Bridgstone Licensing Services Inc v Marshalls Mono Limited

[2014] ATMO 114

TRADE MARKS ACT 1995

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

Re:Opposition by Bridgestone Licensing Services Inc to protection of International Registration Designating Australia 1463571(19) - FAIRSTONE - filed in the name of Marshalls Mono Limited.

Delegate:	Jock McDonagh
Representation:	Opponent: Written submissions by Griffith Hack Patent and Trade Marks Attorneys Applicant: Mark Metzeling of IP Gateway Patent and Trade Marks Attorneys
Decision:	2014 ATMO 114 Reg. 17A.34 opposition – Grounds pursued under sections 42(b), 44 and 60 not established – IRDA granted protection.

Background

1. Application 1463571 is an international registration designating Australia (“IRDA”).  It was filed in the name of Marshalls Mono Limited (“the Holder”) under the Madrid Protocol on 11 October 2011.

2. Section 189A of the Trade Marks Act 1995 (“the Act”) governs the consideration of IRDAs. This section makes provision for the Trade Marks Regulations 1995 (“the Regulations”) to “provide for such matters as are necessary to enable the performance of the obligations of Australia, or to obtain for Australia any advantage or benefit, under the Madrid Protocol.”

3. Details of the IRDA are as follows:

Trade mark:	FAIRSTONE
Trade mark application: International Registration:	1463571 1097696
Filing Date:	11 October 2011
Specifications :	Class 19: Paving and building materials; paving and walling blocks and bricks; parts and fittings for all the aforesaid goods

1. Following examination of the IRDA, IP Australia advertised its intention to extend protection to Australia in the Australian Official Journal of Trade Marks on 12 April 2012.

2. On 4 July 2012, Bridgestone Licensing Services Inc (“the Opponent”) filed a Notice of Opposition (“the Notice”) to extension of protection of the IRDA to Australia pursuant to Reg 17A.34 of the Regulations.

3. Thereafter the parties filed the following evidence:

Declarant	Status	Date, Known as	Exhibits
Evidence in Support
Masahiko Yamamoto	Vice President of Opponent	2.11.13 “Yamamoto”	MY-1 to MY-5
Evidence in Answer
Christopher John Harrop	Holder’s Group marketing Director	20.01.14 “Harrop”	CJH-01 to CJH-17

1. I heard the matter in Brisbane, as a delegate of the Registrar of Trade Marks, on 15 September 2014. There was no appearance on behalf of the Opponent, which relied on written submissions prepared and filed by Griffith Hack Patent and Trade Marks Attorneys. Mark Metzeling of IP Gateway Patent and Trade Marks Attorneys appeared on behalf of the Holder.

Grounds of Opposition

1. The Notice nominated most grounds of opposition available under the Trade Marks Act 1995 (“the Act”). Prior to the hearing the Opponent advised that it would only press the following  three grounds:

   • Trade mark contrary to law (passing off) (Section 42(b))
   • Prior substantially identical or deceptively similar trade mark (Section 44)
   • Reputation (Section 60)

1. To succeed in its opposition the Opponent bears the onus of establishing at least one of these grounds. 

2. None of the evidence served and filed by the Opponent appears to go to the grounds in the Notice that were not pressed and for the sake of completeness I find that these grounds have not been established.

Standard of Proof

1. The relevant standard of proof required of the Opponent is the ordinary civil standard based on the balance of probabilities.[1]

   [1] Following Gyles J in Pfizer Products Inc v Karam (2006) 70 IPR 599 at [6] to [26]. See also Tricarico v Dunn Bay Holdings Pty Ltd [2012] FCA 271 per McKerracher J at [9] to [10] and Fry Consulting Pty Ltd v Sports Warehouse Inc (2012) 94 IPR 551 per Dodds-Streeton J at [13].

Discussion - Section 44 ground of opposition

1. Section 44 of the Act relevantly provides:

   44Identical etc. trade marks

   (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).

Note 3:For priority date see section 12.

Note 4:The regulations may provide that an application must also be rejected if the trade mark is substantially identical with, or deceptively similar to, a protected international trade mark or a trade mark for which there is a request to extend international registration to Australia: see Part 17A.

1. In order to establish a ground of opposition under subsection 44(1), an opponent thus must demonstrate the existence of one or more registered or pending trade marks owned by a person other than the applicant:

   ·With an earlier priority date (or dates) than that of the opposed trade mark; which has

   ·Similar goods or services to those of the opposed trade mark; and

   ·A trade mark (or trade marks) which is/are substantially identical or deceptively similar.

