Boss Fire and Safety PL v Fire Containment PL

Case •

[2019] ATMO 43

•

29 March 2019

TRADE MARKS ACT 1995



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

Re:Opposition by Boss Fire and Safety Pty Ltd to registration of trade mark application 1736748 (6, 17 and 19) - FIREBOX - filed in the name of Fire Containment Pty Ltd.

Delegate: M. Cooper
Representation: Opponent: Chelsea Peters of IP Wealth
Applicant: Christopher Wood of counsel instructed by SAI Lawyers
Decision: 2019 ATMO 43
Trade Marks Act 1995 - Opposition to registration under s 52: ss 41, 42, 58, 59, 60, 62 and 62A considered – no opposition grounds established – trade mark to proceed to registration.

Background

  1. This matter concerns an opposition by Boss Fire and Safety Pty Ltd (“the Opponent”), under s 52 of the Trade Marks Act 1995 (“the Act”), to registration of the trade mark detailed below in the name of Fire Containment Pty Ltd (“the Applicant”):

    Application Number: 1736748

    Trade Mark: FIREBOX

    (“the Trade Mark”)

    Filing Date: 24 November 2015

    Class 6:

    Building products of metal for preventing the spread of fire

    Class 17:

    Products and materials for resisting fire and for preventing the spread of fire, for use in the building and construction industry; fire and smoke stopping products used to protect openings for services including collars, wraps, clamps, boxes, dampers and cable transits

    Class 19:

    Intumescent and non-metal materials and products for resisting fire and preventing the spread of fire, for use in the building and construction industry  

    (“the Goods”)

  2. The Trade Mark was examined and advertised as accepted for possible registration on 1 June 2017 in the Australian Official Journal of Trade Marks.

  3. On 14 June 2017, the Opponent filed a Notice of Intention to Oppose registration of the Trade Mark. On 14 July 2017, a Statement of Grounds and Particulars (“SGP”) was filed which cited opposition grounds under sections 41, 42, 58, 59, 60, 62 and 62A of the Act.

  4. On 1 August 2017 the Applicant filed a Notice of Intention to Defend.

  5. On 11 June 2018 the Opponent requested a hearing. I heard the matter in Canberra on 4 December 2018 as a delegate of the Registrar of Trade Marks. Chelsea Peters of IP Wealth appeared for the Opponent, assisted by Ms. Riet Van Wende. Christopher Wood of counsel appeared for the Applicant, instructed by Phillip Sacks of SAI Lawyers.

The Evidence

  1. The Opponent filed its Evidence in Support (“EIS”) on 7 November 2017. It comprised the statutory declarations of Mark Prior, the Opponent’s director, dated 7 November 2017, with Exhibits MP-1 to MP-29 (“the first Prior declaration”) and Daniel Bryant, the Opponent’s Operations Manager, (“the Bryant declaration”) dated 4 November 2017.

  2. The Applicant’s Evidence in Answer was filed on 20 February 2018 and comprised the following statutory declarations:

  • John Rakic, the Applicant’s owner and managing director, dated 17 February 2018, with Exhibits JR-1 to JR-45 (“the Rakic declaration”).

  • Christopher Gordon Dennis Todd, the Applicant’s National Technical Manager, dated 20 February 2018, with Exhibits CT-1 to CT-41 (“the Todd declaration”)

  • Allan Harriman, director of BCA Logic Pty Ltd (“the Harriman declaration”) dated 19 February 2018.

  • Leanne Freel, the Applicant’s National Sales Manager, with Exhibits LF-1 to LF-2 (“the Freel declaration”) dated 17 February 2018.

  • Paul Roseworn, a contractor in the fire prevention industry, (“the Roseworn declaration”) dated 20 February 2018.

  • Trenton Jones, director of AED Consulting Group, (“the Jones declaration”), dated 20 February 2018.

  1. The Opponent’s Evidence in Reply comprises a further declaration by Mark Prior dated 26 April 2018 (“the second Prior declaration”) with Exhibits MP-30 to MP-38.

  2. In accordance with directions prior to the oral hearing, the Opponent and Applicant filed written submissions on 20th and 27th November 2018 respectively.

Opponent’s late filed evidence

  1. On 29 October 2018 the Applicant sought that the Registrar summons Mr. Mark Prior to appear as a witness at the hearing. On 9 November 2018 the Registrar communicated the reasons for refusing to issue the summons. Following the Registrar’s refusal of the Applicant’s request to summons Mr. Mark Prior to the hearing, the Applicant sought to file a further declaration by Christopher Gordon Dennis Todd on 22 November 2018. On 27 November 2018, the Opponent sought to file a further declaration of Mark Prior. On the same day the Applicant filed submissions why its late material should be allowed into evidence on the basis that it was highly relevant and would assist me to gain a better understanding of the “underlying facts.”

  2. I addressed the late-filed material at the hearing. The Applicant submitted that the grant of an innovation patent for its product had occurred in June and was relevant to my factual inquiries insofar as it provided a response to Mr. Prior’s allegations that the Applicant had copied its product. In relation to the Opponent’s late-filed material, Mr. Wood objected to its inclusion, submitting that it was prejudicial and hearsay and it would be procedurally unfair to admit it. The Opponent objected to the Applicant’s late-filed material on the basis that it concerned a patent dispute and was not crucial to this matter. It maintained its late-filed material should be allowed under reg 5.15 of the Trade Marks Regulations 1995[1] and was relevant to the issues in dispute, merely “refreshing” the existing evidence.

    [1] All subsequent references to regulations are references to the Trade Marks Regulations 1995.

  3. I have had regard to the Trade Marks Office Manual of Practice and Procedure (‘the Manual’), in particular, Part 51, paragraph 2 which I acknowledge does not bind me but which is relevant to my considerations. I note that I am not bound by the rules of evidence but may be informed on any matter in a way that I reasonably believe to be appropriate (reg 21.15(4)).

