Bulk Fuel Australia Pty Ltd v Soper Industries Pty Ltd

[2017] ATMO 65

TRADE MARKS ACT 1995

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

Re:Opposition by Bulk Fuel Australia Pty Ltd to registration of trade mark application 1692550(39) - FUELS AUSTRALIA MORE POWER TO YOU (and Device) - filed in the name of Soper Industries Pty Ltd

Delegate:	Nicholas Smith Decision on the Written Record
Decision:	2017 ATMO 65 Trade Marks Act 1995 (Cth) - Section 52 opposition: ss 44 and, 60 considered – neither established – trade mark to proceed to registration

Background

1.       This is an opposition brought by Bulk Fuel Australia Pty Ltd (‘Opponent’) pursuant to s 52 of the Trade Marks Act 1995 (Cth) (‘Act’) to the registration of the trade mark which is the subject of the application detailed below in the name of Soper Industries Pty Ltd (‘Applicant’): 

Application Number:	1692550
Filing Date:	8 May 2015
Services:	Class 39: Delivery of fuel; Fuel distribution services (‘Applicant’s Services’)
Trade Mark:	(‘Trade Mark’)

1. Following the advertisement on 1 October 2015 in the Australian Official Journal of Trade Marks of the application’s acceptance for possible registration, the Opponent filed a Notice of Intention to Oppose on 19 October 2015.  The Opponent then filed a Statement of Grounds and Particulars (‘SGP’) on 18 November 2015. The SGP was assessed by this office as adequate. The Applicant filed a Notice of Intention to Defend on 23 December 2015. The SGP raised grounds of opposition under ss 44 and 60 of the Act.

   Evidence

2. The Opponent filed Evidence in Support of its opposition (‘EIS’) on 14 April 2016.  This evidence consists of a declaration made on 12 April 2016 by Gavin Pendergast, Managing Director of the Opponent, with Attachments GP01 to GP12 (‘Pendergast Declaration’), a declaration made on 29 March 2016 by Iqbal Marikar, Chief Financial Officer of the Opponent, with Attachments IM01 to IM02 (‘Marikar Declaration’), a declaration made on 13 April 2016 by Ashley Mitchell, Director of the Opponent, with attachments AM01 to AM14 (‘Mitchell Declaration’) and a declaration made on 13 April 2016 by Mark Plunkett, Director of the Opponent (‘Plunkett Declaration’). 

3. The Applicant filed Evidence in Answer to the opposition (‘EIA’) on 14 July 2016.  This evidence consists of a declaration made on 14 July 2016 by Daniel Soper, Director of the Applicant, with Exhibits DS 01 to DS 10 (‘Soper Declaration’) and a declaration made on 14 July 2016 by George Svigos, Managing Director of Hydrocarbon Industries Pty Ltd trading as Fuels Australia, the exclusive licensee of the Trade Mark, with Exhibits GS01 to GS03 (‘Svigos Declaration’).  The Opponent chose not to file Evidence in Reply.

4. Once the time allowed for filing evidence had ended the parties were given an opportunity to request a hearing or to file written submissions.  Neither party chose to avail themselves of these opportunities.  By letter issuing from IP Australia on 11 January 2017 the parties were notified that as neither party had requested a hearing the matter would be given to a delegate of the Registrar for a decision based on the written record.  The letter indicated that the parties had one month from the date of the letter to file any written submissions they wished to reply upon.  Neither party chose to file submissions in this matter.

5. I am a delegate of the Registrar of Trade Marks and I am to decide the opposition as required by s 55 of the Act which provides that, unless the proceedings are discontinued, dismissed, or have lapsed under s 54A the Registrar must, at the end, decide on the basis of the written record, comprised of the materials mentioned in the preceding paragraphs:

   (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.

   The Opponent

6. The Opponent is a bulk fuel distribution company which formally commenced operations in mid-2009. 

7. The Opponent is the owner the trade mark detailed below (‘Opponent’s Trade Mark’).  The goods and services for which the Opponent’s Trade Mark is registered is referred to as the ‘Opponent’s Goods and Services’. 

