Capital Safety Group EMEA v Classic Supplies Pty Ltd

[2019] ATMO 10

TRADEMARKSACT 1995

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

Re:Opposition by Capital Safety Group EMEA and 3M Company to registration of trade mark application 1738733 (9, 25, 26) – Protectaware – in the name of Classic Supplies Pty Ltd

DELEGATE:  Nicholas Smith

REPRESENTATION:                 Opponent: Davies Collison Cave

Applicant: Y Intellectual Property

DECISION:  2019 ATMO 10

Trade Marks Act 1995 (Cth) - Section 52 opposition: ss 42(b), 44, 58, 59, 60 and 62A considered – none established – trade

mark to proceed to registration   

Background

1. This decision concerns an opposition brought by Capital Safety Group EMEA and 3M Company (‘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 Classic Supplies Pty Ltd (‘Applicant’):

   Application Number:         1738733

Filing Date:  3 December 2015

Goods:Class 9: Protective clothing in  this class;  gloves for protection against injury, including protective industrial

gloves, protective disposable gloves of nitrile, rubber and vinyl, cotton gloves, protective gauntlets; reflective or high visibility clothing in this class including shirts, jackets, vests, pants, raincoats, hats; disposable clothing in this class for safety purposes (accident or injury prevention) including masks; eye protection in this class, including glasses, spectacles, goggles, helmets; ear protection in this class including earplugs, earmuffs; respiratory masks and helmets in this class; protective footwear of in this class, including boots, shoes, water impervious footwear; signs in this class, including safety signs; traffic control devices, traffic lamps, traffic

cones and bollards; safety barriers in this class

Class 25: Clothing, including gloves, jackets, pants, shirts, aprons; headgear, including hats; footwear, including boots, shoes, water impervious footwear; disposable clothing, including sleeve covers, aprons, shoe covers, lab coats, coveralls, ponchos

Class 26: Disposable clothing being hair nets and beard covers

(‘Applicant’s Goods’)

Trade Mark:  Protectaware  (‘Trade Mark’)

1. Following the advertisement on 13 April 2017 in the Australian Official Journal of Trade Marks of the Trade Mark’s acceptance for possible registration, the Opponent filed a Notice of Intention to Oppose on 13 June 2017. The Opponent then filed a Statement of Grounds and Particulars on 13 July 2017 (‘SGP’). The SGP raised grounds of opposition under ss 42(b), 44, 58, 59, 60 and 62A of the Act. The Applicant filed a Notice of Intention to Defend on 25 August 2017.

Evidence

1. The Opponent filed Evidence in Support of its opposition (‘EIS’) on 30 November 2017. This evidence consists of a declaration by Ted Ringsred, assistant secretary of 3M Company, made on 29 November 2017 with Exhibits TR-1 to TR-11 (‘Ringsred 1’).

1. The Applicant filed Evidence in Answer (‘EIA’) on 2 March 2018. This evidence consists of a declaration made on 1 March 2018 by Ben Jones, a director of the Applicant, with Annexures 1 to 3 (‘Jones Declaration’).

1. The Opponent filed Evidence in Reply (‘EIR’) on 8 May 2018. This evidence consists of a declaration made on 7 May 2018 by Ted Ringsred with exhibits TR-1A to TR-6A (‘Ringsred 2’).

1. The Opponent states that the entirety of the information disclosed in Ringsred 1 and 2 is confidential. The Applicant claims, without specificity, that ‘certain information contained in [the EIA] are commercially sensitive’ I adopt the approach of the Delegate in Source Homeloans Pty Ltd v Coles Group Ltd, who when in receipt of a similar claim stated:

   The confidentiality claim obviously extends to the whole of the evidence led in support of the opposition. It is not clear to me how I could decide this matter without discussing the evidence the opponent has served and filed in support of its opposition. The onus in these

proceedings is on the opponent to establish its grounds of opposition, at least to my satisfaction. Seemingly barred from any discussion of the opponent’s statements and exhibits and the weight that I attach to them if I were to lend credence to the claim, my hands would appear to have been effectively tied. Prima facie, the easiest way out of the dilemma would be to accede to the opponent’s wishes and find that it has not established its opposition. Thus, if I were to take Mr Peter’s request (made within several declarations) at face value, that would be the end of these matters.

This position, obviously, is extreme, since the opponent has filed this evidence in support of its opposition and must expect the evidence to be discussed and weighed. It will be sufficient for me to say, in setting out my reasons for my decision, that there are arguably commercially sensitive matters in the evidence that I do not need to discuss in detail (and, if I do, my consolation lies in the fact that the opponent in not being specific in its request has brought the problem upon itself). None the less, the evidence of the parties as a whole satisfies me of various things, which I will set out under the appropriate headings below.1

1. Once the time allowed for filing evidence had ended the parties were given an opportunity to request a hearing or to file written submissions. By letter issuing from IP Australia on 25 July 2018 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 upon which they wished to rely. On 27 August 2018 the Applicant filed its submissions (‘Applicant’s Submissions’).  The Opponent did not file any submissions.