  4. In each case, I am satisfied that the late-filed material does have some probative value. In the circumstances, as I advised both parties at the hearing, I would have regard to it.  The weight I attach to it is another matter. In the circumstances, I allowed the material under r.21.15(4).

  5. The Applicant had made a blanket claim to confidentiality of its evidence. I queried this at the hearing with Applicant’s counsel who undertook to respond to me. I received a response and have proceeded to provide my findings and reasons in a manner that I believe does not divulge any material of the Applicant of a confidential nature.

Opponent’s evidence

  1. In his first declaration, Mr. Prior, the Opponent’s Managing Director, described the Opponent’s business as an importer, manufacturer and distributor of passive fire protection products since 6 May 2009. He claimed that the Applicant’s and Opponent’s goods were identical, the products having initially been imported from Abesco Ltd (“Abesco”). He said the Opponent rebranded the relevant products in Australia as “Intu-Clamp” (Trade Mark registration 1467002). He said the Opponent first coined and used the word “Firebox” in 2013 (“the Opponent’s First Trade Mark”) and it was used “colloquially as the alternative” to Intu-CLAMP.

  2. He further claimed that he verbally advertised the product by reference to “Firebox” from 2013 to 2015 over which period, as its use and recognition increased, it became associated with the Opponent. He referred to an email in 22 July 2014 (exhibit MP-3) which he said demonstrated its use, but he said he was unable to provide any further examples.  From January 2015 he claimed the Opponent’s First Trade Mark was regularly used in planning and budgeting documents. In or around May 2015, Mr. Prior claimed the Opponent took the view that the word was descriptive and there would be difficulties with trade mark registration. Because of this he slightly altered the spelling and commenced using Fyrebox (“the Opponent’s Mark”)[2] thereafter. He claimed that the Opponent’s Mark had “been included, or referred to, in written documents and emails as well as continued advertising in person, via telephone, and at trade shows, as well as physical and online advertising, to current date.” He attached various exhibits claiming to support his claims of use.

    [2] At paragraph 34 of his first declaration Mr. Prior commenced referring to both marks as “the Opponent’s Mark”, so from this point I have adopted this reference throughout the decision to the Opponent’s use of “Fyrebox” and “Firebox”.

  3. In relation to reputation, he referred to exhibited letters of support from members of the construction industry which he claimed recognised a clear connection between the Opponent and Opponent’s Mark and “no other trader”.

  4. He listed financial information indicating modest product sales over the last 5 years and a list of advertising and marketing expenditure. Somewhat in contradiction, he stated that the Opponent was not required to advertise to maintain or grow sales.

  5. Mr. Prior also addressed the Opponent’s employment, for a few months in 2015, of Ms. Freel (presently the Applicant’s National Sales Manager) as its National Sales Manager. He claimed her job, in part, was to promote and sell the Opponent’s product. He states that she had access to a significant amount of confidential information and was involved in extensive budgeting processes and new initiatives to grow the Opponent’s business. He further noted that she commenced employment with Applicant one month after ceasing with Opponent and three months later the trade mark application was filed.

  6. Mr. Prior also claimed that the Applicant had no intention to use the Trade Mark and in any event the Trade Mark lacks capacity to distinguish.

  7. In his evidence in reply, Mr. Prior provided a further declaration which is largely a review of the Applicant’s evidence, which he largely rejects and which he contended is “unsupported and contested”.

Applicant’s evidence

  1. In his declaration, Mr. John Rakic outlined his role as the Applicant’s Managing Director since 2006 and his extensive experience in the fire protection industry. He stated that from around 2006 the Applicant and Abesco had worked together exclusively to develop a market for the Abesco CT120 cable transit fire stopping product which from 2008 became known as the “Fireclamp” range. They collaborated further to produce a larger product, the Abesco Fireclamp CT240”. In May 2009 the Applicant purchased a company called “Trafalgar Building Products Pty Ltd”, including its “Fyre-” prefixed products (TMs 1302350, 1302351 and 1302252), and on 7 August 2009 the Applicant registered the trade mark “Fyreclamp” to coincide with the branding of the “Fyre..” products in the Trafalgar range of products. It also applied to register “Fyreclamp” on 7 August 2009, now registered trade mark 1313963, and “Fyre” (stylised), now registered trade mark 1313971.

  2. He maintained that these trade marks and several other “Fyre” prefix brand names are strongly associated with the Applicant’s “Trafalgar” trading name.

  3. Mr. Rakic claimed that just before his purchase of Trafalgar Building Products Pty Ltd was completed, Mark Prior incorporated a company “Trafalgar Fire & Safety Pty Ltd” and, according to declaration, litigation between the parties ensued which was later settled.

  4. Over time, he stated that Abesco experienced financial difficulties and, in December 2012 went into liquidation. Shortly after this the Applicant became aware that the Opponent was also trading in and promoting Abesco products, including the CT240 which the Applicant had developed in partnership with Abesco, and was marketing it and had rebranded it as “Intu-CLAMP”, (Trade Mark 1467002). He contacted Abesco but was told the Applicant’s arrangements had been with the former entity, which had gone into liquidation, and it had no agreement with the successor.

  5. Mr. Rakic stated that in or around 2015 he and Chris Todd started product development of a new product range of systems for vertical and horizontal fire barriers or “engineered fire stopping systems” and discussed branding. He outlined discussions with various industry professionals over 2015, including Multiplex, and testing of the new “firebox” at CSIRO in November 2015. Notwithstanding the Applicant’s request for confidentiality during the testing, he claimed Mark Prior had been permitted to be present.