Number	Trade Mark	Priority Date	Goods and Services
1546889	20 March 2013	Class 4: Diesel fuel Class 7: Computer controlled fuel dispensing pumps; Fuel dispensing pumps Class 9: Fuel cells Class 39: Fuel distribution services

1. The Pendergast Declaration contains the following claims/statements:

   ·     The Opponent is an Australian company operating nationally in distributing bulk fuel and providing onsite refuelling services to customers.  Bulk Fuel Australia provides bulk fuel directly from fuel depots and terminals to sites which require fuel to use machinery and equipment.  This is distinct from traditional fuel distribution where fuel is supplied to retail petrol stations.  It operates a fleet of trucks branded with the Opponent’s Trade Mark for this purpose.

   ·     The Deponent considers that from its observations the Applicant is a competitor of the Opponent and offers similar services.

   ·     The bulk fuel distribution industry is a specialised and unique industry across Australia.  The Opponent is one of only two independent national suppliers of bulk fuel and onsite refuelling services, the other being Refuelling Solution.  The Opponent is the second largest bulk fuel supplier in Australia.  At the relevant date the Opponent was operating from Queensland, NSW and Victoria and had developed significant goodwill (this is also noted in the Marikar Declaration).

   ·     The Opponent has used the Opponent’s Trade Mark since 2010 (and the logo element since 2009) on staff uniforms, website and social media, stationary, fuel tanks and on all of the Opponent’s delivery trucks and has spent a significant sum on marketing and branding.

   ·     When one of the Opponent’s trucks bearing the Opponent’s Trade Mark visits a site, it may be exposed to multiple potential customers who require a bulk fuel supplier.

   ·     Since October 2015 the Opponent has observed actual confusion between the Opponent and the Applicant from current and potential customers, with customers seeking confirmation as to whether Bulk Fuel Australia and Fuels Australia are the same business.

10.  The Mitchell Declaration contains the following claims/statements:

·     The Opponent’s Trade Mark was created in 2009 by Lloyd Grey Design.  When creating the Mark the colour scheme orange was used to distinguish the Opponent from what it viewed as its competitors.

·     Since 2009 the Opponent has spent substantial sums marketing the Opponent’s Trade Mark and creating a reputation in the Mark, including the creation of promotional material, event sponsorship, advertising, digital marketing and branding of fuel trucks.  The Opponent currently has 28 fuel trucks in use on roads across Australia.

11.  The Plunkett Declaration contains the following claims/statements:

·     Since October 2015 the Deponent has been approached by multiple drivers in Queensland and Victoria who have reported onsite interactions with customers about whether the Applicant and Opponent are related businesses.  It is the Deponent’s understanding and belief that this is as a result of the similarity between ‘Bulk Fuels Australia’ and ‘Fuels Australia’.

The Applicant

1. The Applicant the licensor of the Trade Mark to Hydrocarbon Industries Pty Ltd trading as Fuels Australia (‘Hydrocarbon’). 

2. The Soper Declaration contains the following claims/statements:

   ·     The Opponent was incorporated in August 2013 and by early 2014 the Deponent wanted to steer the Opponent towards bulk fuel distribution.  The Deponent considered Fuels Australia to be a great business name as it was descriptive of the commodity to be supplied and the country of origin.  In 2014-2015 the Opponent incorporated Hydrocarbon and transferred the Fuels Australia brand and bulk fuel distribution business to Hydrocarbon.

   ·     In January 2015 the Deponent engaged a marketing company to develop a brand logo and following legal advice the Applicant applied for a trade mark, which consists of the logo, the descriptive words Fuels Australia and the tag line ‘more power to you’.

   ·     The Opponent’s name may be Bulk Fuels Australia but it is apparent from the EIS that its brand is BFA and not Bulk Fuels Australia.  This is reflected in its trade mark.  The Deponent rejects any allegations of confusion arising between the Opponent and Applicant.

3. The Svigos Declaration contains the following claims/statements:

   ·     The Deponent has worked in the fuelling industry for the last 7 years and in that time was only aware of the Opponent being referred to as ‘BFA’, and not Bulk Fuels Australia.  The Deponent has contacted a number of other people in the industry and none of them are aware of any confusion between the Applicant and its Trade Mark and the Opponent and the Opponent’s Trade Mark.  No confusion has been reported to the Deponent. 