2. The Opponent relies upon two prior registrations that it owns, the details of which are as follows:

Regn No.	Priority Date	Trade Mark	Class & Specification
640151	8.09.94	Class 19: Building materials (non-metallic); roofing membrane; none of the aforesaid goods being firestones or goods made of firestone
1310058	16.07.09	FIRESTONE	Class 1: Adhesives and primers Class 17: Sealants for use in building and construction and insulation for use in building and constructions Class 19: Non-metallic building materials; non-metallic roofing materials; roofing and waterproof membranes Class 37: Roofing services

1. It is obvious, and the Holder’s attorney conceded, that the Class 19 goods specified for both the Holder’s FAIRSTONE IRDA and the Opponent’s FIRESTONE registrations are similar goods for the purposes of this ground of opposition.

2. The Opponent did not suggest that the IRDA was substantially identical with the cited registrations and I find that they are not substantially identical and will proceed on the basis that the Opponent is asserting deceptive similarity.

3. Deceptive similarity is to be assessed according to the tests set out in Shell Company of Australia Ltd v Esso Standard Oil (Australia) Ltd [1963] HCA 66; (1963) 109 CLR 407 at paragraph 13 per Windeyer J:

   On the question of deceptive similarity a different comparison must be made from that which is necessary when substantial identity is in question. The marks are not now to be looked at side by side. The issue is not abstract similarity, but deceptive similarity. Therefore the comparison is the familiar one of trade mark law. It is between, on the one hand, the impression based on recollection of the plaintiff's mark that persons of ordinary intelligence and memory would have; and, on the other hand, the impressions that such persons would get from the defendant's television exhibitions. To quote Lord Radcliffe again: "The likelihood of confusion or deception in such cases is not disproved by placing the two  marks  side by side and demonstrating how small is the chance of error in any customer who places his order for goods with both the  marks  clearly before him . . . . It is more useful to observe that in most persons the eye is not an accurate recorder of visual detail, and that marks are remembered rather by general impressions or by some significant detail than by any photographic recollection of the whole": de Cordova v. Vick Chemical Co (1951) 68 RPC, at p 106 . And in Australian Woollen Mills Ltd v. F.S. Walton & Co. Ltd. (1937) 58 CLR 641 Dixon and McTiernan JJ. said: "In deciding this question, the marks ought not, of course, to be compared side by side. An attempt should be made to estimate the effect or impression produced on the mind of potential customers by the mark or device for which the protection of an injunction is sought. The impression or recollection which is carried away and retained is necessarily the basis of any mistaken belief that the challenged mark or device is the same" (1937) 58 CLR, at p 658

4. I am to estimate the effect on the minds of potential customers – in other words, the assessment is to take place in the context of the marketplace for the goods.  This contextual comparison was stressed in In Re Application by the Pianotist Co Ltd (1906) 1A IPR 379 at 380; 23 RPC 774 at 777, above, where Parker J said:

   You must take the two words. You must judge of them, both by their look and by their sound. You must consider the goods to which they are to be applied. You must consider the nature and kind of customer who would be likely to buy those goods. In fact, you must consider all the surrounding circumstances; and you must further consider what is likely to happen if each of those trade marks is used in a normal way as a trade mark for the goods of the respective owners of the marks.

5. The considerations applicable to the assessment of whether the trade marks are deceptively similar were identified in Registrar of Trade Marks v Woolworths [1999] FCAFC 1020; [1999] FCA 1020; (1999) 93 FCR 365; (1999) 45 IPR 411; [1999] AIPC 91-499 at paragraph 50 by French J who said:

   In Southern Cross Refrigerating Co v Toowoomba Foundry Pty Ltd (1954) 91 CLR 592 at 594-5, which concerned the 1905 Act, Kitto J set out a number of propositions which have frequently been quoted and applied to the 1955 Act. The essential elements of those propositions continue to apply to the issue of deceptive similarity under the 1995 Act. Applied also to service marks and absent the imposition of an onus upon the applicant they may be restated as follows:

   (i) To show that a trade mark is deceptively similar to another it is necessary to show a real tangible danger of deception or confusion occurring. A mere possibility is not sufficient.

   (ii) A trade mark is likely to cause confusion if the result of its use will be that a number of persons are caused to wonder whether it might not be the case that the two products or closely related products and services come from the same source. It is enough if the ordinary person entertains a reasonable doubt.

   It may be interpolated that this is another way of expressing the proposition that the trade mark is likely to cause confusion if there is a real likelihood that some people will wonder or be left in doubt about whether the two sets of products or the products and services in question come from the same source.

   (iii) In considering whether there is a likelihood of deception or confusion all surrounding circumstances have to be taken into consideration. These include the circumstances in which the marks will be used, the circumstances in which the goods or services will be bought and sold and the character of the probable acquirers of the goods and services.

   (iv) The rights of the parties are to be determined as at the date of the application.