  6. In relation to use, Mr. Rakic claimed the earliest written reference to the Trade Mark was by the Applicant’s production manager in July 2011 and exhibited the email. He also exhibited an email dated 28 November 2013 in which he postulated the use of “firebox” for the product but indicated concern because it was also the name of a company and queried if this would prevent its use.

  7. After the testing of the product in 2015, the decision was taken to brand it as Firebox. He said the Applicant registered two websites, firebox.com.au and fyrebox.com.au, to avoid incorrect spelling by consumers causing possible sales losses. He explained that firebox.com.au was not able to be registered until February 2016 because the Applicant had to negotiate the purchase of it from another owner. He claimed fyrebox.com.au diverts to firebox.com.au.

  8. Mr. Rakic referred to the conduct of the Opponent in applying for trade mark registration for “Fyrebox” two days after this filing and claimed it was analogous to the Opponent’s previous conduct in relation to Trafalgar. He maintained that the Opponent had never previously applied for or used “fyre...” or even “fire…” in relation to its product and also noted the Opponent’s trade mark applications for CT120 and CT240 which are, he claimed, product names associated with the Applicant since 2007. He alleged “significant untruths, unreliable evidence and numerous unsubstantiated and deceptive assertions” in the first Prior declaration.

  9. In his declaration, Mr. Todd stated that he had been with the Applicant, which he said also trades as Trafalgar Fire Containment Solutions, since February 2011. He outlined the differences between the Fyreclamp and Firebox products and claimed that a new name was “workshopped” and adopted in November 2013. He outlined the product commercialisation and use of the Trade Mark over the period to July 2015, noting it was variously known as “Fyrebox, Firebox S and Slab-mounted Fyreclamp”. He also exhibited the CSIRO test report of November 2015 which referred to the product as Firebox and Fyrebox interchangeably. After confirmation of the results, in December 2015, Mr. Todd claimed that product samples were given to several builders and contractors and he listed further demonstrations and presentation of the product to various construction industry personnel from January 2016.  Exhibits were attached demonstrating use of “Firebox” in relation to the product in and around December 2015 to March 2016 which related to presentations and marketing.

  10. Mr. Todd referred to the declaration of Mark Prior and stated that he had been checking the Opponent’s website regularly and had seen no reference by it to “Fyrebox” or “Firebox” until 16 November 2016, which is also around the time of the Opponent’s earliest testing date for its product (referring to exhibits to the first Prior declaration). He also claimed to have analysed Wayback machine data related to the Opponent’s website and noted no references to “Fyrebox” prior to May 2016.  He further investigated the persons who had provided the “letters of support” and the results of his searches were attached. He claimed they indicate the companies or businesses referred to are either not traceable or are very small or have no involvement in the fire protection business. He rejected the Opponent’s suggestion that Ms. Freel had anything to do with naming the product.

  11. In her declaration, Ms. Freel outlined her engagement with the Opponent, which she said was then a small company, for whom she worked for only a few months. She claimed the Intuclamp “was hardly even spoken about or mentioned”, the company focusing on other products. She notes one of the documents relied on by the Opponent was distributed after she had left the company and does not recall having access to the email or spreadsheets referred to in the first Prior declaration. She maintained she does not recall any use by it of Fyrebox or Firebox. She acknowledges that she may have come across references to a “fire box” or “fire box transits” but was “confident that Intuclamp was never marketed or sold to the public using the term “Fyrebox””. She rejected many of the Opponent’s claims about its subsequent use of Fyrebox or Firebox at trade shows or social media. She “absolutely and unequivocally” denied any use of the Opponent’s confidential information.

  12. Mr. Harriman’s declaration outlined his skills and occupation in passive fire protection field and his attendance at the CSIRO testing of the Applicant’s Firebox/Fyrebox product. He maintained that the first time he came across the Opponent’s product branded “Fyrebox” was in October or November 2017. Until then he had always associated the product with the Applicant and no other entity.

  13. Mr. Roseworn’s declaration, as a contractor in the passive fire protection industry, claimed that a few months before he was shown the Firebox product in January 2016 Mr. Rakic had told him about it. He claimed the Opponent’s Fyrebox only came onto the market around early 2017.

  14. In his declaration, Mr. Jones outlined his qualifications and experience in the construction industry. He claims to have commenced dealing with the Applicant about 5 years ago and became aware of their new product, Firebox, in January 2016. He stated he is aware of the Opponent, but he associates the words Firebox/Fyrebox only with the Applicant.

Grounds of Opposition and Onus

  1. The Opponent bears the onus of establishing one or more of the grounds of opposition and the standard of proof required is on the balance of probabilities.[3]

    [3] Telstra Corporation Limited v Phone Directories Company Pty Ltd [2015] FCAFC 156 affirming the approach of Gyles J in Pfizer Products Inc. v Karam [2006] FCA 1663; (2006) 70 IPR 599 [6-26]

  2. As noted above, the Opposition grounds claimed in the SGP are those under sections 41, 42, 58, 59, 60, 62 and 62A of the Act.

  3. The time at which a ground of opposition must be established is the date of filing of the application for registration[4]. In this case that date is 24 November 2015 (“the relevant date”), also referred to as the “priority date” in s 60.

    [4] Southern Cross Refrigerating Co v Toowoomba Foundry Pty Ltd (1954) 91 CLR 592 at [595].

Consideration and Reasons

  1. At the hearing the Opponent, while maintaining all its grounds of opposition, relied primarily on s 58, s 62A and s 42(b).

Section 58

  1. Section 58 of the Act provides:

    58 Applicant not owner of trade mark

    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.

  2. Having regard to s 58, the Full Federal Court in Pham Global identified the relevant principles.[5] To succeed on this opposition ground, an opponent needs to establish that there is another mark that is identical or substantially identical to the applicant’s mark, that this mark has been used in respect of goods and services that are “the same kind of thing” as the trade mark and that another person/entity has the earlier claim to ownership based on its use of its mark/s before the filing of an applicant’s mark or any use of it as a trade mark.