1. 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:

   (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.

   In doing so I take account of  the written record comprised of the materials mentioned in the preceding paragraphs.

1 Source Homeloans Pty Ltd v Coles Group Ltd [2008] ATMO 17, [5]-[6].

The Opponent

1. The 3M Company is an American multinational company founded on 13 June 1902. Since 3 August 2015, Capital Safety Group EMEA has been a wholly owned subsidiary of the 3M Company and the companies will be treated as a single opponent for the purposes of this decision.

1. The Opponent is the owner for the trade marks listed below (‘Opponent’s Trade Marks’). The goods for which the Opponent’s Trade Marks are registered are collectively referred to as the ‘Opponent’s Goods’.

Number	Trade Mark	Priority Date	Goods
616323	PROTECTOR (‘PROTECTOR Mark’)	16    Nov 1993	Class 9: Protective and industrial clothing, footwear and headgear including respirators, breathing apparatus, earmuffs, earplugs, and eyewear Class 25: Clothing, footwear and headgear
869565	PROTECTA (‘PROTECTA Mark’)	16    Mar 2001	Class 6: Non-electric metal cables; metal snap-hooks for use with harnesses; metal safety slides; metal safety straps; metal fall arresters for use with harnesses; metal adjusters for adjusting the tension and length of flexible straps and ropes; metal descending devices, namely parachute buckles for assisting in lowering individuals; metal saddles, not for sports equipment purposes; metal ropes Class 7: Winches; machine parts, namely mechanical retractors; elevators and elevator parts, namely elevator straps Class 9: Life nets for protection against accidents, safety nets, rescue nets and fall arrest restraint and safety equipment, namely full body harnesses, body belts, lanyards, rope grabs, lifelines, anchorage connectors, hooks, tripods, davit arms, load arresters, ladder safety systems, and horizontal lifeline systems

1. Ringsred 1 and 2 contain the following claims/statements:

·     The Opponent is, amongst other things, a manufacturer of fall protection, confined space and rescue equipment for various industries and has used the Opponent’s

PROTECTA Mark in respect of various safety equipment since 1989 in the United States.

·     The Opponent has used the PROTECTA Mark in Australia since 2002 for various safety products including safety harnesses, anchorage systems and protective clothing. These goods have been extensively advertised since 2002, both online and in relevant trade publications, with sales since 2012 being not inconsiderable.

·     In August 2017 the Opponent acquired certain assets previously owned by Scott Technologies including Australian Trade Mark registration 616323 for PROTECTOR.

·     The Opponent and its predecessors in title, such as Scott Technologies, have used the PROTECTOR Mark in Australia since 1938/9 for various safety products including safety helmets, goggles, ear muffs, ear plugs, respirators and site safety products. These goods have been extensively advertised through catalogues, the websites of the Opponent and predecessors in title and in relevant trade publications, with sales since 2010 being very significant.

·     The Applicant has been acquired by an entity called Restock Pty Ltd which supplies various protective equipment, such as gloves and hence trades in the same industry as the Opponent.

The Applicant

1. The Applicant is a company based in Australia incorporated in 2009.

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

·     The Trade Mark was conceived in late 2015 as the name of one of four divisions in the Restock business, with the Protectaware division being associated with the supply and manufacture of protective and hygiene wear products. The Trade Mark is currently applied to a range of protective and hygiene wear products including gloves, hair and beard nets, mainly adapted towards, and sold to businesses in, the food processing industry.

·     The Applicant is the asset-owning entity of the Restock business and licenses its use of its IP, including the Trade Mark to Restock Pty Ltd, a related entity. The Deponent is both the Director of the Applicant and managing director of Restock Pty Ltd.

·     The term ‘protect’ is a common term used by businesses to denote protective items, and the Trade Mark Register contains numerous marks that include the word ‘protect’.

·     The Deponent is not aware of any confusion that has arisen between the Trade Mark and Opponent’s Trade Marks.

Grounds of Opposition, Onus and Standard of Proof

1. As indicated above in the SGP the Opponent nominated grounds of opposition under ss 42(b), 44, 58, 59, 60 and 62A of the Act. To successfully oppose the application the Opponent needs to establish one of the nominated grounds.

2. The onus of proof in an opposition rests upon the Opponent.2 The relevant standard of proof is the ordinary civil standard based on the balance of probabilities.3 The date at which the rights of the parties are to be determined is 3 December 2015 (‘relevant date’), being the priority date of the application in Australia.4

Discussion

Section 44

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

   Section 44 - Identical 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)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 similar see section 10. Note 2: For similar goods see subsection 14(1).