   (v) The question of deceptive similarity must be considered in respect of all goods or services coming within the specification in the application and in respect of which registration is desired, not only in respect of those goods or services on which it is proposed to immediately use the mark. The question is not limited to whether a particular use will give rise to deception or confusion. It must be based upon what the applicant can do if registration is obtained.

   In respect of the last proposition, Mason J observed in Berlei Hestia Industries Ltd v The Bali Company Inc [1973] HCA 43; (1973) 129 CLR 353 at 362:

   “...the question whether there is a likelihood of confusion is to be answered, not by reference to the manner in which the respondent has used its mark in the past, but by reference to the use to which it can properly put the mark. The issue is whether that use would give rise to a real danger of confusion."

6. There are certainly similarities between the IRDA and the cited marks. They all commence with a four letter prefix, starting with the letter “F”, and the remainder of the word is “STONE”.

7. However, I note that STONE is a common descriptive term for some building materials within Class 19. Therefore, the operative part of the relevant marks is the prefix, namely “FAIR” and “FIRE”. The prefixes are complete English words in their own right, with distinct and different definitions and pronunciation.

8. I also note that the nature of the goods in question and the usual manner in which they are sold is relevant to determining whether there is a tangible danger of deception or confusion arising. The purchase of building materials is not normally made on impulse, but is one in which time and research is done to ascertain the most suitable products. I am not satisfied that a consumer, on seeing the IRDA, would recall either of the Opponent’s trade marks.

9. I find that the marks are sufficiently different in sound and appearance that there is no real tangible danger of deception or confusion occurring in the marketplace. This ground of opposition has not been established.

Discussion - Section 60 ground of opposition

1. Section 60 of the Act provides:

   60. The registration of a trade mark in respect of particular goods or services may be opposed on the ground that:

   (a) another trade mark had, before the priority date for the registration of the first-mentioned trade mark in respect of those goods or services, acquired a reputation in Australia; and
   (b) because of the reputation of that other trade mark, the use of the first-mentioned trade mark would be likely to deceive or cause confusion.

2. To satisfy section 60 the Opponent must establish:

• that another trade mark had, before 11 October 2011, acquired a reputation in Australia in respect of particular goods/services; and

• because of the reputation of that other trade mark, the use of the Holder’s trade mark would be likely to deceive or cause confusion.

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

2. Reputation is to be assessed according to the test set out in McCormick & Company Inc v McCormick (2000) 51 IPR 102, by Kenny J at [81] – [82]:

   What is intended by the word “reputation” in s 60? The word is defined in The Macquarie Dictionary as follows:

   reputation ... 1. the estimation in which a person or thing is held, esp. by the community or the public generally; repute ... 2. favourable repute; good name ... 3. A favourable and publicly recognised name or standing for merit, achievement, etc. ... 4. The estimation or name of being, having done, etc, something specified.

   Cf. The Oxford English Dictionary. In s 60, the word is, I think, apt to refer to “the recognition of the McCormick & Co marks by the public generally”.

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

3. Further, at [86], Kenny J said:

   In practice, it is commonplace to infer reputation from a high volume of sales, together with substantial advertising expenditures and other promotions, without any direct evidence of consumer appreciation of the mark, as opposed to the product.

1. The Opponent’s evidence establishes that it has a significant and long term Australian and worldwide reputation in its FIRESTONE trade marks in connection with tyres for vehicles.

2. There is some evidence of advertising in Australia of the FIRESTONE trade mark (in conjunction with POND GARD and PONDLINERS device trade marks) for rubber waterproof pond liners.

3. There is a table of purported global and Australian sales turnover for the years 2006 to 2012. However, there is no breakdown of such turnover with relation to specific goods under the two FIRESTONE trade marks, and there is an obvious error in the 2012 figures that casts doubt on the veracity of the figures cited.

4. The type of reputation that the Opponent must establish one of a kind and extent that would create a real and tangible danger of deception or confusion amongst consumers of the goods claimed in the Holder’s IRDA. I do not consider that the Opponent has established this limb of the ground of opposition.

5. This is mainly because such reputation relevant to the goods of the IRDA that might have been established by the Opponent is limited to use of the trade marks in connection with rubber pool liners. I do not consider that consumers would expect pool liners to be from the same source as the building and paving dealt with by the Holder.

6. The Opponent’s marks are sufficiently different from that of the Holder to avoid deception or confusion amongst the relevant marketplace.

7. I am not satisfied that this ground of opposition has been established.

Discussion - Section 42 ground of opposition

1. Section 42 of the Act provides:

   42 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. The Opponent’s attorney submitted that use of the Holder’s trade mark for the relevant goods would breach Sections 18 and 29 of the Australian Consumer Law (being Schedule 2 to the Competition and Consumer Act 2010) which proscribe misleading or deceptive conduct or the making of false or misleading representations. I point out that sections 18 and 29 of the Australian Consumer Law correspond to sections 52 and 53 of its predecessor, the Trade Practices Act 1974.

