The material differences in the services and products which the Applicant and the Opponent offer, the principal one being the opponents production of tanks through the use of steel, and the Applicant's use of polyethylene;
· The relevant market into which the products are sold, including the fact that the Applicant sells only to trade customers, wholesale and to builders direct.
· This is directly relevant to the likelihood of confusion on the part of consumers;
· The history of the Applicant's trading operations under the Blue Sky Water mark;
· Evidence as to the likelihood of confusion in the relevant market.
Bad Faith Ground of Opposition
The Applicant, in light of the allegation of bad faith made in the Opponent's Submissions of 23 November 2010, must necessarily provide an explanation of the genesis of the mark applied for. The Opponent failed to advise on 12 November 2010, in correspondence with IP Australia, that it intended to rely on the bad faith ground. If the Applicant had been notified earlier as to the relevance of bad faith as their ground of opposition, the Applicant would have brought the present Application on an earlier date.
Prejudice
It is my view, and one which is shared by Counsel, that the Applicant is likely to be materially prejudiced in the conduct of the Opposition proceedings if it is unable to rely upon the type of evidence summarised above.Mr Williams, at the hearing, went on to make the sort of points that are usually made in defence of what Ms Brittain, for her part, called “completely unreasonable conduct”. Mr Williams was quite candid in admitting that the applicant had completely bungled its conduct of the matter during the evidence process. He noted however that Shanahan[16] suggests that refusal of such an extension, where the evidence goes to the merit of the matter, is unlikely. He reminded me that, as per Lahore’s Patents Trade Marks and Related Rights (at 55-830) I have a broad discretion and should put more weight on the detriment to the public interest than on the applicant’s failings, which he conceded had now put their interests at grave risk of prejudice.
[16] Shanahan’s Australian Law of Trade Marks and Passing Off, 4th ed, at 15.2020
It is true, as was said in Pioneer Hi-Bred Corn Co v Hy-Line Chicks Pty Ltd, [1979] RPC 410 at 435:
[w]ithin reasonable limits it furthers that public interest to allow the consideration of any available evidence that will assist in providing a clearer picture of the awareness of rival marks as affecting the likelihood of deception or confusion.
However, what also needs to be said is that the public interest will not be at all prejudiced by the shutting out of evidence from, in particular, a tardy applicant[17]. If the matter goes forward for hearing without the applicant’s evidence, the applicant may still succeed. All is not lost even if registration is refused: the applicant can file a fresh application and would presumably wish to do so if the trade mark that it seeks to register has been extensively used.
[17] NSW Food Authority v National Foods Milk Ltd (2009) 83 IPR 164 at paras 18-19.
Mr Williams did not seek to rely on claims of a possible detriment to the public interest flowing from inefficiencies or duplication of effort in the event that the applicant might have to re-apply. Such claims are, however, perennial, and for the sake of completeness I will deal with the issue. It seems to me that an opponent, in deciding if it wishes to object to the grant of permission, is as well able to assess any possible detriment, by way of duplication of effort, as is the Registrar. That being so, an applicant who points to this aspect as counter to the public interest appears to me to be simply trying to disguise its distaste for having to re-do operations in the opposition process, if it neglects them at the proper time at first instance.
Ultimately, as I said at the hearing, if an applicant feels that it has no alternative but to appeal the decision[18], the opponent in such a case will at least have been apprised of the existence of the further evidence and will perhaps be better able to make an informed decision as to whether it wishes to contest the appeal. As I said, both parties can be expected to know how things stand in the market and, in considering the possibilities around an appeal, they may perhaps be better positioned to make an informed decision as to where their interests lie than is the Registrar.
[18] This factor was given significant weight in Studio SrL v Buying Systems (Aust) Pty Ltd [1992] AIPC 90-858 and has been emphasised in decisions since then.
Mr Williams noted that the grant of permission to introduce further evidence is governed by reg 5.15, as is an extension of time in any of the three initial evidence stages under the regulations. It was appropriate, he said, that due weight therefore be given to the public interest, just as it was in ABW Australia Pty Ltd v Sears, Roebuck and Co[19].
[19] (1998) 42 IPR 468
Mr Williams argued that the public interest here lay with the grant of permission. Otherwise, he said, competition between tank-makers would be stifled because the issues involved in the various grounds of opposition would be tested out of context, ie without the applicant’s view of the matter. I find this reference to the public interest unconvincing. It strikes me as a prime example of how a trader, having made an utter shambles of looking after its own interests, seeks to hide behind claims that the public interest is at stake. It may be true that this particular opposition would be decided out of context but, as I have already said, it may still be that the applicant’s trade mark is registered, either now or in the future. In the meanwhile, the extent to which my decision would impact on the level of competition in the marketplace is not at all clear, and I find Mr Williams’s proposition to be essentially speculation. What is very clear is that an opposed applicant has a primary responsibility to conduct itself as though the opposition is a matter of consequence before seeking to mitigate the consequences of more understandable lapses, those that can mar even the best-organised proceedings.
Accordingly, I refused permission for the applicant to introduce any further evidence. I also allowed the applicant to revise its written submissions in the light of the opponent’s reliance on the s59 ground of opposition, which was not made clear when it should have been.
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