Carboline International Corporation v Multitex Corporation Pty Ltd

[2014] ATMO 13

TRADE MARKS ACT 1995

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

Re:Opposition by Carboline International Corporation to registration of trade mark application 1484534(17,19) - POLYCLAD AND DEVICE - filed in the name of The Multitex Corporation Pty Ltd.

Delegate:

Hearing Officer: Nicole Worth

Representation:

Opponent: Catherine Sedgley and Tracey Berger of Spruson & Ferguson Patent & Trade Mark Attorneys.

Applicant: Fiona Brittain of Davies Collison Cave Patent & Trade Mark Attorneys.

Decision:

2014 ATMO 14

Section 52 opposition – ss 44, 60, 42(b) – some similar goods – section 44 partially established – no other grounds established.

Background

1. This is an opposition brought by Carboline International Corporation (‘the Opponent’) pursuant to section 52 of the Trade Marks Act 1995 (‘the Act’) to registration of the trade mark the subject of application number 1484534 in the name of The Multitex Corporation Pty Ltd (‘the Applicant’).

2. Relevant details of the opposed application are as follows:

Trade Mark:   (‘the Trade Mark’)

Priority date:                   5 April 2012

Owner:               The Multitex Corporation Pty Ltd

Goods & Services:         Class 17: Insulating materials for use in cladding.

Class 19: Insulation cladding, not of metal, for building; insulation wall claddings, not of metal, for building; expanded polystyrene products for the building and construction industry.

1. The Trade Mark was accepted for possible registration and advertised as such in the Australian Official Journal of Trade Marks on 26 July 2012. The Opponent filed a Notice of Opposition to registration (‘the Notice’) on 25 October 2012. The Notice nominated most of the grounds available under the Act to oppose registration.

2. Once evidence was served and filed by the parties (described in more detail below), the matter was set down to be heard. I heard the matter, as a delegate of the Registrar of Trade Marks, in Canberra on 9 December 2013. Catherine Sedgley and Tracey Berger, of Spruson and Ferguson Patent & Trade Mark Attorneys, prepared written submissions on behalf of the Opponent and Ms Sedgley spoke at the hearing on its behalf. Fiona Brittain of Davies Collison Cave Patent & Trade Mark Attorneys made both written and oral submissions on behalf of the Applicant.

Evidence

1. The evidence served and filed in this matter comprises statutory declarations by:

   Evidence in support

   ·     Donald J. Kloppenburg, Vice President of Finance of the Opponent, with exhibits 1-3 and 5, and confidential exhibits 4 and 6, made 30 January 2013.

   Evidence in answer

   ·     Andrew Ferraro, CEO of the Applicant, with exhibits AF-1 to AF-7 and AF-9, and confidential exhibit AF-8, made 29 April 2013.

   Evidence in reply

   ·     Donald J. Kloppenburg, with exhibit 7, made 12 September 2013.

2. A summary of the each party’s evidence is as follows.

3. The Opponent is an American company founded in 1947. It supplies coatings, linings and “fireproofing” and distributes its range of products worldwide from more than 20 manufacturing facilities located around the globe.

4. It is declared that the Opponent first used POLYCLAD in 1947, in respect of protective coatings for pipelines. The goods are designed to protect pipeline interiors from corrosion, abrasion and impact, typical applications being “for raw water transmission, waste water transmission and treatment (municipal and industrial)”. Use of POLYCLAD in Australia is declared to have taken place since 2010 and sales figures for the years 2010 to 2012 are provided in confidential exhibit 6.

5. The Opponent is the owner of International Registration Designating Australia 1398742 (International Registration 1057859), POLYCLAD, in respect of “Protective coatings in the nature of paints for exterior and interior structural surfaces” in class 2.

6. The Opponent also produces other products under other trade marks which serve a variety of markets, including a “ceramic blend insulative composite coating…used to shield personnel from hot surfaces” sold under the trade mark CARBOTHERM.