(2) …

(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

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

3 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].

4 Southern Cross Refrigerating Co v Toowoomba Foundry Pty Ltd (1954) 91 CLR 592, 595, see also s 29(1)

Trade Marks Act 1995 (Cth).

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.

1. 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 Goods (‘the third requirement’).

1. In the event that each of these requirements are satisfied by the Opponent it may be possible for the Registrar to accept the application (or allow it to proceed to registration) if the Registrar is satisfied, pursuant to ss 44(3) and 44(4) of the Act, that there has been honest concurrent use of the Trade Mark, other circumstances exist which would make registration of the Trade Mark proper, or that the Applicant has continuously used the Trade Mark beginning before the priority date of the Opponent’s relied upon mark.

1. The Opponent has particularised the ground of opposition in the SGP by reference to the Opponent’s Trade Marks.   Both of the Opponent’s Trade Marks has a priority date that is

earlier than the priority date of the Trade Mark. I consider that at least some of the goods for which the PROTECTOR Mark is registered are similar to some of the Applicant’s Goods, as both marks are registered for clothing, footwear and headgear. The first and third requirements are satisfied in respect of the PROTECTOR Mark.

Similar goods

1. The position is more complex in respect of the Opponent’s PROTECTA Mark. Section 14 of the Act relevantly provides:

   14 Definition of similar goods and similar services

   (1)For the purposes of this Act, goods are similar to other goods:

   (a)    if they are the same as the other goods; or

   (b)    if they are of the same description as that of the other goods.

(2)For the purposes of this Act, services are similar to other services:

(a)    if they are the same as the other services; or

(b)    if they are of the same description as that of the other services.

1. McCormick & Company Inc v McCormick summarises the legal principles applicable when determining if the goods for which the PROTECTA Mark is registered are goods of the same description as the Applicant’s Goods as follows:

   Whether the relevant goods are of the same description is essentially a question of fact.

   The authorities establish that there are three principal factors to be considered in this regard.  They are:  (1) the nature of the goods, including their origin and characteristics;

   (2) the uses made of them, including their purpose; and (3) the trade channels through which the goods are bought and sold. As to the last-mentioned matter, it may be relevant to consider whether the goods being compared are produced by the same manufacturer or distributed through the same channels; whether they are sold in the same shops; whether they are sold to the same sort of customers; and whether those engaged in the manufacture and distribution of the goods are considered as belonging to the same trade: see In Re Jellinek’s Application (1946) 63 RPC 59 at 70-72; In Re John Crowther & Sons (Milnsbridge) Ltd’s Application (1948) 65 RPC 369 (“Crowther’s Application”) at 372; In Re Frank George Whiting’s Application (1952) 69 RPC 219 at 221; and Reckitt

   & Colman (Australia) Ltd v Boden (1945) 70 CLR 84 at 94. As the High Court stated in Southern Cross Refrigerating Co v Toowoomba Foundry Pty Ltd (1954) 91 CLR 592 (“Southern Cross”) at 606-607:

   The fact that examination of the nature of the applicant’s goods may, by itself, induce an observer to conclude that they are different in character from those of an opponent, and designed to serve different purposes, is by no means conclusive. Nor is the fact that the applicant’s goods are not specified by the regulations as being within the same class of goods: see In re The Australian Wine Importers Ltd (1889) 41 Ch D 278, at p 291 and Reckitt & Colman (Australia) Ltd v Boden (1945) 70 CLR 84, at p 90 per Latham CJ. There may be many matters to be considered apart from the inherent character of the goods in respect of which the

application is made and some indication of what matters are relevant to this inquiry was given by Romer J in In re Jellinek’s Application (1946) 63 RPC 59. Romer J thought it necessary to look beyond the nature of the goods in question and to compare not only their respective uses but also to examine the trade channels through which the commodities in question were bought and sold. Shortly after the decision in Jellinek’s Case … the Assistant-Comptroller elaborated on the observations of Romer J in the following manner:  ‘In arriving at a decision upon this issue the reported cases show that I have to take account of a number of factors, including in particular the nature and characteristics of the goods, their origin, their purpose, whether they are usually produced by one and the same manufacturer or distributed by the same wholesale houses, whether they are sold in the same shops over the same counters during the same seasons and to the same class or classes of customers, and whether by those engaged in their manufacture and distribution they are regarded as belonging to the same trade. In the case of Jellinek’s Application …, Romer J classified these various factors under three heads, viz., the nature of the goods, the uses thereof, and the trade channels through which they are bought and sold. No single consideration is conclusive in itself, and it has further been emphasized that the classifications contained in the schedules to the Trade Marks Rules are not a decisive criterion as to whether or not two sets of goods are “of the same description”’: In re an Application by John Crowther & Sons (Milnsbridge) Ltd (1948) 65 RPC 369, at p

372. Much the same considerations are evident in the observation of Dixon J (as he then was) in Reckitt & Colman (Australia) Ltd v Boden (1945) 70 CLR 84 when he said: ‘What forms the same description of goods must be discovered from a consideration of the course of trade or business. One factor is the use to which the two sets of goods are put. Another is whether they are commonly dealt with in the same course of trade or business. In the present case, the goods are quite different, their uses are widely separated and they are not commonly sold in the same kinds of shops or departments’ (1945) 70 CLR, at p 94.