    [5] Pham Global Pty Ltd v Insight Clinical Imaging Pty Ltd [2017] FCAFC 83 at [50] (‘Pham Global’).

  3. In the SGP the Opponent claimed that it “first coined, and first used, the trade mark “FIREBOX” in 2013 to refer to its multi-service cable and pipe transit, providing fire protection for clusters of multi-service cables and pipes in one integrated container”.  In or about early 2015 it was further claimed that it altered the spelling, using and referring to the product as FYREBOX, which it contended was substantially identical or deceptively similar to FIREBOX. It subsequently filed Trade Mark Application No. 1737702 for FYREBOX, two days after the relevant date.  It further asserted that the Opponent’s product is the same kind of thing as the goods for which registration is sought in this Application and “As such, the Applicant is not the owner of the [Trade Mark].”

  1. The Applicant contended that the Opponent’s evidence comprised only uncorroborated assertions.

  2. There is no dispute between the parties that the Goods are the “same kind of thing” as those the subject of the Opponent’s Mark.

  3. Similarly, on a side by side comparisonn[6], the only difference in the marks is the second letter, otherwise they are identical visually. They are identical aurally. Self-evidently, having regard to their essential features, I am satisfied that there is a total impression of resemblance between the Trade Mark and the Opponent’s Mark such that they are appropriately regarded as substantially identical.

    [6] Shell Co of Australia Ltd v Esso Standard Oil (Aust) Ltd [1963] HCA 66 at [13].

Prior use

  1. In relation to the question of prior use, Deane J said in Moorgate Tobacco Co Ltd v Philip Morris Ltd (No.2):

    The prior use of a trade mark which may suffice, at least if combined with local authorship, to establish that a person has acquired in Australia the statutory status of "proprietor" of the mark, is public use in Australia of the mark as a trade mark, that is to say, a use of the mark in relation to goods for the purpose of indicating or so as to indicate a connexion in the course of trade between the goods with respect to which the mark is used and that person.[7]

    [7] Moorgate Tobacco Co. Ltd. v Philip Morris Ltd (No.2) [1984] HCA 73; 156 CLR 414 [432].

  2. The Opponent claims first use of the Trade Mark in 2013 and in connection with the goods since at least 22 July 2014. These claims are based on the assertions of Mark Prior and several attached exhibits. As observed at the hearing, most of these exhibits are either undated or post-date the relevant date. 

  3. The Applicant submitted that the objective evidence demonstrates the Opponent did not start to use the brand FYREBOX “until at least May 2016 at the earliest”. Further, “undated documents, vague evidence about oral use, and an email that has been electronically altered by the use of a highlighting function, should not be accepted at face value and do not provide a proper evidentiary basis for finding that the Opponent used FYREBOX (or even fire box) as a trade mark before November 2015.”

  4. At the hearing the Opponent identified and relied on exhibits MP-3, MP-5, MP-7, MP-22 to MP-24 as establishing prior use. I note the following:

  • MP-3, 23 and 24 show use of the two separate words “fire” and “box” in two internal emails and in a “rolling forecast” document. Nothing in those emails or the internal document demonstrate or even suggest that the two words were used as a trade mark, rather they appear as a generic or descriptive internal reference to a product.

  • MP-5 is undated.

  • MP-7 demonstrates use of “Fyrebox” in a Material Safety Data Sheet created in 2013, however the version exhibited was dated 2018.

  • MP-22 includes invoices from the Opponent which use “Fyrebox” however these all post-date the relevant date. Another document is labelled an invoice and, although dated 30 October 2015 and using the word “Fyrebox”, it does not demonstrate any connection with the Opponent. That is, the name of the issuer of the invoice does not appear. 

  1. In the circumstances none of the documents relied upon by the Opponent demonstrate its use of the Trade Mark prior to the relevant date.

  2. I have also had regard to the “Letters of Support” provided by five persons (exhibits MP-18 and MP-39) which state uniformly that they have known of “the use of the brand/trade mark FYREBOX by Boss Fire and Safety Pty Ltd since [date inserted]”. Those dates are variously October 2014 and March, June or August 2015.  I queried these documents at the hearing, noting that the legislation requires such material to be provided in declaratory form and also noting the proforma nature of the letters and the absence of evidence of identity of the persons who signed them. The Opponent responded that the persons involved were “uncomfortable” and wanted to avoid being “dragged into” the dispute between the Opponent and the Applicant. It is difficult to see how providing a letter of support, as opposed to a declaration, would lessen their involvement and I consider the Opponent’s claims in this regard somewhat implausible. The Applicant had investigated the identity of the persons who had signed the letters and persuasively submitted that they were not of any authority or significance in the fire protection industry or, if an employee or former employee of the Opponent, their statement was not impartial. I have significant doubts as to the provenance of these documents on the basis that they are not in an approved form, they have been pre-typed, the gaps could have been filled in by anyone and they are not supported by any objective evidence. There are no witnesses to the signatures. Consequently, I attach very little weight to them and am not satisfied that they are reliable evidence or that they support the Opponent’s claims of relevant prior use.

  3. Of the many other Opponent exhibits, none demonstrates use of “Firebox” or “Fyrebox” by the Opponent in relation to goods or services “for the purpose of indicating or so as to indicate a connexion in the course of trade between the goods with respect to which the mark is used” prior to the relevant date. Nor is there anything in the objective evidence before me which demonstrates “an actual trade or offer to trade in goods bearing the mark” before the relevant date.

  4. For the above reasons, I do not consider that the Opponent has demonstrated prior use of “Firebox” or “Fyrebox” such as to defeat the Applicant’s claim to ownership of the Trade Mark.