7. The Applicant uses the Trade Mark in respect of “a lightweight cladding system which provides thermal insulation and weatherproofing for the exterior walls of residential and commercial buildings. The system comprises [polystyrene] panels, breathable building wall wrap (sarking), plastic washers, fixing screws, liquid nails, sealant, corner angle beads, backing rods and expansion joint trims”. The POLYCLAD cladding system is installed on the timber framework of buildings in two stages, first by a carpenter and then by a renderer who finishes the cladding by rendering or coating it. It is sold to builders, architects, carpenters, owner builders and trade renderers, typically following the submission of architectural or building plans.

8. Mr. Ferraro declares he has never experienced an instance of confusion with the Opponent’s POLYCLAD product.

Grounds and onus

1. The Opponent’s written submissions advised that it pursued only the grounds of opposition under sections 44, 60 and 42(b). For completeness I find that the other grounds nominated in the Notice have been abandoned.

2. I proceed on the basis that the Opponent bears the onus of establishing at least one of the grounds and that the relevant standard is the ordinary civil standard of the balance of probabilities[1]. The date at which the rights of the parties are to be determined is the date the application was filed.[2]

   [1] See Pfizer Products Inc v Karam [2006] FCA 1663; 70 IPR 599 per Gyles J at [6] to [26].

   [2] Southern Cross Refrigerating v Toowoomba Foundry Pty Ltd (1953) 91 CLR 592 at 595.

Section 44

1. Section 44 relevantly provides:

Identical etc. trade marks

44.(1) Subject to subsections (3) and (4), an application for the registration of a trade mark (applicant's trade mark) in respect of goods (applicant's goods) must be rejected if:

(a) the applicant's trade mark is substantially identical with, or deceptively similar to:

(i) a trade mark registered by another person in respect of similar goods or closely related services; or
(ii) a trade mark whose registration in respect of similar goods or closely related services is being sought by another person; and

(b) the priority date for the registration of the applicant's trade mark in respect of the applicant's goods is not earlier than the priority date for the registration of the other trade mark in respect of the similar goods or closely related services.

Note 1:  For deceptively similar see section 10.

Note 2:  For similar goods see subsection 14(1).
Note 3:  For priority date see section 12.

1. In order to establish the ground of opposition under section 44, the Opponent must point to a registered or pending trade mark owned by a person other than the Applicant, which has a priority date earlier than the Trade Mark, which is in respect of goods or services that are similar or closely related to those specified in the subject application, and which is substantially identical or deceptively similar to the Trade Mark. For this purpose the Opponent relies upon its trade mark the subject of registration 1398742 (‘the Opponent’s trade mark’). For ease of comparison I reproduce below the relevant details of the Trade Mark and the Opponent’s trade mark.

The Trade Mark

The Opponent’s trade mark

Priority date: 5 April 2012

Goods: Class 17: Insulating materials for use in cladding.

Class 19: Insulation cladding, not of metal, for building; insulation wall claddings, not of metal, for building; expanded polystyrene products for the building and construction industry.

(‘the Applicant’s goods’)

POLYCLAD

Priority date: 5 November 2010

Goods: Class 2: Protective coatings in the nature of paints for exterior and interior structural surfaces.

(‘the Opponent’s goods’)

1. It is clear that the Opponent’s trade mark has a priority date earlier than that of the Trade Mark. It was not disputed that the parties’ trade marks are at least deceptively similar. What remains to be determined, then, is whether the Applicant’s goods in classes 17 and 19 are similar to the Opponent’s goods in class 2.

2. Section 14(1) of the Act defines similar goods as those that are the same or those that are of the same description. The expression “of the same description” is a term of art describing the relationship between goods such that they would be seen by purchasers as having the same trade origin if provided under the same trade mark.[3] Relevant considerations for determining whether this is the case include the nature of the goods and their respective purposes, the trade channels through which they are provided, whether they are normally provided by the same traders in the same places to the same class of customer, and whether those engaged in their provision are regarded as belonging to the same trade.[4] No single consideration is conclusive in itself.[5]  Additionally, in respect of section 44 I am to consider all of the circumstances in which the trade marks might notionally be used, and not only those in which they have been used.[6]

   [3] Polo Textile Industries Pty Ltd v Domestic Textile Corp Pty Ltd (1993) 26 IPR 246 (FC).