On the one hand, goods are not necessarily of the same description simply because they are sold for human consumption and in common trade channels: see, for example, In Re J & J Colman Ltd’s Application (1929) 46 RPC 126, where mustard and semolina were held not to be goods of the same description. See also G Wood, Son & Co Ltd v McVitty & Co Pty Ltd (1964) 34 AOJP 2601 and In Re Chan Li Chai Medical Factory (HK) Ltd’s Application (1990) 19 IPR 140 at 144. On the other hand, the expression “goods of the same description” is not construed restrictively and regard is paid to the commercial context in which the goods in question are bought and sold: see Rowntree plc v Rollbits Pty Ltd (1988) 10 IPR 539 at 546 and Dinning v New Balance Athletic Shoe Inc (1992) AIPC 38,719 at 38,725. 5

1. The Applicant’s Goods consist of protective clothing, protective footwear and certain related products, being goggles, helmets and signs. The goods for which the PROTECTA Mark is registered are safety equipment, such as ropes, cables, winches, machine parts, safety nets and ladder safety systems.

5 [2000] FCA 1335 [17].

1. While both the Applicant’s Goods and the goods for which the PROTECTA Mark are registered are used for the protection of workers, they are otherwise of a very different nature. The majority of the Applicant’s Goods are clothing used to protect workers, while the majority of the goods for which the PROTECTA Mark are registered are used to ensure a person’s safety in the event that they fall. It is unlikely that a manufacturer of clothing, even protective clothing, would also manufacture a cable or harness. The markets for the respective goods are very different, with the Applicant’s Goods having a fairly broad market among workers and employers in a variety of professions while the goods for which the PROTECTA Mark are registered are used in very specialised employment, and would be purchased almost exclusively by employers. I am not satisfied that the respective goods are commonly sold through similar trading channels, though I acknowledge that in certain cases a business could sell specialist protective equipment such as cables and winches alongside protective clothing. Ultimately I conclude that the respective goods are not similar and find that the Opponent has failed to establish the ground of opposition under s 44 of the Act for the PROTECTA Mark.

Substantially identical and/or deceptively similar

1. I will now consider whether the Trade Mark is substantially identical to the PROTECTOR Mark. 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.6

2. The Trade Mark and the Opponent’s Trade Mark are set out below: PROTECTAWARE              PROTECTOR

3. On a side by side comparison there is a clear difference between the respective trade marks, in that the Trade Mark includes the word ‘aware’ and the PROTECTOR Mark the suffix ‘or’. The differences between the respective trade marks are sufficient for me to conclude that the respective trade marks are not substantially identical. I move then to consider whether the Trade Mark and PROTECTOR Mark are deceptively similar.

6 (1963) 109 CLR 407, [12].

1. 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].7

1. 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: Woolworths8 at [49]; Australian Woollen Mills9 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’s10 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 Refrigerating11 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.

7 Ibid [13].

8 Registrar of Trade Marks v Woolworths Ltd [1999] FCAFC 1020.
9 Australian Woollen Mills Ltd v FS Walton & Co Ltd [1937] HCA 51; (1937) 58 CLR 641.

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

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

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].12

1. In the present case the element shared between both marks is the word ‘protect’. In the context of the goods for which the Trade Mark and the PROTECTOR Mark are registered/sought to be registered (being protective clothing and related products) the word ‘protect’ is to some extent descriptive and common to the trade.13 In such circumstances the presence of the common element ought to be discounted to some extent in considering whether the respective marks are deceptively similar.

1. Stephen J observed14 in Hornsby Building Information Centre Pty Ltd v Sydney Building Information Centre Ltd that:

There is a price to be paid for the advantages flowing from the possession of an eloquently descriptive trade name. Because it is descriptive it is equally applicable to any business of a like kind, its very descriptiveness ensures that it is not distinctive of any particular business and hence its application to other like businesses will not ordinarily mislead the public. In cases of passing off, where it is the wrongful appropriation of the reputation of another or that of his goods that is in question, a plaintiff which uses descriptive words in its trade name will find that quite small differences in a competitor’s trade name will render the latter immune from action (Office Cleaning Services Ltd. v. Westminster Window and General Cleaners Ltd. (1946) 63 RPC 39, at p 42, per Lord Simonds). As his Lordship said (1946) 63 RPC, at p 43, the possibility of blunders by members of the public will always be present when names consist of descriptive words - “So long as descriptive words are used by two traders as part of their respective trade names, it is possible that some members of the public will be confused whatever the differentiating words may be.” The risk of confusion must be accepted, to do otherwise is to give to one who appropriates to himself descriptive words an unfair monopoly in those words and might even deter others from pursuing the occupation which the words describe.15

12 [2012] FCA 1022, [38]-[46].