  5. It follows that the Opponent has not established its s 58 ground of opposition.

Section 60

  1. Section 60 provides as follows:

    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. Therefore, to establish the s 60 ground of opposition, an Opponent must demonstrate that, at the priority date (the relevant date) of the Trade Mark,

  • there was another trade mark

  • that had acquired a reputation in Australia and

  • because of that reputation, use of the Trade Mark would be likely to deceive or cause confusion.

  1. As noted above, the Opponent asserted in the SGP that it had used the Trade Mark on its product since 2013, that it had acquired a reputation in it before the priority date and due to this reputation use of the Trade Mark was likely to deceive or cause confusion.

  2. In its submissions, the Opponent claimed it had provided “substantial financial figures for revenue”, which has seen “substantial growth” and has “provided significant evidence of its advertisements, promotional materials, websites, social media, trade shows, presentations, promotional videos and third party advertising”.  It submitted that the likelihood of confusion was “obvious” due to the substantially identical nature or deceptive similarity of the Trade Mark with the Opponent’s Mark. While it was not addressed in written submissions, at the hearing, the Opponent confirmed it maintained this ground.

  3. The Applicant’s submissions, noting the onus is on the Opponent, relied on evidence in the Todd declaration that the Opponent’s Mark did not appear on its website until May 2016 and there was no evidence of its reputation such that it would be the cause of people being confused or misled.

  4. The oft-cited comments of Kenny J in McCormick & Co Inc v McCormick in relation to s 60 and the measurement of reputation are relevant:

    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: see, e.g., Isuzu-General Motors Australia Ltd v Jackeroo World Pty Ltd (1999) 47 IPR 198; Marks & Spencer plc v Effem Foods Pty Ltd (2000) AIPC 91-560; Photo Disc Inc v Gibson (1998) 42 IPR 473; and RS Components Ltd v Holophane Corp (1999) 46 IPR 451. This Court has followed this approach as well, acknowledging that public awareness of and regard for a mark tends to correlate with appreciation of the products with which that mark is associated, as evidenced by sales volume, amongst other things.[8]

    [8] [2000] FCA 1355 at [86]

  5. As with the claims of prior use, the claims in respect of reputation were largely unsupported by objective evidence. The sales revenue amounts listed in the declaration were relatively modest for the period prior to the relevant date and in any event, do not demonstrate sales by reference to the Opponent’s Mark. Similarly, the Opponent asserts that the Opponent’s Mark has been used in a variety of promotional materials and merchandise however the various materials exhibited are undated. The social media and digital platform use either post-dates the relevant date or does not disclose the full date. The Applicant demonstrated that a Facebook posting included as part of the Opponent’s evidence displaying only the date 30 March was actually posted on 30 March 2017. This was not disputed by the Opponent. Where social media use is fully dated it does not demonstrate use of the Opponent’s Mark. On the Opponent’s own acknowledgement, its website fyrebox.net.au was not registered until 10 March 2016. The trade show photographs are undated or, if dated, do not demonstrate use of the Opponent’s Mark. Similarly, the presentations claimed to have referred to the Opponent’s Mark, are either not supported by evidence of the date of the presentation or use of the Opponent’s Mark. While the evidence suggests that the PowerPoint presentation was created in 2015, it also indicates a date “last saved” in October 2017. Overall, I am not satisfied that any of the above evidence establishes that, at the relevant date, the Opponent had acquired any reputation in its mark.

  6. I have also had regard to the “Letters of Support” exhibited to the first (MP-18) and second (MP-38 & 39) Prior declarations. They are said to confirm that “customers and members of the construction industry associate the Opponent’s Mark with the Opponent and no other trader.” I refer to my reservations regarding these letters, as noted above at paragraph 50. For the aforementioned reasons, I give these documents very little weight in assessing the Opponent’s reputation, especially in a context in which no there is no substantiated evidence of sales figures, advertising or any other objective information demonstrating the Opponent’s reputation at the relevant date.

  7. I note the comments of Heerey J in Le Cordon Bleu B.V. v Cordon Bleu International Ltee:

    ...the reputation contended for by the [opponent] would have to be one of which a significant or substantial number of persons were aware: ConAgra at FCR 346. What is “significant” or “substantial” will depend on the nature of the goods or services in question. For some highly specialised products, awareness among a few thousand persons, or even less, might be sufficient.[9]

    [9] Le Cordon Bleu BV v Cordon Bleu International Ltee [2000] FCA 1587 [91] as endorsed by the Full Court in Renaud Cointreau v Cordon Bleu International Ltee [2001] FCA 1170 [75]

  8. I accept the Opponent’s submission that the fire protection industry is specialised however, while the evidence demonstrates the presence of the Opponent in the industry, it does not support the Opponent’s claims concerning the use of the Opponent’s Mark before the relevant date, or “a high volume of sales, together with substantial advertising expenditures and other promotions”, such that it demonstrated the requisite reputation at the priority date or enables the inference of a relevant reputation to be drawn.  

  9. Based on the evidence as discussed above, I am not satisfied that, at the relevant date, the Opponent’s Mark had acquired a sufficient reputation among actual or potential Australian consumers of the opposed goods for the purposes of s 60(a).

  10. In the circumstances it is unnecessary to consider s 60(b).

  11. It follows that the Opponent has not established the s 60 ground of opposition.

Section 42(b)

  1. Section 42 of the Act provides:

Trade 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.

  1. In its SGP the Opponent claimed, in summary, that it had acquired a reputation in its mark in Australia prior to the relevant date and “use of the [Trade Mark] by the applicant in respect of which the Goods to which registration is sought” may constitute a breach of Schedule 2 of the Competition and Consumer Act 2010 (Cth) (“ACL”). Breaches of s 18 and s 29(1)(h) were specifically alleged, as was passing off.