   Grounds of Opposition, Onus and Standard of Proof

4. As indicated above in the SGP the Opponent nominated grounds of opposition under ss 44 and 60. To successfully oppose the application the Opponent needs to establish at least one of those grounds.

5. The onus of proof in an opposition rests upon the Opponent.[1]  The relevant standard of proof is the ordinary civil standard based on the balance of probabilities.[2]  The date at which the rights of the parties are to be determined is 8 May 2015, being the filing date of the application in Australia (‘relevant date’) (except in circumstances, not present here in which a different priority date is provided for in the Act).[3]

   [1] Food Channel Network Pty Ltd v Television Food Network GP [2010] FCAFC 58, [32].

   [2] Following Pfizer Products Inc v Karam (2006) 70 IPR 599, [6]-[26], and Telstra Corporation Limited v Phone Directories Company Pty Ltd [2015] FCAFC 156, [133].

   [3] Southern Cross Refrigerating Co v Toowoomba Foundry Pty Ltd (1954) 91 CLR 592, 595, see also s 29(1) Trade Marks Act 1995 (Cth).

   Discussion

   Section 44

6. The relevant provisions of the Act with respect to the ground pursuant to s 44 are reproduced below:

   Section 44 - Identical etc. trade marks

   (1)…

   (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 similar see section 10.
   Note 2: For similar services see subsection 14(2).
   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.

   (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 limitations see 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 title see section 6.
   Note 3: For priority date see section 12.

   Section 10 - Definition of deceptively similar

   For the purposes of this Act, a trade mark is taken to be deceptively similar to another trade mark if it so nearly resembles that other trade mark that it is likely to deceive or cause confusion.

7. To successfully oppose the application pursuant to s 44 of the Act the Opponent must establish the requirements of s 44(1), i.e. that at least one of the trade marks upon which it relies:

   ·     has a priority date which is earlier than that of the Trade Mark (‘the first requirement’);

   ·     is substantially identical with or deceptively similar to the Trade Mark (‘the second requirement’); and

   ·     is in respect of similar goods, and/or services which are closely related to, the Applicant’s Services (‘the third requirement’).

8. The Opponent has particularised the ground of opposition in the SGP by reference to the Opponent’s Trade Mark.  The Opponent’s Trade Mark has a priority date that is earlier than the priority date of the Trade Mark.  The first requirement is satisfied. 

9. The Opponent’s Trade Mark is in respect of similar services to the Applicant’s Services as the Opponent’s Trade Mark is registered for fuel distribution services in Class 39.  The third requirement is also satisfied.

   Substantially identical or deceptively similar?

10. I will now address the first element of the second requirement, namely whether the Trade Mark is substantially identical to any of the Opponent’s Trade Marks.  When considering ‘substantial identity’ in Shell Co of Australia Ltd v Esso Standard Oil (Australia) Ltd Windeyer J said:

    In considering whether marks are substantially identical they should, I think, be compared side by side, their similarities and differences noted and the importance of these assessed having regard to the essential features of the registered mark and the total impression of resemblance or dissimilarity that emerges from the comparison.[4]

    [4] (1963) 109 CLR 407, [12].

11. The Trade Mark and the Opponent’s Trade Mark are depicted on a side by side basis below.

12. On a side by side comparison there are clear differences between the respective trade marks.  The Trade Mark consists of an multi-shaded circle element[5] that creates the effect of a white fuel drop with the tip facing up, next to the words ‘fuels australia’ and the tag line ‘more power to you’.  The Opponent’s Trade Mark has a differently shaped logo, consisting of four misshapen rings that could create the effect of a fuel drop leaning to the right and contain the additional elements ‘BFA’, ‘Bulk Fuel Australia’ and ‘Fuelling your efficiency’.  These differences are significant and are sufficient for me to conclude that the respective trade marks are not substantially identical.  I move on then to consider whether the Trade Mark and the Opponent’s Trade Mark are deceptively similar.