13 See Deckers Outdoor Corporation v B&B McDougal [2006] ATMO 5, [34].

14 Albeit in relation to trade practices.

15 140 CLR 216, 229.

1. In the present case, a finding of deceptive similarity would in effect infer that the Opponent has a monopoly on the use of the term ‘protect’ in respect of protective clothing. The Opponent does not have such a monopoly. Any confusion that might occur stems from the use of the descriptive term in the respective marks and not from a deceptive similarity of the parties’ trade marks within the meaning of the Act. Although the marks share the word ‘protect’ I find that, even allowing for imperfect recollection, it is unlikely that the use of the Trade Mark will deceive or cause confusion because of any similarity it has to the PROTECTOR Mark; such confusion will only arise as a result of the presence, in both marks, of the descriptive word.

1. I find that the Opponent has failed to establish the ground of opposition under s 44.

Section 60

1. 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.

1. 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.16

2. 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

16 The present paragraph and the following paragraphs summarizing the requirements under s 60 of the Act are paraphrased from the decision of the Registrar’s Delegate in Australian Boutique Markets Pty Ltd v Rachael Zelensky and Jeffrey Zelensky [2013] ATMO 97.

the public generally’.17   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 …18

1. 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.19

1. 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 Ltee20 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,

17 [2000] FCA 1335, [81].

18 (1992) 33 FCR 302, 343.

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

20 (2000) 50 IPR 1.

delicatessens, milk bars and other retail outlets. The relevant market is virtually the entire Australian population from early teenage years onwards.21

1. 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.22

1. The Opponent has particularised the ground of opposition in the SGP in the manner set out below:

   The Opponent Capital Safety EMEA (Capital Safety) is a subsidiary of 3M Company. 3M Company and its subsidiary Capital Safety have used the mark PROTECTA in relation to various safety equipment including fall arrest equipment since at least 1989 in the United States, and the mark is in use in Australia.

   3M Company has also entered into an agreement to acquire certain assets and entities currently owned by Scott Technologies Inc (Scott). The acquisition includes, among other things, AU registration 616323 PROTECTOR, which has been used in relation to various personal protective equipment (PPE) and has been registered since 1998.

   Due to 3M Company's and its predecessors' use of the PROTECTA mark, and the use of the PROTECTOR mark, these marks have a reputation in Australia. As such, any use of the Trade Mark by the Applicant for the goods of the Application would be likely to deceive or cause confusion.

1. I am satisfied on the evidence before me that the Opponent’s Trade Marks had, before the relevant date, acquired a reputation in Australia for specialist protective equipment sufficient for the requirements under s 60(a) of the Act, given the length of time the Opponent and its predecessors in title have operated in the market and its significant sales in what is a specialist market. I note that the reputation of the PROTECTA Mark is limited to essentially fall prevention systems, while the reputation of the PROTECTOR Mark is in goods used for head, eye and ear protection, which are part of the Applicant’s Goods.

1. It is not sufficient that the Opponent merely establishes that its trade marks have a 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:

21 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].

22 Qantas Airways Limited v Edwards [2016] FCA 729 at [142].

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.23

1. 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.24

1. In Pottle Productions Inc v Rute Ithalat Ve Ihracat Anonim Sirketi the delegate observed that:

The assessment of the likelihood of deception or confusion under section 60 is informed by the strength of the reputation of the Opponent’s trade mark(s), the inherent distinctiveness thereof, the degree of similarity between the trade marks under consideration and the nexus or connection between the goods and/or services of the parties. Each of these is a variable and it is possible that a trade mark’s reputation might be sufficiently strong and the degree of similarity to an opposed trade mark be so great (particularly where the trade marks are inherently distinctive) that confusion or deception will be a likelihood where very little, if any, nexus or connection exists between the goods and/or services under consideration.25

1. While it is not necessary to show that the marks are deceptively similar for the purposes of an opposition under s 60, as stated in Qantas Airways Limited v Edwards, ‘the degree of similarity between the allegedly conflicting marks will be a relevant consideration to be taken

   into account when considering the likelihood of confusion resulting from use of the opposed mark.’26

23 (1937) 58 CLR 641, 658.

24 (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.