   [4] As set out in Jellinek’s Application (1946) 63 RPC 59 and enlarged upon in John Crowther and Sons (Milnsbridge) Ltd’s Application (1948) 65 RPC 369 and Southern Cross Refrigerating Co v Toowoomba Foundry Pty Ltd(‘Southern Cross’) (1954) 91 CLR 592.

   [5] Southern Cross, above n. 4

   [6] Registrar of Trade Marks v Woolworths Ltd [1999] FCAFC 1020; (1999) 45 IPR 411, at [50] wherein French J cited also Berlei Hestia Industries Ltd v The Bali Company Inc [1973] HCA 43; (1973) 129 CLR 353.

3. I will deal with the Applicant’s goods in each class separately because the scope of the specifications in classes 19 and class 17 differ somewhat. I consider it also relevant to mention that according to The Nice Classification[7] finished goods are classified primarily by their purpose or function. Where goods have more than one purpose or function, they may be classified in all classes to which their purpose or function corresponds. Here the Applicant’s goods appear to be dual purpose, as both insulation and building materials, and those in class 19 are more narrowly defined than those in class 17.

   [7] Tenth edition, see ‘General Remarks’. The Nice Classification is the international system of classifying goods and services, established by the Nice Agreement to which Australia is a party.

4. I turn first to the Applicant’s goods in class 19. According to the Macquarie Dictionary[8], cladding is “a covering of any kind, especially one attached to a building structure, or the like”. Insulation cladding for buildings, according to my own research[9], typically comprises panels or sheets made from a variety of materials including foam, mineral wools, polystyrene or vinyl. Such insulation cladding reduces thermal transference and may be installed within wall cavities or upon the external timber framework of a building to form part of its exterior. Similarly, expanded polystyrene products for the building and construction industry are typically rigid foam sheets or panels that form part of the internal walls or the exterior of a building.

   [8] Macquarie Dictionary online, © Macmillan Publishers Group Australia, 2014.

   [9] Being internet research using search terms such as “cladding”, “insulation cladding”, “insulation cladding for buildings”, “building cladding” and “wall cladding” (note this is not an exhaustive list).

5. Protective coatings are commonly in the form of paints, as per the Opponent’s description of its goods. They are typically used to prevent corrosion, wear and tear or abrasion, chemical or ultraviolet attack, and to reduce surface heat by providing thermal insulation.

6. The nature of the goods is thus significantly different. Although there is no common definition of what insulation cladding for buildings is, its typical form is sheets or panels of various materials. In contrast, protective coatings in the nature of paints are liquids. Although a strict definition of the term “cladding” includes almost any material (including protective coatings in the nature of paints), I do not consider it reasonable to apply the definition so broadly when it appears not to be reflected as a commercial reality. I did not discover, in my own research or in the Opponent’s evidence, any trader referring to its paint or liquid coating as “cladding”. Nor did I find that typical suppliers of insulation cladding for building[10] also supplied paints or cladding in liquid form. This then also indicates that those involved in the provision of insulation cladding for buildings are not regarded as belonging to the same trade as those that supply protective coatings in the nature of paints, and that the trade channels for each differ.

   [10] Including Stratco, RMAX, Kingspan, Austech and PracticaMMC.

7. I acknowledge that the overarching purpose of both parties’ goods coincides, in that both may be used for insulating and protecting structures from environmental conditions. However there is a vast range of goods which share this purpose and which do not generally originate from the same source. Given the difference in the nature and suppliers of the subject goods I am not persuaded that the similar overarching purpose is a sufficient basis to find that more than a mere possibility of confusion exists.[11] Therefore, I do not consider that the Opponent’s goods are similar to the Applicant’s goods in class 19, and the section 44 ground of opposition fails in respect of them.

   [11] As per French J in Registrar of Trade Marks v Woolworths, supra; who, in applying the factors set out in Southern Cross Refrigerating Co v Toowoomba Foundry (1957) 91 CLR 592 at 594-5, stated “To show that a trade mark is deceptively similar to another it is necessary to show a real tangible danger of deception or confusion occurring. A mere possibility is not sufficient”.