    [5] While both trade marks contain are depicted as being in the orange colour, s 70 of the Act provides that ‘To the extent that a trade mark is registered without limitations as to colour, it is taken to be registered for all colours’,

13. The principal authority for guidance in determining whether trade marks are deceptively similar also comes from the judgment of Windeyer J in Shell Co (Aust) Ltd v Esso Standard Oil (Aust) Ltd:

    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 [trade mark].[6]

    [6] Ibid [13].

14. Jacobson J in Millennium & Copthorne International Limited v Kingsgate Hotel Group Pty Ltd summarised the principles of deceptive similarity with reference to the authorities as follows:

    Without seeking to reformulate the various statements of principle stated in the Full Court authorities, it is sufficient for present purposes to identify the critical elements which seem to me to inform the issue of deceptive similarity in the present case. There are nine elements.

    First, the judgment of likelihood of deception is a practical one. It requires an assessment of the effect of the challenged mark on the minds of potential customers: Woolworths[7] at [49]; Australian Woollen Mills[8] at 658.

    Second, the question of deceptive similarity is not to be decided by a side-by-side comparison. It is to be determined by a comparison of the impression based on recollection of the opponent’s mark that persons of ordinary intelligence and memory would have, and the impression that those persons would get from the opposed trade mark: Crazy Ron’s[9] at [73]; Shell Company of Australia Ltd v Esso Standard Oil (Australia) Ltd [1963] HCA 66; (1963) 109 CLR 407 at 415 per Windeyer J.

    Third, allowance must be made for imperfect recollection: Crazy Ron’s at [74].

    Fourth, the effect of the spoken description must be considered: Woolworths at [49]; Crazy Ron’s at [75]; Australian Woollen Mills at 658.

    Fifth, it is necessary to show a real tangible danger of deception or confusion: Woolworths at [43] and [50]; Crazy Ron’s at [76]; Southern Cross Refrigerating[10] at 594 – 595.

    Sixth, 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 the two products come from the same source: Woolworths at [50]; Southern Cross Refrigerating Co at 595. This test sets a lower threshold than that which is required to establish that conduct is likely to mislead or deceive under s 18 of Schedule 2 of the Competition and Consumer Act 2010 (Cth): see McWilliam's Wines Pty Ltd v McDonald's System of Australia Pty Ltd [1980] FCA 159; (1980) 33 ALR 394 at 398 per Smithers J.

    Seventh, all surrounding circumstances must be taken into consideration. The circumstances include those in which the marks will be used, and in which the goods or services will be bought and sold, as well as the character of the probable acquirers of the goods and services: Woolworths at [50]; Crazy Ron’s at [86] – [89]; Southern Cross Refrigerating at 595.

    Eighth, the question of whether there is a likelihood of confusion is not to be answered by reference to the manner in which a party has used the mark, but by reference to what an applicant can do. That is to say, the use to which it can properly put the mark if registration is obtained: Woolworths at [50]; Berlei Hestia Industries Ltd v The Bali Company Inc [1973] HCA 43; (1973) 129 CLR 353 at 362 per Mason J.

    Ninth, if a registered trade mark includes words which can be regarded as an ‘essential feature’ of the mark, another mark that incorporates those words may cause a tangible danger of deception or confusion by reason of consumers retaining an imperfect recollection of those words: Crazy Ron’s at [79]. However, care must be taken to not too readily characterise words in a composite trade mark as an ‘essential feature’ because to do so may effectively convert a composite mark into something different: Crazy Ron’s at [100].[11]

    [7] Registrar of Trade Marks v Woolworths Ltd [1999] FCAFC 1020.

    [8] Australian Woollen Mills Ltd v FS Walton & Co Ltd [1937] HCA 51; (1937) 58 CLR 641.

    [9] Crazy Ron’s Communications Pty Ltd v Mobileworld Pty Ltd [2004] FCAFC 196; (2004) 209 ALR 1.

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

    [11] [2012] FCA 1022, [38]-[46].