25 [2012] ATMO 124 at [40].

26 [2016] FCA 729 at [142].

1. In the present case, to the extent that the marks are similar, it is due to the presence of the common element ‘protect’ which is descriptive in respect of the Applicant’s Goods and the goods in which the Opponent’s Trade Marks have a reputation. I refer to the statements made by Stephen J in Hornsby Building Information Centre Pty Limited v Sydney Building Information Centre Limited27 extracted at paragraph 30 above regarding the risk of confusion that must be accepted as a price to be paid for the advantages of a descriptive trade name. In the present case I am not satisfied that any confusion that could arise between the Trade Mark and the Opponent’s Trade Marks would arise because of the reputation of the Opponent’s

   Trade Marks, as opposed to the shared use of the descriptive term ‘protect’ in respect of protective clothing and equipment.

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

Section 42

1. Section 42 of the Act is reproduced below:

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 pressed this ground of opposition solely on the basis that the use of the Trade Mark would be contrary to law (s 42(b)). The onus is on the Opponent to establish that use of the Trade Mark by the Applicant would be, rather than could be, contrary to law on the balance of probabilities.28   The relevant time for assessing whether an application is contrary

   to law is at the relevant date but ‘looking forward to prospective conduct after registration’.29

1. The Opponent has particularised the ground of opposition in the SGP as follows:

Based the reputation of the PROTECTOR and PROTECTA marks as noted above, use of the Trade Mark in relation to the goods of the Application is likely to:

a)   mislead or deceive consumers into believing that the goods offered under or by reference to the applied for Trade Mark are those of 3M Company, Capital Safety and/or their affiliates, or

27 (1978) 140 CLR 216, 229.

28 Advantage Rent-a-Car Inc v Advantage Car Rental Pty Ltd [2001] FCA 683.

29 Time Warner Entertainment Co LP v Stepsam Investments Pty Ltd [2004] 59 IPR 343, 353.

otherwise associated or affiliated with 3M Company, in breach of Section 18 of the Australian Consumer Law 2010 (Cth);

b) represent to consumers that the Applicant and its goods are associated or affiliated with 3M Company, Capital Safety and/or their affiliates or that the Applicant has obtained 3M Company's or its affiliates' sponsorship or approval to use the applied for Trade Mark, when this is not the case, in breach of Section 29 of the Australian Consumer Law 2010 (Cth).

c)   mislead the general public and thereby, cause damage to 3M Company's, Capital Safety's and/or their affiliates' reputation and goodwill in the PROTECTA and PROTECTOR marks and amount to passing off at common law.

Therefore, use by the Applicant of the applied for Trade Mark in relation to the goods of the Application would be contrary to law.

1. As previously stated the Opponent has failed to establish a ground of opposition under s 60 of the Act. The test for misleading or deceptive conduct under s 18 of the Australian Consumer Law (‘ACL’) is a more stringent one than that for deception or confusion under s 60,30 and consequently I find that the Opponent has also failed to establish that the Applicant’s use of the Trade Mark would be contrary to s 18 of the ACL.

1. Paraphrasing the statement of the Registrar’s Delegate in A G Professional Hair Care Products Ltd v Geagroup Invest SRL31, where a trade mark does not run afoul of s 18 of the ACL, neither will it run afoul of s 29 of the ACL. In Pacific Publications Pty Ltd v IPC Media Pty Ltd, Beaumont J considered—in connection with the superseded Trade Practices Act 1974 (‘TPA’)—that ‘the Court’s conclusion on s 52 would necessarily carry with it a conclusion on s 53(c) and (d)’.32 Sections 52 and 53 of the TPA were, respectively, the equivalent provisions to ss 18 and 29 of the ACL. Hill J in Re Equity Access Pty Ltd v Westpac Banking Corporation also addressed the relationship between s 52 of the TPA and passing off. His Honour considered that:

   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.33

1. For these reasons I am not satisfied that use of the Trade Mark by the Applicant would be contrary to law. Therefore, the Opponent has failed to establish the ground of opposition under s 42(b).

30  See, e.g.: Ownit Homes Pty Ltd v Ownit Conveyancing Pty Ltd [2005] ATMO 47, [36]; Parkdale Custom Built Furniture Pty Ltd v Puxu Pty Ltd (1982) 149 CLR 191, 198.

31 [2014] ATMO 65, [50].

32 [2003] FCA 104, [107].

33 [1989] FCA 506, [40] (citations omitted).

Section 59

1. Section 59 of the Act is reproduced below:

59 - 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.

