C I Kasei Co Ltd v PGM Group Pty Ltd - [2002] ATMO 99

TRADE MARKS ACT 1995

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

Re:Opposition by C I Kasei Co Ltd to registration of trade mark application 806163(19) - HYDRA-TITE - filed in the name of PGM Group Pty Ltd.

Date of Decision:	31 October 2002
Delegate:	Hearing Officer Geoff Purvis-Smith
Representation:	Opponent - Mr Michael Kirov of Spruson & Ferguson Applicant - no appearance
Decision:	ss. 44 and 58 grounds successful ss.42 and 60 grounds dismissed Registration of trade mark refused pursuant to s.55 Applicant to pay opponent's costs

Background

On 7 September 1999, PGM Group Pty Ltd (PGM) applied for registration of the following trade mark:

The application covered the following goods in class 19: themorplastic (sic) waterproof membrane used in construction/engineering works.

The application was accepted for registration and advertised in the Australian Official Journal of Trade Marks on 3 August 2000.

On 30 November 2000, the opponent, C I Kasei Co Ltd (Kasei), lodged a notice of opposition to registration which set out seven grounds of opposition.

The matter eventually came before me as a delegate of the Registrar of Trade Marks for hearing on 1 August 2002. The matter was heard in Canberra. Mr Michael Kirov of Spruson & Ferguson appeared on behalf of the opponent. There was no appearance by the applicant.

Evidence

The following evidence was lodged by the parties during the course of proceedings:

Name	Date	Exhibits
Evidence in Support
James Henry GATELY	26.08.01	JHG1-JHG5
Evidence in Answer
Nick JOANNIDES	21.11.01	NJ1
Doug KNOX	23.11.01
Mike PYNT	18.12.01	MP1-MP6

By way of summary, Mr Gately states in his declaration that he is the Australian distributor for the opponent's HYDROTITE branded sealing materials. He also provides a history of the use of the brand name HYDROTITE in Australia, confidential sales figures for the years 1989 through 2000, and annexes a copy of the details of the opponent's Australian registration (number 385180) for the trade mark HYDROTITE for "sealing materials and seals, all made of rubber and all included in class 17". Trade mark 385180 has a priority date of 15 December 1982. Mr Gately also sets out the manner in which his company markets and promotes the opponent's goods in the Australian market. Finally, he sets out how the opponent's HYDROTITE goods are used as a waterproofing system for buildings and other constructions such as pits, pools, tanks, tunnels, basements, pavements and underground or water retaining structures.

Mr Joannides is a Director in a Consulting Structural and Forensic Engineers firm. He is aware of the products sold by both the applicant and the opponent, under their respective HYDA-TITE and HYDROTITE names. He states that the goods in question are not interchangeable, and that he is not aware of any confusion in the marketplace regarding the two products. Finally, he states that, due to the specialised nature of the products, he does not believe that likely users, including engineers as specifiers and users of the products, would be confused by the co-existence…

Grounds of appeal

[14] The appellant contends that the primary judge erred in finding that the respondent had discharged the onus of establishing the matters required under the relevant provision.

[15] It was submitted that his Honour failed to give adequate weight to the evidence of the second witness, and that the findings of fact were not reasonably open on the material before the Court.

[16] The respondent, for its part, submits that no error is disclosed, and that the conclusions reached were well within the range of outcomes available to the primary judge.

Consideration

[17] It is convenient to deal first with the question of construction, as the resolution of that issue informs the remaining grounds advanced by the appellant.

[18] For the reasons that follow, we are of the view that the appeal should be allowed in part and the matter remitted for further determination.

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Details

Case: [2002] ATMO 99
Decision Date: 31 October 2002

CaseChat Overview and Summary

C I Kasei Co Ltd (Kasei) opposed the registration of the trade mark HYDRA-TITE, filed by PGM Group Pty Ltd (PGM) for use on thermoplastic waterproof membranes in class 19. The opposition was heard by a delegate of the Registrar of Trade Marks. Kasei advanced seven grounds of opposition, but ultimately relied on sections 42(b), 44, 55, and 60 of the *Trade Marks Act 1995* (Cth), having abandoned the first ground and finding the s.58 ground to be made out. PGM did not appear at the hearing.

The delegate was required to determine whether the use of the HYDRA-TITE mark would be contrary to law under s.42(b), whether it was substantially identical or deceptively similar to Kasei's registered mark HYDROTITE (registration number 385180, priority date 15 December 1982) for similar goods under s.44, whether the applicant was the owner of the mark under s.58, and whether Kasei had acquired a reputation in Australia such that the applicant's mark would be likely to deceive or cause confusion under s.60.

The delegate dismissed the opposition under s.42(b), finding that the evidence did not establish on the balance of probabilities that use of the mark would be contrary to s.52 of the *Trade Practices Act 1974* (Cth), noting the specialised nature of the products and the lack of evidence of actual confusion. However, the delegate upheld the opposition under s.44, finding the marks HYDRA-TITE and HYDROTITE to be substantially identical and the goods to be similar. The delegate also upheld the opposition under s.58, concluding that Kasei, as the first user of the substantially identical mark HYDROTITE in Australia for similar goods, was the true owner. The delegate did not find the s.60 ground to be made out, as the evidence did not satisfy the delegate that Kasei had achieved a reputation to the extent of a real risk of deception or confusion. Consequently, the delegate refused the registration of the trade mark application and ordered PGM to pay Kasei's costs.

Orders