8. Turning now to the Applicant’s goods in class 17, I note that scope of “insulating materials for use in cladding” is broader than the goods specified in class 19. This is because, firstly, rather than insulation cladding it is a more general description of insulating materials (albeit for use in cladding) that is specified; and secondly, although the materials are for use in cladding, it is not specified what the cladding is in relation to and therefore a typical form is less readily apparent (as opposed to class 19 wherein it is specified that the cladding is insulation cladding for building).

9. Due to the broader range of goods encompassed within class 17 there exists, notionally at least, circumstances in which confusion is likely. For example insulating materials include PVC plastics or polyurethane foam. The cladding could be in respect of pipes, and PVC plastics and polyurethane foam are commonly used as pipe cladding both for insulation and to form a protective barrier. The Opponent’s goods in class 2 may also be for the protection of pipe surfaces (although I note they are not limited as such). The provision of both under the name POLYCLAD, irrespective of the pentagon device which only saves the marks from being identical, is likely to cause purchasers to wonder if both originate from the same source by virtue of their application to pipes.

10. A similar conclusion would apply in respect of machinery, industrial plant equipment, rigs and refineries (or other such structures that are not buildings per se), where it is reasonable to suppose that insulation, cladding, paints and coatings might be created specifically for application to them. In other words, I consider that the purpose and trade channels of the parties’ goods may well be the same, and that the specificity of such potential purposes and trade channels leads to a likelihood of confusion. Accordingly, the ground of opposition under section 44 is established in respect of the Applicant’s goods in class 17.

11. The Applicant did not submit that, in the event the ground of opposition was established for any of the goods, the provisions of either subsections 44(3) or (4) should be applied. In any event, the evidence before me is insufficient for honest concurrent use provisions and does not establish prior use or any other circumstances which would make registration appropriate. I will therefore discuss the remaining grounds only in respect of the goods in class 19, the opposition being established in respect of the goods in class 17.

Section 60

1. Section 60 of the Act provides:

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.

Note 1:  For deceptively similar see section 10.

Note 2:  For priority date see section 12.

1. To establish the ground of opposition under section 60 the Opponent must demonstrate that its trade mark had acquired a reputation in Australia such that by 5 April 2012 the use of the Trade Mark in respect of the Applicant’s goods in class 19 would be likely to deceive or cause confusion.

2. Reputation in this context refers to the recognition of the Opponent’s mark by the public generally[12], although the size and nature of the relevant market must be taken into account.[13] I note further from comments in previous office decisions that confusion or deception may still be likely where very little, if any, nexus exists between the goods and/or services in question depending on the strength of reputation and degree of similarity between the trade marks.[14]

   [12] McCormick & Company Inc v McCormick [2000] FCA 1335; (2000) 51 IPR 102.

   [13] “Bali” Trade Mark [1969] RPC 472 at 496 (HL); Le Cordon Bleu BV v Cordon Bleu International Ltee [2000] FCA 1587; (2001) 50 IPR 1.

   [14] Pottle Productions Inc v Rute Ithalat Ve Ihracat Anonim Sirketi [2012] ATMO 124.

3. In support of its claim that its trade mark had a reputation in Australia as of the priority date, the Opponent points to “longstanding global use of the trade mark POLYCLAD”, “strong sales of goods sold under the mark”, “promotion of the Opponent’s POLYCLAD goods…in catalogues, articles and point-of-sale materials” and “online promotion of the Opponent’s POLYCLAD goods on the Opponent’s global website (which is accessible in Australia)”. The Opponent also contends that the risk of confusion is heightened because of the high degree of similarity between the trade marks and between the respective goods, and because the relevant market (being those consumers in the building and construction industry) would already be familiar with the Opponent’s goods.

4. Despite these arguments, I am unconvinced that as at the priority date the Opponent’s trade mark had a reputation in Australia such that deception or confusion would be likely. I consider the Opponent’s global sales under its trade mark modest and those in respect of Australia negligible for the purposes of section 60.[15] Of the exhibits supporting the claimed promotion of the trade mark, being extracts from five websites, I note only one is clearly directed to the Australian market (being a web page at about ‘Altex Coatings’, the exclusive licensee of the Opponent’s goods in Australia and New Zealand). Additionally none of the exhibits are dated prior to the priority date, being copies of undated web pages printed in January 2013 (although I note one states that its information, under the title ‘Carboline launches Polyclad 975’, was published April 19, 2012). Nor is there any information about the volume of Australian traffic to the Opponent’s website from which reputation might be inferred.