1. The relevant date for assessing the Applicant’s intention to use the Trade Mark is the filing date being 3 December 2015.34

1. The nature of the intention in s 59 was considered by Jacobsen J in Health World Ltd v Shin- Sun Australia Pty Ltd where he stated:

   In my view, the intention, or lack thereof, to which s 59 is directed, is a ‘real and definite intention’ of the applicant for registration, to use the mark publicly as a trade mark, although it is not necessary that the intention be immediate or within a limited time.35

1. There  is  a  presumption  that  where  an  application  has  been  filed  the  applicant,  has  the requisite intention.  However:

   There is authority for the proposition that where an applicant for registration has been put on notice that its intention to use the mark was in issue, and has not responded to the opponent’s evidence, a finding of lack of intention may be made.

   The principle which underlies these authorities seems to me to be that the evidentiary onus shifts to the applicant for registration where an opponent makes a prima facie case of lack of intention to use the mark.36

1. Jacobsen J also recognised the difficulty that an opponent has in establishing a ground under s 59, stating in the same case:

   The subjective nature of the intention, the presumption of intention flowing from the application for registration and the onus on an opponent usually make it difficult for an opposition or an application for rectification, to succeed on this ground.37

34 See the discussion of the authorities in Foxtel Management Pty Ltd v 111Pix.com Limited [2012] ATMO 29, [31]. The relevant authorities are Suyen Corporation v Americana International Limited [2010] FCA 638; (2010) 87 IPR 262 (‘Suyen’) and Food Channel Network Pty Ltd v Television Food Network GP [2010] FCAFC 58; (2010) 86 IPR 437. (‘Food Channel’).

35 [2008] 75 IPR 478, [160].

36 Ibid [162]-[163] (citations omitted).

37 Ibid [161] (citations omitted).

1. In view of the authorities discussed above, the onus of establishing the ground of opposition pursuant to s 59 remains with the Opponent until it has established a prima facie case that on the relevant date the Applicant lacked the requisite intention. If the Opponent establishes a prima facie case the onus then shifts to the Applicant for rebuttal.

1. The Opponent has particularised this ground of opposition in the SGP as follows:

   The Trade Mark appears to be in use in Australia by a company which is not the Applicant. The Applicant is not using or authorising the use of the mark, and did not intend to do so at the time the Application was made.

1. The Opponent has not provided sufficient evidence in support of this ground of opposition sufficient to shift the evidentiary onus, nor has it made any submissions on this ground. Furthermore, while noting the complexities of showing that use by the subsidiary of a registered owner, such as Restock Pty Ltd, is authorised use under the Act, as set out in Lodestar Anstalt v Campari America LLC38, I am satisfied, on the balance of probabilities, that at the relevant date the Applicant at least intended to authorise Restock to use the Trade Mark for the Applicant’s Goods. I reach this conclusion as a result of the statements in the Jones Declaration regarding the Applicant’s intention to licence the Trade Mark to Restock

   for the Applicant’s Gods. The Opponent has failed to establish a prima facie case that the Applicant lacked the requisite intention as at the filing date, and has, consequently, failed to establish a ground of opposition pursuant to s 59 of the Act.

Section 58

1. Section 58 of the Act is reproduced below:

Section 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.

1. It is now well established at law that in order to succeed under this ground of opposition the Opponent must establish three factors. 39   These are:

   ·     that the Trade Mark is identical, or substantially identical, to the trade mark(s) relied upon by the Opponent (‘the first factor’);40

38 [2016] FCAFC 92.

39 In summarising the principles that apply with respect to s 58 of the Act I have paraphrased from Richard Khouzame v Melambada Pty Ltd (Unreported, Australian Trade Marks Office, 6 January 2017), [12].

·     that the Applicant’s Goods are the ‘same kind of thing’ as the goods for which the trade mark(s) relied upon by the Opponent was used (‘the second factor’);41 and

·     that a person other than the Applicant has the earlier claim to ownership of the Trade Mark based on use of the trade mark(s) relied upon by the Opponent prior to whichever is the earlier of: (a) the application to register; or (b) any actual use of the Trade Mark by the Applicant (‘the third factor’).42

1. The ground based on s 58 of the Act was particularised in the SGP as follows:

The Trade Mark appears to be in use in Australia by a company which is not the Applicant. The Applicant is not the first user of the Trade Mark in Australia and is therefore not the owner of the Trade Mark.

1. It is unclear what exactly these particulars refer to but to the extent the particulars refer to the s 44 Marks; for the Opponent to succeed under this ground it is necessary to show that the first factor is satisfied, namely that the Trade Mark is identical, or substantially identical, to the trade mark(s) relied upon by the Opponent. I have already concluded that the Trade Mark is not identical to the PROTECTOR Mark, and I reach the same conclusion with identical reasoning, in respect of the PROTECTA Mark.