  2. As was noted by Rangiah J in Primary Health Care Limited v Commonwealth of Australia, with whom, in this regard, Katzmann J and Greenwood J agreed:

    Section 42(b) of the TMA requires that the use of atrade mark “would be” contrary to law. It is not enough for a party opposing registration to show that s 18 of the ACL or s 52 of the TPA might be contravened. The opponent must prove, on the balance of probabilities, that the provision would be contravened by use of thetrade mark.[10]

    [10] Primary Health Care Limited v Commonwealth of Australia [2017] FCAFC 174 [411]

  3. Several previous cases confirm that more is required to establish a likelihood of misleading or deceptive conduct under the ACL than is the case with trade marks likely to deceive or cause confusion under s 60. For example, in Parkdale Custom Built Furniture Pty Ltd v Puxu Pty Ltd,[8] Gibbs CJ said with respect to (then) s 52 of the TPA:

    In McWilliam's Wines Pty Ltd v McDonald's System of Australia Pty Ltd [1980] FCA 159; (1980) 33 ALR 394 it was rightly held by Smithers J and by Fisher J that to prove a breach of s 52 it is not enough to establish that the conduct complained of was confusing or caused people to wonder whether two products may have come from the same source, and that Southern Cross Refrigerating Co v Toowoomba Foundry Pty Ltd [1953] HCA 73; (1954) 91 CLR 592; 1A IPR 465, a decision on the Trade Marks Act 1905 (Cth) as amended, is distinguishable.

  4. I note my findings above that the s 60 ground of opposition has not been established. In this context, where the Opponent has not established the relevant reputation, I am not satisfied, in the absence of any further persuasive evidence in this regard, that it has discharged the onus on it to establish that use of the Trade Mark would be likely to mislead or deceive within the meaning of s 18 of the ACL. It follows that I am not satisfied that the Opponent has established that use of the Trade Mark would be contrary to law in the sense that the Applicant would be regarded as having engaged in misleading or deceptive conduct as required by s 18 of the ACL.

  5. Furthermore, specifically in relation to s 29(1)(h), I note that there is no evidence before me that the Applicant has directly represented that its goods or services have sponsorship, approval, performance characteristics, accessories, uses or benefits they do not have. Accordingly, I am not satisfied that the Opponent has established that use of the Trade Mark would be contrary to law in the sense that the Applicant would be regarded as having falsely represented its goods or services, as required by s 29 of the ACL.

  6. In relation to passing off, the relationship between it and (then) s 52 of the TPA was addressed by Hill J in Re Equity Access Pty Ltd v Westpac Banking Corporation where he said:

    The scope for the operation of s 52 will thus be broader than that involved in the tort of passing off so that in a case such as the present where the claim is for the protection of the reputation in a name against the use of that name by another, failure to succeed under s 52 or s 53 will invariably mean that proceedings for passing off would likewise fail.[11]

    [11] Re Equity Access Pty Ltd v Westpac Banking Corporation [1989] FCA 506 at [39]; (1989) 16 IPR 431.

  7. That is, where use of a trade mark does not contravene s 18 of the ACL, neither will it amount topassing off.

  8. The Opponent has not established that use of the Trade Mark would be contrary to law in the sense that it constituted passing off.

  9. For these reasons I am not satisfied that use of the Trade Mark by the Applicant would be contrary to law. Therefore, the section 42(b) ground of opposition has not been established.

Section 62A

  1. Section 62A of the Act provides:

    Application made in bad faith

    The registration of a trade mark may be opposed on the ground that the application was made in bad faith.

  2. In its SGP, the Opponent noted that it and the Applicant “are competitors in the passive fire industry and there is extensive history between the director of the Applicant, Mr. John Rakic, and the Director of the Opponent, Mr. Mark Prior.”  It was alleged that “The Applicant, either by Mr. Rakic’s own knowledge of the Opponent’s use of the Opponent’s Trade Mark, or as a result of Ms. Freel’s knowledge from her employment with the Opponent, knew at the Priority Date that it was not the owner of the Opposed Application. As such, the Opposed Application was made in bad faith.”

  3. Section 62A was considered in Fry Consulting Pty Ltd v Sports Warehouse Inc (No 2) where Dodds-Streeton J said (emphasis added):

    It is clear that bad faith for the purposes of s 62A must be at the time of the application in this case (22 December 2006) and must relate to the making of the subject of that application, which in this case is the composite word and device mark, rather than the mark TENNIS WAREHOUSE or TENNIS WAREHOUSE AUSTRALIA. Further, the onus of proving bad faith rests on the opponent. While the seriousness of an allegation of bad faith that “impugns the character of an individual or collective character of a business...” requires correspondingly cogent evidence (statement of the Hearing Officer in Maslyukov v Diageo Distilling Ltd [2010] EWHC 443 (“Maslyukov”), quoted with approval by Arnold J at [36] and [37]), the standard of proof is the balance of probabilities, rather than that of beyond reasonable doubt.[12]

    [12] Fry Consulting Pty Ltd v Sports Warehouse Inc (No 2) [2012] FCA 81 [145].

  4. And after examining the various UK and Australian authorities Dodds-Streeton J concluded:

    The formulation in United Kingdom authority of bad faith as falling short of the standards of acceptable commercial behaviour observed by reasonable and experienced persons in a particular area is, in my view, an apt touchstone. An overly literal application may, however, tend to negate the relevance attributed to the applicant’s mental state in the combined test preferred in Harrison.

    Further, in my view, mere negligence, incompetence or a lack of prudence to reasonable and experienced standards would not, in themselves, suffice, as the concept of bad faith imports conduct which, irrespective of the form it takes, is of an unscrupulous, underhand or unconscientious character….