   [15] Wherein reputation might be inferred from high sales volumes or promotional expenditure. See for example McCormick & Co Inc v McCormick [2000] FCA 1335; (2000) 51 IPR 102, at [86].

1. Reputation in Australia must be established as a question of fact.[16] I am not satisfied that the Opponent’s trade mark enjoyed the kind of reputation contemplated by section 60 as at the priority date of the Trade Mark. I thus find that the Opponent has not established the ground of opposition under section 60.

   [16] ConAgra Inc v McCain Foods (Aust) Pty Ltd [1992] FCA 159; (1992) 23 IPR 193.

Section 42(b)

1. Section 42 of the Act relevantly provides:

   An application for the registration of a trade mark must be rejected if:

   (a)    …

   (b)    its use would be contrary to law.

2. The Opponent must satisfy the Registrar that use of the opposed trade mark “would”, not “could”, be contrary to law[17]. It is not sufficient for the conduct complained of to cause mere wonderment or uncertainty[18].

   [17] Advantage-Rent-A-Car Inc v Advantage Car Rental Pty Ltd (2001) 52 IPR 24 at [28].

   [18] See for example Registrar of Trade Marks v Woolworths [1999] FCA 1020; Equity Access Pty Ltd v Westpac Banking Corporation (1989) 16 IPR 431; Parkdale Custom Built Furniture Pty Ltd v Puxu Pty Ltd (1982) 149 CLR 191.

3. In this regard the Opponent submits that use of the Trade Mark would constitute a breach of Australian Consumer Law, specifically section 18 of the Competition and Consumer Act 2010. Section 18 of Schedule 2 of the Competition and Consumer Act 2010 states:

   Misleading or deceptive conduct

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

4. There is no evidence before me, such as evidence from consumers in the relevant market or instances of actual deception, to support a breach of consumer protection law. Rather, what is submitted is the unsupported allegation that “As a result of the Opponent’s reputation in its POLYCLAD trade mark accrued through extensive use, any use of [the Trade Mark] in respect of any of the goods the subject of the Opposed Application, would be contrary to section 18 of the Australian Consumer Law and amount to common law passing off”, and a reiteration of the similarity of the marks, the claimed “extensive use and reputation” and the likelihood of deception or confusion.

5. In respect of the Applicant’s goods in class 19, the Opponent has been unable to establish either of its grounds of opposition under sections 44 or 60. The tests for whether the concurrent use of two trade marks is likely to deceive or confuse involve a considerably lower threshold than those for use likely to mislead or deceive. Given the lack of any evidence to support a likelihood of deception or any misrepresentation, the ground under section 42(b) is not made out.

Decision

1. Section 55 of the Act, as at the priority date, provided:

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

   (a) to refuse to register the trade mark; or
   (b) to register the trade mark (with or without conditions or limitations) in respect of the goods and/or services then specified in the application;

   having regard to the extent (if any) to which any ground on which the application was opposed has been established.

   Note:  For limitations see section 6.

2. I am satisfied that the opposition has been established, under section 44, in respect of the goods in class 17. That being the case, I refuse to register the Trade Mark in respect of the specification of goods as it currently stands.

3. I am allowing the Applicant fourteen (14) days from the date of this decision in which to request that its application be amended by deleting class 17 and to send a copy of its request to the Opponent. If it does so, the amended application may be registered. If it does not, registration is refused.

4. As this decision may be appealed the amendment, if requested, will not be carried out until the period allowed for filing an appeal at the relevant court and notifying the Registrar of such, has expired. If there is an appeal, and it is not discontinued, I direct that the disposition of the application be in accordance with the court’s order or direction.

Costs

The parties seek their costs. However, as neither has been entirely successful I decline to make an award of costs against either party. I consider that the appropriate course on this occasion is that each party should be responsible for meeting its own costs.

Nicole Worth

Hearing Officer

Trade Marks Hearings

14 February 2014