Brightgreen Pty Ltd v Enlighten Australia Pty Ltd

[2016] ATMO 108

TRADE MARKS ACT 1995

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

Re:Opposition by Brightgreen Pty Ltd to registration of trade mark application 1578334 (9, 11, 35, 42) - CHAMAELEON - filed in the name of Enlighten Australia Pty Ltd.

Delegate:	Jock McDonagh
Representation:	Opponent: Ian Horak of Counsel, instructed by Davies Collison Cave Applicant: Fraser Old of Fraser Old & Sohn
Decision:	2016 ATMO 108 Trade Marks Act 1995 Section 52 opposition: sections 44 and 58 pressed – s 44(4) applicable – neither ground of opposition established – trade mark to proceed to registration.

Background

1. This matter relates to an opposition under section 52 of the Trade Marks Act 1995 (‘the Act’) to the registration of a trade mark filed by Enlighten Australia Pty Ltd (‘the Applicant’). Relevant details of the application are set out below.

Trade mark:  CHAMAELEON (‘the Trade Mark’)

Trade mark application no: 1578334

Filing Date:  4 September 2013

Specifications:  Class 9: Apparatus for the control and automation of lighting devices; energy monitoring and control systems for use in building management and building control systems; electric control apparatus for lights; electrical tracks for light fittings and lights; lighting control apparatus; light sensors; and light switches; and data processing and computing equipment used in building management systems

Class 11: Lighting assemblies, installations, devices, apparatus and equipment; electric lighting fixtures; lamps including LED lighting elements, fluorescent lighting elements, halogen lighting elements and incandescent lighting elements; lamp casings; grills for directing light; light reflectors and covers; lamp socket; lamp hanging supports; emergency lights, lighting assemblies, apparatus and devices therefor; lights for wall mounting; and lights for internal or external installation
Class 35: Retail and wholesale selling of lights, light assemblies or apparatus and components or parts therefore; online retail and wholesale sales of lights, light assemblies or apparatus and components or parts therefor

Class 42: Design and planning of installations for building services including lighting and ventilation

Endorsements: Provisions of subsection 44(4) and/or Reg 4.15A(5) applied.

1. Acceptance of the application for possible registration was published in the Australian Official Journal of Trade Marks dated 18 September 2014. Subsequently Brightgreen Pty Ltd (‘the Opponent’) filed a Notice of Intention to Oppose registration followed by a Statement of Grounds and Particulars (‘the Statement’).

2. The Applicant then filed its Notice of Intention to Defend. Thereafter the Opponent has filed evidence in support accordance with the provisions of the Trade Mark Regulations 1995 (‘the Regulations’), while the Applicant elected not to file any evidence in answer in and subsequently requested to be heard.

3. I heard the opposition in Canberra as a delegate of the Registrar of Trade Marks on 21 June 2016. The Opponent was represented at the hearing by Ian Horak of Counsel, instructed by Davies Collison Cave, patent and trade mark attorneys. The Applicant was represented by Fraser Old of Fraser Old & Sohn, patent and trade mark attorneys.

Grounds of Opposition

1. The Statement nominated five grounds of opposition under the Act. In these proceedings, the Opponent elected to press two grounds, being under ss 44 and 58. The onus is upon the Opponent to establish one or both of its grounds of opposition. The standard of proof required in these matters is the ordinary civil standard based on the balance of probabilities.[1]

   [1] Telstra Corporation Limited v Phone Directories Company Pty Ltd [2015] FCAFC 156, [133] affirming the approach of Gyles J in Pfizer Products Inc. v Karam [2006] FCA 1663, [26].

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.

Evidence

1. The evidence in these proceedings consists of the declaration of Erin Kathleen McManus (‘McManus’), solicitor for the Opponent’s attorneys, made on 6 May 2014 with Exhibit EM-1. The exhibit is a declaration made on 18 July 2014 by Steve Cahill (‘Cahill’), Chief Executive Officer of the Applicant. Cahill contained two Annexures, marked SC-1 and SC-2, and was provided as evidence in response to objections during examination.

2. Cahill also included turnover and advertising figures from 24 January 2011. Those figures were redacted by the IP Australia Freedom of Information (‘FOI’) section when releasing Cahill to the Opponent’s attorneys. In its written outline of submissions supplied before the hearing, the Applicant’s attorneys provided the missing figures and requested they be taken into account. The Opponent did not wish that the figures be accepted.

3. I have decided to allow the redacted figures to be restored to the relevant tables in Cahill. The Opponent sought a copy of Cahill through FOI provisions, and the figures complete the information sought by the Opponent’s attorneys. If the Opponent wishes to adopt Cahill as its evidence in support of the opposition proceedings, it cannot both approbate and reprobate.

Section 44 – Identical etc. trade marks

1. Section 44 of the Act states:

(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)  it 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 similarsee section 10.

Note 2:       For similar goodssee subsection 14(1).

Note 3:       For priority datesee 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.

             (2)  Subject to subsections (3) and (4), an application for the registration of a trade mark (applicant’s trade mark) in respect of services (applicant’s services) must be rejected if:

   (a)  it is substantially identical with, or deceptively similar to:

   (i)  a trade mark registered by another person in respect of similar services or closely related goods; or

   (ii)  a trade mark whose registration in respect of similar services or closely related goods 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 services is not earlier than the priority date for the registration of the other trade mark in respect of the similar services or closely related goods.

Note 1:       For deceptively similarsee section 10.

Note 2:       For similar servicessee subsection 14(2).

Note 3:       For priority datesee 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.

