Caretta LLC DBA Caretta v Pipeline Fusion Technology Pty Ltd

[2024] ATMO 76

TRADE MARKS ACT 1995

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

Re:Opposition by Caretta LLC DBA Caretta to registration of trade mark application number 2193441 (class 12) - CARETTA - in the name of Pipeline Fusion Technology Pty Ltd

Delegate:

Tracey Berger

Representation:

Opponent: Self-represented

Applicant: Wrays Pty Ltd

Decision:

2024 ATMO 76

Trade Marks Act 1995 (Cth) – opposition under section 52 – s 43 considered – ground not established – trade mark to proceed to registration

Background

1. This decision concerns an opposition brought by Caretta LLC DBA Caretta (‘Opponent’) under s 52 of the Trade Marks Act 1995 (Cth)[1] to the registration of the following trade mark:

Trade Mark Number: 2193441 (‘Application’)

Trade Mark:   CARETTA (‘Trade Mark’)

Owner:                Pipeline Fusion Technology Pty Ltd (‘Applicant’)

Priority Date:                    14 July 2021

Specification:                    Class 12: Caravans; Motor caravans; Vehicles in the nature of caravans; Mobile homes (caravans); Supports for trailers and caravans (legs and dolly wheels); Camping cars; Camping trailers; Camping vehicles; Camper vans; Motor vans; Vans (vehicles); Vehicles in the nature of vans; Motor car derived vans; Roof racks for vehicles; Roof racks in the nature of load carriers for vehicles; Trailer tents; Canopies for trailers; Luggage racks for vehicles; Storage boxes and containers adapted for use with caravans; Roof top carriers for vehicles; Sunroofs for vehicles; Electric sunroofs for vehicles

[1] Each reference to a section in these reasons is a reference to a section of the Trade Marks Act 1995 (Cth) (‘Act’). Each reference to a regulation in these reasons is a reference to a section of the Trade Marks Regulations 1995 (Cth) (‘Regulations’).

1. Following examination under s 33, the Trade Mark was accepted and advertised for opposition on 15 December 2021.

2. The Opponent filed a Notice of Intention to Oppose registration of the Trade Mark on 13 February 2022, followed by a Statement of Grounds and Particulars (‘SGP’) on 12 March 2022.  A Notice of Intention to Defend the opposition was filed by the Applicant on 9 May 2022.

3. The Opponent filed Evidence in Support (‘EIS’) of the opposition on 12 December 2022. No Evidence in Answer was filed by the Applicant.

4. Following the conclusion of the evidence period, both parties requested a hearing by written submissions.  The Opponent filed its written submissions on 19 February 2024 and the Applicant filed its written submissions on 27 February 2024.  As a delegate of the Registrar of Trade Marks, this matter has been allocated to me to determine based on the Application and aforementioned documents.

Grounds of opposition, onus and relevant date

1. In its SGP, the Opponent nominated only a ground of opposition under s 43.  The Opponent bears the onus of establishing the ground of opposition[2]  on the balance of probabilities.[3]

   [2] Food Channel Network Pty Ltd v Television Food Network GP [2010] FCAFC 58 [32] (Keane CJ, Stone and Jagot JJ).

   [3] Pfizer Products Inc v Karam [2006] FCA 1663 [6]-[26] (Gyles J); Telstra Corporation Ltd v Phone Directories Co Pty Ltd [2015] FCAFC 156, [132]-[133] (Besanko, Jagot and Edelman JJ).

2. The relevant date for determining the rights of the parties is 14 July 2021 being both the filing date and priority date of the Application.

Opponent’s evidence

1. The EIS consists of a declaration of Ozgur Cobaner, founder of the Opponent, made on 12 December 2022 with Exhibits 1-9.

2. The Opponent is a motor vehicle manufacturing company incorporated in the State of Texas, United States of America (‘USA’) in August 2017.  As a motor vehicle manufacturer, the Opponent has been assigned a World Manufacturer Identifier Code (‘WMI Code’) and it is apparent from Exhibit 7 of the EIS that this code is to be included in the Vehicle Identification Number (‘VIN’) of vehicles it manufactures.  This Exhibit indicates that the Opponent’s WMI Code is 4C9.   

3. The Opponent is the owner of trade mark registrations for CARETTA for ‘travel trailers’ in Canada and for ‘teardrop trailers’ in the USA, both of which were filed in 2018.

Discussion

1. Section 43 of the Act provides:

   An application for the registration of a trade mark in respect of particular goods or services must be rejected if, because of some connotation that the trade mark or a sign contained in the trade mark has, the use of the trade mark in relation to those goods or services would be likely to deceive or cause confusion.

2. To succeed under this ground of opposition, the Opponent must establish that there is a connotation within the Trade Mark and, because of that connotation, the use of the Trade Mark by the Applicant would be likely to deceive or cause confusion.  A connotation is a secondary meaning implied by a trade mark.[4]

   [4] Pfizer Products Inc v Karam [2006] FCA 1663, [53] (Gyles J).

3. In its SGP, the Opponent claims that the Trade Mark is likely to deceive or cause confusion because it is not possible to sell motor vehicles without the manufacturer obtaining a WMI Code from SAE International which must be used in the VIN imprinted on any vehicle sold.  The SGP states:

   WMI codes are identical and no manufacturer in the World can use other WMI code without given permissions. … Approval of this trademark application is likely to deceive or cause confusion because no manufacturer in the World is allowed to use other manfacturers’ assigned name.

4. The Opponent’s written submissions provide further details about the requirements for Australian vehicle and trailer manufacturers to have a WMI Code and the obligation for each vehicle sold in Australia to be marked with a VIN.  The Opponent also states in its submissions that, whilst it has ‘no direct investment in Australia’ and has never applied for a trade mark here, its products are ‘used and traded’ in Australia.  There is no evidence that the Opponent uses the Trade Mark in Australia or that any vehicles it may manufacture and sell under the mark CARETTA are available in this country.    

5. Furthermore, it is not relevant to the ground of opposition under s 43 whether or not the Applicant could obtain a WMI Code or VINs. The Applicant could of course licence another trader to use the Trade Mark and the licensee would be responsible for obtaining the WMI Code and VINs. In any event, I am not persuaded by the Opponent’s evidence regarding WMI Codes or VINs that the Applicant would be prevented from obtaining a WMI Code.

6. It is not apparent to me how the Opponent’s WMI Code 4C9 results in the Trade Mark having a connotation that is likely to mislead or confuse Australian consumers.

7. I am not satisfied on the evidence that the Opponent has established that the Trade Mark has a secondary meaning nor a connotation such that use of the Trade Mark would be likely to deceive or cause confusion. The s 43 ground of opposition is unsuccessful.

Decision

1. The Opponent has failed to establish its ground of opposition under s 43. Accordingly, application 2193441 may proceed to registration one month from the date of this decision. If the Registrar is 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.

2. The Applicant has sought an award of costs. Costs generally follow the event and hence, I award costs against the Opponent under s 221 in accordance with amounts in Schedule 8 of the Regulations.

Tracey Berger

Hearing Officer

Delegate of the Registrar of Trade Marks

29 April 2024