1. To the extent the particulars refer to the use of the Trade Mark by Restock Pty Ltd, while noting the complexities of proving authorised use, as discussed in the s59 ground of opposition above, I cannot be satisfied by the evidence before me that the Opponent has established that Restock Pty Ltd has an earlier claim to ownership of the Trade Mark then the Applicant, or even that the onus of showing that the use by Restock was authorised has shifted to the Applicant. While the Applicant’s evidence of actual control of Restock Pty Ltd is at best limited, being essentially an assertion that the parties are part of the same corporate group with the Applicant being the asset owning entity that authorises Restock Pty Ltd as the

   trading entity, the burden of proof in respect of this ground rests with the Opponent43  who,

   given the lack of evidence and submissions in support of this ground of opposition, has failed to establish, in the face of a clear statement in the Applicant’s evidence otherwise, that the first use of the Trade Mark by Restock was not authorised use of the Trade Mark.

40 Carnival Cruise Lines Inc. v Sitmar Cruises Limited (1994) 31 IPR 375.

41 Re Hicks’ Trade Mark (1897) 22 VLR 636.

42 Settef SpA v Riv-Oland Marble Co (Vic) Pty Ltd (1987) 10 IPR 402, 413.

43 Food Channel Network Pty Ltd v Television Food Network GP [2010] FCAFC 58.

1. I find that the Opponent has failed to establish the ground of opposition under s 58 of the Act.

Section 62A

1. Section 62A of the Act is reproduced below:

62A 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.

1. The Explanatory Memorandum to the Trade Marks Amendment Bill 2006 provided some non-exhaustive examples of applications made in bad faith:

   ·persons who monitor new property developments, register the names of new developments as trade marks for a number of services and then threaten the property developers with trade mark infringement proceedings unless the developers licence or buy the trade marks;

   ·persons who have a history of applying for trade marks that are deliberate misspellings of other registered trade marks;

   ·persons who identify trade marks used overseas but with no Australian use as yet who then apply to register the trade marks in Australia for the express purpose of selling them to the overseas owners.

1. The case of Fry Consulting Pty Ltd v Sports Warehouse Inc (No 2) is a current leading Australian authority on s 62A. In that case, Dodds-Streeton J made the following comments, quoting from Harrison’s Trade Mark Application44:

   Clearly the court, when considering bad faith, cannot apply a purely subjective test, called by Lord Hutton ‘the Robin Hood test’. The dishonest person or one with low standards cannot be permitted to obtain trade mark registrations in circumstances where a person abiding by a reasonable standard would not. The registration of a trade mark is designed to enable bona fide proprietors to protect their proprietary rights without having to prove unfair trading. Registration is not provided to help those with low moral standards.

   … The words ‘bad faith’ suggest a mental state. Clearly when considering the question of whether an application to register is made in bad faith all the circumstances will be relevant. However the court must decide whether the knowledge of the applicant was such that his decision to apply for registration would be regarded as in bad faith by persons adopting proper standards.45

1. Her Honour continued later in the same decision:

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

44 [2004] EWCA Civ 1028; [2005] FSR 10.

45 [2012] FCA 81, [147].

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.46

1. The Opponent has particularised this ground of opposition in the SGP as follows:

   The Opponents believe that the Applicant had full knowledge of the PROTECTA and PROTECTOR marks prior to the filing of the Application, given the level of fame and repute of those marks, the similarity of the marks and the similarity of the goods of interest. Accordingly, the Applicant has deliberately sought to take advantage of the reputation of these marks and therefore, the Opponents believe the Application was made in bad faith.

1. The onus is on the Opponent to establish bad faith and it will not be found easily given the serious nature of the allegation.47 Based on the evidence before me I cannot conclude that the decision of the Applicant to adopt and seek to register a mark containing the word ‘protect’ in respect of protective clothing, was a decision made to take advantage of the reputation of the PROTECTA and PROTECTOR Marks, as opposed to the inherent combination of the words ‘protect’ and ‘aware’.   In particular the PROTECTA mark appears to be used for quite a

   different set of goods then the Trade Mark. In circumstances where the evidence in support of the s 62A ground of opposition is very limited and the Opponent bears the onus, I am not satisfied the Applicant’s conduct in filing the application was unscrupulous, underhanded or unconscientious in character. Consequently I find that the Opponent has failed to establish the ground of opposition under s 62A.

Decision

1. The Opponent has failed to establish any of the grounds of opposition it nominated in the SGP. Trade mark application no. 1738733 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.

46 Ibid [165]-[166].

47 Hard Coffee Pty Ltd v Hard Coffee Main Beach Pty Ltd [2009] ATMO 26, [12].

Costs

1. The Applicant has sought an award of costs in its favour. I see no reason to depart from the general rule that costs follow the event. I accordingly award costs against the Opponent under section 221 of the Act in the relevant amounts under Schedule 8 of the Trade Mark Regulations 1995.

Nicholas Smith Hearing Officer

Oppositions and Hearings 22 January 2019