             (3)  If the Registrar in either case is satisfied:

   (a)  that there has been honest concurrent use of the 2 trade marks; or

   (b)  that, because of other circumstances, it is proper to do so;

the Registrar may accept the application for the registration of the applicant’s trade mark subject to any conditions or limitations that the Registrar thinks fit to impose. If the applicant’s trade mark has been used only in a particular area, the limitations may include that the use of the trade mark is to be restricted to that particular area.

Note:          For limitationssee section 6.

             (4)  If the Registrar in either case is satisfied that the applicant, or the applicant and the predecessor in title of the applicant, have continuously used the applicant’s trade mark for a period:

   (a)  beginning before the priority date for the registration of the other trade mark in respect of:

   (i)  the similar goods or closely related services; or

   (ii)  the similar services or closely related goods; and

   (b)  ending on the priority date for the registration of the applicant’s trade mark;

the Registrar may not reject the application because of the existence of the other trade mark.

Note 1:       An authorised use of the trade mark by a person is taken to be a use of the trade mark by the owner of the trade mark (see subsection 7(3)).

Note 2:       For predecessor in titlesee section 6.

Note 3:       For priority datesee section 12.

1. To found the ground under section 44, an opponent has to establish the existence of at least one trade mark registration or application for registration of a trade mark that is owned by a person other than the Applicant and which:

   ·        has a priority date earlier than that of the Trade Mark; and

   ·is registered or made in respect of the same or similar goods/services or closely related services/goods; and

   ·is a trade mark substantially identical or deceptively similar to the Trade Mark.

1. The Opponent relied upon its own registration number 1411001 CHAMELEON, registered from 24 February 2011 in Class 11 for lighting apparatus; light globes; light fixtures; light emitting diode and halogen lighting apparatus; lamps; light assemblies; parts and fittings in relation to all of the aforementioned. This registration had been cited against the Trade Mark during examination.

2. There was no disagreement that the Trade Mark was either substantially identical with or deceptively similar to CHAMELEON or that the goods were similar. The real issue was whether or not the provisions of subsection 44(4) were applicable.

3. Mr Horak, for the Opponent, submitted that the Applicant had chosen not to stand behind its earlier (during examination) contention that subsection 44(4) should apply and had refrained from leading any evidence in answer.

4. With unfeigned respect for learned counsel, I cannot accept this submission. The Opponent has filed as its own evidence in support the Applicant’s earlier evidence establishing prior use of the Trade Mark. There was therefore evidence made by the Applicant filed in these proceedings.

5. Mr Horak continued submissions by impugning the lack of precision of Cahill and a lack of corroboration of facts declared in it. While Mr Horak raised some valid points, I am concerned that there was no evidence on behalf of the Opponent to challenge the veracity of Cahill’s evidence.

6. An example of the criticism of Cahill was that the expression ‘since about 24 January 2011’ was used twice and could mean a date up to two months later, or at least later that 24 February 2011. I do not agree with such an interpretation. While the expression could cover a few days either side of 24 January 2011, any date later than 31 January 2011 would likely not be covered by the statement. I also take official notice of the fact that 24 January 2011 was a Monday, such that I could accept any date during the week commencing 24 January 2011 as being honestly described as ‘about [etc]’.

7. Similarly, I would interpret the statement in Cahill, at [7], that the brochure (Cahill Annex SC 2) contained the Trade Mark ‘from at least 7 February 2011’, as meaning the brochure was initially distributed no later than 7 February 2011.

8. Mr Horak also submitted, in effect, that given the Opponent’s repudiation of Cahill, the Applicant could not rely on it in these proceedings to support section 44(4) or section 58.

9. Again, with unfeigned respect for Mr Horak, I do not characterise the matters solemnly declared by Mr Cahill as mere bold assertions. If I accept what Mr Cahill declared, and apply the statements to the information exhibited in Cahill, I can be satisfied that the Applicant used the Trade Mark in respect of at least the class 11 goods specified (and probably all of the goods and services specified).

10. In the absence of evidence from the Opponent that would cause me to question Cahill, I am satisfied that Cahill continues to support the Applicant’s section 44(4) case.

11. Therefore, I am not satisfied that the Opponent has established this ground of opposition.

Section 58 – Applicant not owner of trade mark

1. Section 58 of the Act is reproduced below:

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

2. The applicable law regarding ownership of a trade mark in Australia is well known.  As eloquently put by Hearing Officer Michael Kirov in L.T. Overseas Limited v Chemico Pty Ltd [2008] ATMO 44 at [18]:

   The word “owner” is not defined in the Act, although there are numerous decisions where courts have considered its meaning. It is well established that in the absence of fraud the owner of a trade mark in Australia for particular goods is taken to be the first person to use it in the course of trade in Australia in relation to those goods[2] (or in relation to goods considered to be “the same kind of thing” or to apply to register it).[3]

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

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

3. The reference to a trade mark includes one that is at least substantially identical to it[4]. Obviously, the Opponent’s trade mark and the Trade Mark are substantially the same.

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

4. The Opponent did not provide any evidence of use of CHAMELEON as a trade mark in Australia in connection with class 11 goods, other than to cite the registration details of 1411001 CHAMELEON.

5. Having accepted Cahill as evidence that the Applicant has used the Trade Mark in respect of the same kind of goods as the Opponent prior to the Opponent’s filing date, I am satisfied that the Applicant is the owner of the Trade Mark.

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

Decision

1. Section 55(1) of the Act provides:

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.

1. I have found that the Opponent has not established the grounds pressed pursuant to sections 44 and 58 of the Act.

2. I direct that the trade mark application may 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 until the appeal has been decided or discontinued.

Costs

1. Both parties sought an award of costs. As the successful party, the Applicant is entitled to its costs and I accordingly award costs against the Opponent in accordance with Schedule 8 of the Trade Marks Regulations 1995.

Jock McDonagh
Hearings Officer
Trade Marks Hearings
29 November 2016