1. While both the Opponent’s Trade Marks contain the elements ‘fuel(s) australia’, I find that there are significant visual and aural differences between them when considered as a whole. Although the logo elements have a conceptual similarity in that they both could bring to mind a fuel drop, visually the elements are quite different, with the fuel drop in the Trade Mark being contained inside a single multi-shaded circle while the fuel drop element in the Opponent’s Trade Mark created through 4 misshapen rings and at a different angle.  Furthermore the presence of the large letters ‘BFA’ in the Opponent’s Trade Mark creates a significant visual and aural difference between the two marks.  Given the descriptive nature of the words ‘fuel(s) australia’ it is likely that a consumer viewing each of the marks would be drawn towards the distinctive elements of each of the marks, being the logo and tag line in the Trade Mark and the logo, tag line and prominently placed letters BFA in the Opponent’s Trade Mark.  The difference in the logo elements, the different tag lines, and the prominent BFA element in the Opponent’s Trade Mark creates a significantly different overall impression between the Trade Mark and the Opponent’s Trade Mark.  Even allowing for imperfect recollection, it is in my view unlikely that the use of the Trade Mark will deceive or cause confusion because of any similarity it has to the Opponent’s Trade Mark.

2. The trade marks are not deceptively similar and I find that the Opponent has failed to establish the ground of opposition under s 44.

   Section 60

3. Section 60 of the Act is reproduced below:

   Section 60 - 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.

4. To establish a ground of opposition under s 60 an opponent must demonstrate that as at the relevant date there was another trade mark which had acquired a reputation in Australia amongst a significant or substantial number of persons in the relevant market such that use of the Trade Mark would be likely to deceive or cause confusion.

5. In McCormick & Co Inc v McCormick, Kenny J considered what is intended by the word ‘reputation’ as used in s 60. Her Honour had consulted the Macquarie Dictionary and on the basis of the definition provided concluded that it was ‘the recognition of the [trade mark] by the public generally’.[12]  Her Honour quoted with approval the following words of Lockhart J in Re ConAgra Inc v McCain Foods (Aust) Pty Ltd:

   [R]eputation within the jurisdiction may be proved by a variety of means including advertisements on television or radio, or in magazines and newspapers within the forum. It may be established by showing constant travel of people between other countries and the forum and that people within the forum, (whether residents there or persons simply visiting there from other countries) are exposed to the goods of the overseas owner …[13]

   [12] [2000] FCA 1335, [81].

   [13] (1992) 33 FCR 302, 343.

6. On the subject of reputation Kenny J also referred to the Hugo Boss decision, where the Registrar’s delegate observed:

   [I]t is true that the assessment of the reputation of a trade mark goes far beyond mere examination of sales or turnover of goods sold under that trade mark and contemplation of the advertising and promotional figures.

   As regards a trade mark, its reputation derives both from the quantum of sales under that mark and also its esteem, or image, projected by that trade mark. The quantum of sales, advertising and promotion contributes to the ‘recognition’ component of the trade mark’s reputation. The credit, image and values projected by a trade mark attaches to the ‘esteem’ component of the reputation as do the public events and other trader’s marks with which [the] owner of the trade marks in question chooses to associate the trade marks via sponsorships, cross-promotions, ‘contra deals’ and so forth.

   It follows that a trade mark used in relation to goods with comparatively low sales may have a high and strong reputation by virtue of the high credit or esteem in which it is held, or, conversely, that a trade mark which has very high sales may have a strong reputation notwithstanding the lack of esteem that attaches to it. The particular popular images, or sets of values, that attach to the trade mark are also, therefore, important parts of the reputation of the trade mark and may be as strong an associative force in the minds of the public as the association of the trade marks with the goods or services themselves.[14]

   [14] Hugo Boss AG v Jackson International Trading Co Kurt D Bruhl Gesellschaft MbH & Co KG (1999) 47 IPR 423, 426.

7. As stated above, in assessing reputation under s 60, what constitutes a significant or substantial number of persons in the relevant market must be considered. The case of Le Cordon Bleu BV v Cordon Bleu International Ltee[15] was decided under s 28(a) of the (now repealed) Trade Marks Act 1955.  That provision did not refer to ‘reputation’ at all, only that use of the impugned trade mark would be ‘likely to deceive or cause confusion’.  Nevertheless the words of Heerey J provide some guidance:

   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 … We are here concerned with foodstuffs sold in supermarkets, delicatessens, milk bars and other retail outlets. The relevant market is virtually the entire Australian population from early teenage years onwards.[16]

   [15] (2000) 50 IPR 1.