    The question is whether, in all the particular circumstances, the applicant’s knowledge was such that his decision to apply for registration at the relevant date would be regarded as in bad faith by persons adopting proper standards.[13]

    [13] Fry Consulting Pty Ltd v Sports Warehouse Inc (No 2) [2012] FCA 81 [165-7].

  5. Therefore, in assessing whether this Trade Mark application has been made in bad faith, the issue is whether, given the Applicant’s knowledge, when the application was made, its conduct fell short of the standards of acceptable commercial behaviour observed by reasonable and experienced persons in the relevant area.[14] 

    [14] Ibid.; DC Comics v Cheqout Pty. Ltd. (2013) 101 IPR 334 at 63.

  1. At the hearing, referring in particular to exhibits MP-23/24, the Opponent submitted that Ms. Freel had participated in meetings in which the Firebox/Fyrebox brand was discussed and had intimate knowledge of the Opponent, its marks and its plans, when she joined the Applicant. The Applicant had not shown how its decision to use the Trade Mark come about, particularly given the lengthy delay between its discussion of names for the product in 2013 and its adoption of the Trade Mark which coincided with Ms. Freel’s employment. In submissions it was contended that “[a]ny ordinary person adopting proper standards, after employing a National Sales Manager with intimate knowledge of a competitor’s business activities and confidential information would not then use that information to apply to file a trade mark that is substantially identical with, or deceptively similar to the Opponent’s Mark for the same Goods.” Thus the Applicant was said to have demonstrated a falling short of acceptable standards that constitutes bad faith.

  2. The Applicant outlined the history of its disputes with the Opponent, rejecting the claims regarding the employment of Ms. Freel, noting various factual errors in the Opponent’s assertions, and alleged that any bad faith lies with the Opponent. At the hearing the Applicant noted the seriousness of the allegations made concerning Ms. Freel (i.e. that it would constitute a breach of s 186 of the Corporations Law) and her clear denial. It also submitted that its evidence established the Applicant invented the name prior to its engagement of Ms. Freel. It referred to exhibits which demonstrated its internal “workshopping” of the brand prior to Ms. Freel’s engagement.

  3. There is no persuasive evidence before me which demonstrates that Ms. Freel misused the Opponent’s confidential information. The email references relied on by the Opponent indicate she was copied into certain communications in which the words “fire” and “box” were used but they establish nothing more than that. Other evidence indicates that Ms. Freel has been engaged in the industry for several years and it does not suggest or establish a reason to doubt her credibility or integrity. In any event, the Applicant’s evidence demonstrates its discussion and use of the Trade Mark prior to her commencement with it (in particular, exhibit JR-32, an email dated 28 November 2013 in which the Applicant clearly canvasses use of the name “Firebox”).

  4. The Opponent also alleged that the Applicant filed the Trade Mark applications in bad faith because Mr. Rakic knew that the Opponent was the rightful owner. Pertinently, as Dodds-Streeton J noted, bad faith for the purposes ofs 62Ais to be assessed at the time of the application. In this application that date is 24 November 2015. As I have already found, as at this, the relevant date, there was no evident prior use by the Opponent of the Trade Mark. Therefore, any allegation that the Applicant had acted in bad faith in filing it, because it knew that the Opponent owned it, falls away and cannot be sustained.

  5. For all the above reasons, there is no cogent evidence before me which indicates the Applicant’s conduct in filing for registration of the Trade Mark might be said to constitute a “falling short of the standards of acceptable commercial behaviour observed by reasonable and experienced persons” or of an “unscrupulous, underhand or unconscientious character”.[15]

    [15] Fry Consulting [165-7].

  6. The Opponent has not established the s 62A ground of opposition.

Section 59

  1. Section 59 of the Act provides as follows:

    Applicant not intending to use trade mark

    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

  2. As Fullager J stated in Aston v Harlee Manufacturing Co “the making of the application itself is, I think, to be regarded as prima facie evidence of intention to use” and:

    A manufacturer of (say) confectionery would, I should suppose, be entitled to register three trade marks in relation to confectionery, though he intended only to use two of them and had not made up his mind as to which two he would use ... On the other hand, a manufacturer of confectionery, who had no intention of ever manufacturing motor cars, might be held disentitled to register a mark in relation to motor cars …[16]

    [16] [1960] HCA 47; (1960) 103 CLR 391; [1960] ALR 605.

  3. At the hearing the Opponent claimed that the Applicant had filed the Trade Mark for tactical reasons, that it had sought to “ring fence” the word and prevent other traders using it.

  4. Having considered the evidence, there is no indication that the Applicant did not intend to use the Trade Mark at the relevant date. On the contrary, it is consistent with the group of other trade marks that were, by that date, used and registered by the Applicant in relation to associated products and services in the same industry (see paragraph 22 above). Furthermore, the Applicant’s evidence demonstrates ongoing discussions about the Trade Mark prior to the relevant date. As the Applicant plausibly explained, it waited until the relevant testing had been completed before registering the Trade Mark.

  5. I am not satisfied that the Applicant had anything other than a real intention to use the Trade Mark. There is nothing in the evidence which indicates that the intention was an uncertain or indeterminate possibility, or that there was any fraudulent purpose.[17]

    [17] Ritz Hotel Ltd v Charles of the Ritz and Another (1988) 15 NSWLR 158 at [201]-[202]

  6. The Opponent has not established this ground of opposition.

Section 41

  1. Section 41 relevantly provides as follows:

Trade mark not distinguishing applicant's goods or services

(1) An application for the registration of a trade mark must be rejected if the trade mark is not capable of distinguishing the applicant's goods or services in respect of which the trade mark is sought to be registered (the designated goods or services) from the goods or services of other persons.

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

(2) A trade mark is taken not to be capable of distinguishing the designated goods or services from the goods or services of other persons only if either subsection (3) or (4) applies to the trade mark.