2. Section 18 of the Australian Consumer Law provides:

   18    Misleading or deceptive conduct

   (1) A person must not, in trade or commerce, engage in conduct that is misleading or deceptive or is likely to mislead or deceive.

3. The drafting of section 18 is in essentially the same form as its predecessor section 52 of the Trade Practices Act 1974, except for the reference to ‘persons’ rather than ‘corporations’ and ‘shall not’ became ‘must not’. The effect of section 18 remains unchanged and, accordingly, the existing jurisprudence on section 52 and its State and Territory equivalents remains applicable under the Australian Consumer Law[2].

   [2] The Australian Consumer Law – A guide to provision, November 2010.

4. Section 29 of the Australian Consumer Law provides:

29 False or misleading representations about goods or services

(1) A person must not, in trade or commerce, in connection with the supply or possible supply of goods or services or in connection with the promotion by any means of the supply or use of goods or services:

(a) make a false or misleading representation that goods are of a particular standard, quality, value, grade, composition, style or model or have had a particular history or particular previous use; or

(b) make a false or misleading representation that services are of a particular standard, quality, value or grade; or

(c) make a false or misleading representation that goods are new; or

(d) make a false or misleading representation that a particular person has agreed to acquire goods or services; or

(e) make a false or misleading representation that purports to be a testimonial by any person relating to goods or services; or

(f) make a false or misleading representation concerning:

(i) a testimonial by any person; or

(ii) a representation that purports to be such a testimonial;

relating to goods or services; or

(g) make a false or misleading representation that goods or services have sponsorship, approval, performance characteristics, accessories, uses or benefits; or

(h) make a false or misleading representation that the person making the representation has a sponsorship, approval or affiliation; or

(i) make a false or misleading representation with respect to the price of goods or services; or

(j) make a false or misleading representation concerning the availability of facilities for the repair of goods or of spare parts for goods; or

(k) make a false or misleading representation concerning the place of origin of goods; or

(l) make a false or misleading representation concerning the need for any goods or services; or

(m) make a false or misleading representation concerning the existence, exclusion or effect of any condition, warranty, guarantee, right or remedy (including a guarantee under Division 1 of Part 3‑2); or

(n) make a false or misleading representation concerning a requirement to pay for a contractual right that:

(i) is wholly or partly equivalent to any condition, warranty, guarantee, right or remedy (including a guarantee under Division 1 of Part 3‑2); and

(ii) a person has under a law of the Commonwealth, a State or a Territory (other than an unwritten law).

Note 1: A pecuniary penalty may be imposed for a contravention of this subsection.
     Note 2: For rules relating to representations as to the country of origin of goods, see Part 5‑3.

(2) For the purposes of applying subsection (1) in relation to a proceeding concerning a representation of a kind referred to in subsection (1)(e) or (f), the representation is taken to be misleading unless evidence is adduced to the contrary.

(3) To avoid doubt, subsection (2) does not:

(a) have the effect that, merely because such evidence to the contrary is adduced, the representation is not misleading; or

(b) have the effect of placing on any person an onus of proving that the representation is not misleading.

1. The types of representations above reflect those types that were already covered by section 53 of the Trade Practices Act 1974. Although two new types of representations are included.

2. As discussed by Hearing Officer Kirov in [2009] ATMO 37, at [49] and [50], regarding the legal authorities, such as Parkdale Custom Built Furniture Pty. Limited v. Puxu Pty. Limited[3], where it was found that the use of the opposed trade mark is not, at a minimum, likely to “confuse” under sections 44 and 60 of the Act, it follows that use is not, on the stricter test posited by Australian Consumer Law, likely to mislead or deceive, nor that use would amount to a false representation in terms of section 29. I thus find that the opponent has not established its ground under section 42.

   [3] (1982) 149 CLR 191; 1A IPR 684.

Decision

1. Regulation 17A.34N provides:

17A.34NDecision on opposition

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

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

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

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

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

1. I find that the Opponent has not established any of its grounds of opposition. Accordingly, I direct that protection of IRDA 1463571 be extended in respect of all the listed goods.

Costs

1. It is usual for costs to follow the event, and I see no reason to depart from that principle here. I award costs, according to the official scale set out in Schedule 8 of the Regulations, against the Opponent.

2. Extension of protection is to take place 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 extension of protection shall not occur until the appeal has been decided or discontinued. If the Registrar has not been served with a notice of appeal before that time the International Bureau will be notified of this decision as soon as practicable after the appeal period has ended, in accordance with Reg. 17A.34N(2).

Jock McDonagh
Hearings Officer
Trade Marks Hearings
8 December 2014