   [16] Ibid 20. Heerey J’s decision was overturned on appeal to the Full Federal Court, although not on the point quoted. Indeed the court specifically noted that his approach contained no error; see Renaud Cointreau v Cordon Bleu International Ltee [2001] FCA 1170, [75].

8. Furthermore, in practice, once the requisite reputation is demonstrated, the likelihood of deception or confusion increases the more closely the trade marks resemble each other.[17]

   [17] Mark Davison, Shanahan’s Australian Law of Trade Marks and Passing Off Online Westlaw AU, [50.2415] <

9. The Opponent has particularised the ground of opposition in the SGP by reference to a reputation acquired in the Opponent’s Trade Mark.  While there are general statements in the SGP that ‘the Opponent has acquired a reputation in Australia for its goods and services’ such statements are qualified by later statements such as ‘The Opponent has an acquired reputation in the Industry which has been based and fostered on the association of the Opponent with the Opponent’s Trade Mark’. 

10. It is not suggested in SGP that the Opponent has acquired a reputation in any unregistered mark, such as BULK FUEL AUSTRALIA, and given that the evidence of use of the Opponent, in particular its marketing material and its delivery trucks, show the use of the Opponent’s Trade Mark, in the interest of completeness, I find that the Opponent has not shown that BULK FUEL AUSTRALIA or any similar word mark has acquired a reputation in Australia such that, given the limited or negligible reputation of BULK FUEL AUSTRALIA and the dissimilarity between BULK FUEL AUSTRALIA and the Trade Mark, the use of the Trade Mark would be likely to deceive or cause confusion under s 60.

11. The EIS contains sufficient evidence to support a view that the Opponent’s Trade Mark had acquired a reputation in Australia sufficient to enliven s 60 at the relevant date. At the relevant date the Opponent had been using the Opponent’s Trade Mark for 5 years in Australia. I accept the Opponent’s evidence that the bulk fuel distribution market in Australia is a small and specialist market and that the Opponent is a significant presence in the market. I accept the Opponent’s evidence that the presence of the Opponent’s Trade Mark on its trucks supplying various sites is a significant marketing tool such that the Opponent’s Trade Mark has been exposed to not only its customers but a significant proportion of the potential customer base of specialist bulk fuel consumers. Although the Opponent’s has a small number of employees and a limited marketing budget, the limited nature of the market, the Opponent’s significant presence in the market and the consistent use of the Opponent’s Trade Mark for 5 years prior to the relevant date satisfies me that at the relevant date the Opponent’s Trade Mark had a reputation in Australia in relation to fuel distribution services.

12. It is not sufficient for the Opponent merely to establish that one (or more) of its nominated trade marks has a significant reputation; the Registrar must also be satisfied that because of that reputation the use of the Trade Mark would be likely to deceive or cause confusion. Discussions and decisions on the subjects of deception and confusion are legion and a good number provide relevant comments in relation to a consideration of deception and confusion for the purposes of s 60. In a case concerning infringement and passing off, Australian Woollen Mills Limited v F S Walton and Company Limited, Dixon and McTiernan JJ said the following:

    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 usual manner in which ordinary people behave must be the test of what confusion or deception may be expected.  Potential buyers of goods are not to be credited with any high perception or habitual caution.  On the other hand, exceptional carelessness or stupidity may be disregarded.  The course of business and the way in which the particular class of goods are sold gives, it may be said, the setting, and the habits and observations of men considered in the mass affords the standard.[18]

    [18] (1937) 58 CLR 641, 658.

13. The concepts of ‘deceive’ and ‘confuse’ were explained in the New Zealand case of Pioneer Hi-Bred Corn Co v Hyline Chicks Pty Ltd, where Richardson J said:

    ‘Deceived’ implies the creation of an incorrect belief or mental impression and ‘causing confusion’ may go no further than perplexing or mixing up the minds of the purchasing public. Where the deception or confusion alleged is as to the source of the goods, deceived is equivalent to being misled into thinking that the goods bearing the applicant's mark come from some other source and confused to being caused to wonder whether that might not be the case. ^[19]

    [19] [1979] RPC 410, 423 (citation omitted).