(3) This subsection applies to a trade mark if:

(a) the trade mark is not to any extent inherently adapted to distinguish the designated goods or services from the goods or services of other persons; and

(b) the applicant has not used the trade mark before the filing date in respect of the application to such an extent that the trade mark does in fact distinguish the designated goods or services as being those of the applicant.

(4) This subsection applies to a trade mark if:

(a) the trade mark is, to some extent, but not sufficiently, inherently adapted to distinguish the designated goods or services from the goods or services of other persons; and

(b) the trade mark does not and will not distinguish the designated goods or services as being those of the applicant having regard to the combined effect of the following:

(i) the extent to which the trade mark is inherently adapted to distinguish the goods or services from the goods or services of other persons;

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

(iii) any other circumstances.

Note 1: Trade marks that are not inherently adapted to distinguish goods or services are mostly trade marks that consist wholly of a sign that is ordinarily used to indicate:

(a) the kind, quality, quantity, intended purpose, value, geographical origin, or some other characteristic, of goods or services; or

(b) the time of production of goods or of the rendering of services.

  1. In its SGP the Opponent outlined the dictionary definitions of “fire” and “box” and claimed, based on these definitions, that the Trade Mark “can be defined as a box-shaped product for use in relation to fires, such as to resist fire or prevent the spread of fire.”

  2. The first Prior declaration exhibited the lengthy correspondence between IP Australia and the Applicant regarding s 41 issues.

  3. In its submissions the Opponent claimed that the Applicant had acknowledged that the Trade Mark has an “ordinary significance” and is not “inherently adapted to distinguish”, describing the word “FIREBOX” as a “literal spelling” and “self-explanatory”. Referring to the Macquarie Dictionary definition, it submitted that it meant “a box in which a fire is placed” and that members of the building and construction industry are likely to be familiar with the “ordinary significance” of “Firebox” because it would commonly be referred as part of architecture, construction and building and other traders might legitimately want to use it.

  4. At the hearing, the Applicant contended that there was an inherent inconsistency in the Opponent’s argument insofar as it identifies the ordinary signification of word as defined in Macquarie Dictionary but what is defined is not descriptive of the goods the subject of the Trade Mark. In fact, the Goods do not contain fire but repel it. It noted the Opponent’s references to the examination reports and comments therein however it failed to acknowledge that the Trade Mark had been accepted without endorsement. It was claimed that the basis on which the examiner allowed the application was that the Trade Mark “could not sensibly or accurately describe a fire prevention device such as this.”

100. In addition, at the hearing, the Applicant noted that various authorities [18] instruct against such a search for meaning. Reference was made to the Opponent’s broad claims that the word “FIREBOX” is understood as having directly descriptive meaning or “ordinary signification” in relation to goods similar to the designated Goods of the Opposed Application” but that it adduced no evidence to support this claim.

[18] Mark Foy’s Ltd v Limited v Davies Coop and Company Limited[1956] HCA 41; (1956) 95 CLR 190; Re Diamond TMotor Co’s Application(1921) 38 RPC 373.

101. In this context I note the reference to the observations of the Registrar’s delegate in Self Care Corporation Pty Ltd v Johnson & Johnson:

As was noted in the 2nd edition of Shanahan’s Australian Law of Trade Marks and Passing Off at page 94:

While knowledge of the product for which a mark is intended may clearly indicate the word or words from which the mark is derived, it does not necessarily follow that the mark has an obvious meaning. As the British Assistant Comptroller observed in Hallgarten’s Appn:

[O]bviousness of meaning must not be confused with obviousness of method of coining or derivation.[19]

[19] [2015] ATMO 27

102. The Opponent has provided no evidence demonstrating that the Trade Mark bears any ordinary signification in the relevant industry.

103. It follows that I am not satisfied the Opponent has established the s 41 ground of opposition.

Section 62

104. Section 62 provides as follows:

Application etc. defective etc.

The registration of a trade mark may be opposed on any of the following grounds:

(a) that the application, or a document filed in support of the application, was amended contrary to this Act;

(b) that the Registrar accepted the application for registration on the basis of evidence or representations that were false in material particulars

105. In its SGP the Opponent contended that “the Applicant represented by way of section 27 of the Act that it was the owner of the [Trade Mark]” and this constituted a “false representation as it was not the owner of the [Trade Mark].”

106. In its submissions the Opponent claimed that the Registrar had accepted the application for registration on the basis of “representations that were false in material particulars.” These particulars were contended to be the Applicant’s representation that it was the owner of the Trade Mark and that it intended to use the Trade Mark. On this basis it was asserted that the Opponent has “satisfied the onus of proof under this ground.”

107. No further evidence was relied on in this respect and no further particulars were provided other than these broad assertions.

108. Given my findings above, that the Applicant did intend to use the Trade Mark, and that its claim to ownership has not been displaced by Opponent’s evidence, I am not satisfied this ground has been established.

Decision

109. Section 55 of the Act relevantly provides:

Decision

(1) Unless subsection (3) applies to the proceedings, 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.

110. The Opponent has failed to establish any of the grounds of opposition it nominated.

111. This Application may accordingly proceed to registration after 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 until either the appeal is withdrawn or a court so orders.

Costs

112.  Both parties sought costs. I see no reason to depart from the general rule that costs follow the event. As the Opponent has failed to establish a ground of opposition, I award costs against the Opponent as per Schedule 8 of the Regulations.

M. Cooper
Hearing Officer
Oppositions and Hearings
29 March 2019


Actions
Download as PDF Download as Word Document
Cases Cited

18

Statutory Material Cited

0

Pfizer Products Inc v Karam [2006] FCA 1663
Food Channel Network Pty Ltd v Television Food Network GP [2010] FCAFC 58
Registrar of Trade Marks v Woolworths [1999] FCA 1020