14. It is well established that the kind of confusion contemplated by s 60 need not lead to actual purchase of the goods or services covered by the impugned trade mark. As Heerey J put it in Nettlefold Advertising Pty Ltd v Nettlefold Signs Pty Ltd:

    A probability of confusion, if it is real, is sufficient even though the confusion may be unlikely to persist up to the point of, and be a factor in, inducing actual sales. There may be confusion or deception in the minds of persons to whom the mark is addressed, even if actual purchasers will not ultimately be deceived.[20]

    [20] (1997) 38 IPR 495, 501(citations omitted). His Honour’s remarks were made in the context of s 28 of the Trade Marks Act 1955, but are no less applicable to s 60 of the current Act. The decision itself was overturned on appeal to the Full Federal Court (Wilcox, Tamberlin and Merkel JJ) (1998) 45 IPR 393, but not on this point.

15. In Registrar of Trade Marks v Woolworths Ltd French J highlighted the following further matters concerning confusion:

    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.

    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.[21]

    [21] (1999) 45 IPR 411, 428. These considerations by French J are based on principles set out by Kitto J in Southern Cross Refrigerating Co v Toowoomba Foundry Pty Ltd (1954) 91 CLR 592, 594-5.

16. I am not satisfied that because of the reputation of the Opponent’s Trade Mark, the use of the Trade Mark for the Applicant’s Services would be likely to deceive or cause confusion. While the operation of s 60 does allow a finding that the use of the Trade Mark would be likely to deceive or cause confusion in circumstances where the trade marks under comparison are not identical or deceptively similar[22], in the present case when considering the extent of the reputation of the Opponent’s Trade Mark and the dissimilarity of it to the Trade Mark, there is no real likelihood of confusion or deception. 

    [22] Rogers Seller & Myhill Pty Ltd v Reece Pty Ltd [2010] ATMO 5, [40].

17. While both the Trade Mark and the Opponent’s Trade Mark contain a graphical element that could be seen as a fuel drop, I find that there are significant differences between the two elements as explained in paragraphs 23 and 26 above in connection with the s 44 ground of opposition. The only remaining similarity between the Trade Mark and the Opponent’s Trade Mark are the shared use of the words ‘fuel(s) australia’ which are descriptive of the services supplied (i.e. bulk fuel distribution) under the marks. Otherwise the marks are entirely different, consisting of different tag-lines, different font, and the significant additional element ‘BFA’ in the Opponent’s Trade Mark. By reason of these differences there is a significant visual, aural and conceptual dissimilarity between the relevant marks. The Opponent has failed to satisfy me that the reputation of the Opponent’s Trade Mark was such that the Applicant’s use of the Trade Mark on the Applicant’s Services would be likely to deceive or cause confusion.

18. I note the Opponent’s evidence alleging the existence of consumer confusion between the Applicant and the Respondent, however it appears from the evidence that such confusion arises not from the use of the respective trade marks, but from the similarity in the names of the Opponent, being ‘Bulk Fuel Australia Pty Ltd’ and the trading name of the licensee of the Trade Mark, being ‘Fuels Australia’.  As the Applicant is not seeking to register ‘Fuels Australia’ as a trade mark and the Opponent has not established any reputation in BULK FUEL AUSTRALIA, such evidence is of little relevance to the present proceeding.  Were the parties to commence a dispute relating to the similarity in the names the considerations present in Hornsby Building Information Centre Pty Ltd v Sydney Building Information Centre Ltd[23] may apply.

    [23] (1978) 140 CLR 216

19. I find that the Opponent has failed to establish the ground of opposition pursuant to s 60 of the Act.

    Decision

    45.     The Opponent has failed to establish of the grounds of opposition it nominated in the SGP.  Trade Mark application no. 1692550 may proceed to registration not less than 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 discontinued.  Otherwise the disposition of the application should be in accordance with the Court’s order or direction.

    Nicholas Smith
    Hearing Officer
    Trade Mark and Designs Hearings
    4 July 2017