Carrier Air Conditioning P/L v Climate Technologies P/L
[2008] ATMO 9
•14 January 2008
TRADE MARKS ACT 1995
DECISION OF A DELEGATE OF THE REGISTRAR OF TRADE MARKS, WITH REASONS
Re:Opposition by Climate Technologies Pty Ltd to registration of trade mark application 963835(11) - BRIVIS PROFILER - filed in the name of Carrier Air Conditioning Pty Ltd.
Delegate: Terry Williams Representation: Opponent: Michael Squires, patent attorney, of Phillips Ormonde & Fitzpatrick, patent attorneys
Applicant: Chris Sgourakis, trade mark attorney of Griffith Hack, patent attorneysDecision: 2008 ATMO 9
S 52 opposition: Brivis Profiler deceptively similar to Profile. S 44(1) established - lack of proper basis for application of s 44(3). Registration refused.Background
Carrier Air Conditioning Pty Ltd has applied to register the trade mark BRIVIS PROFILER in class 11. The application was filed on 29 July 2003 (“the critical date”). After examination, the application was advertised as having been accepted for possible registration in respect of “evaporative air conditioners”, the goods for which the application was originally filed.
Registration of the application for those goods was opposed by Climate Technologies Pty Ltd (“the opponent”). Thereafter, in a process governed by the Trade Mark Regulations, the opponent and the applicant have relied on evidence in support of the opposition, in answer to it, and in reply, respectively.
Ultimately, the matter was set down for me to hear and decide under delegation from the Registrar of Trade Marks. At the hearing, the opponent was represented by Michael Squires, patent attorney, of Phillips Ormonde & Fitzpatrick, patent attorneys. The applicant was represented by Chris Sgourakis, a trade mark attorney of the patent attorney firm of Griffith Hack. The statement of goods has since then been amended to read “ducted evaporative air conditioners” but the opposition remains on foot and the parties, having been heard, require my decision. This is as follows.
Grounds considered.
General remarks
The notice of opposition specified a wide range of grounds. However all of the grounds relied on by the opponent at the hearing, under s 44 , 60 and 42, are ultimately based on the view that the applicant’s BRIVIS PROFILER trade mark is “deceptively similar”, for the purposes of s 10 of the Trade Marks Act 1995 (“the Act”) to the word PROFILE, used and registered by the opponent,. If that is not the case, then the opposition falls away entirely.
PROFILE has been registered by the opponent since 1983 under number 388294 in respect of “Installations for heating, ventilating, air conditioning and cooling, being air conditioners or evaporative room coolers”. At the heart of the opponent’s case, as I have said, is the need to show that the applicant’s trade mark, “so nearly resembles that other trade mark that it is likely to deceive or cause confusion”, as s 10 puts it.
Deceptive similarity
Mr Squires, on behalf of the opponent, argued strongly that the essence of this matter was the extent to which part of the trade mark now proposed to be registered by the applicant resembled the entirety of the one already registered by the opponent. Mr Squires argued strongly that the elements PROFILE and PROFILER were themselves substantially identical. I will not need to decide that particular question, since the one that confronts me is somewhat different: are the marks as wholes, that is, BRIVIS PROFILER on one hand and PROFILE on the other, deceptively similar? The resemblance, or even the substantial identity, of component elements of those two trade marks is but a part of that larger question.
Mr Squires argued that, either consciously or unconsciously, ordinary buyers of these goods would dissect the mark, recognizing BRIVIS as a house mark, or at least potentially a house mark. This was, he said, one of the ordinary circumstances of the trade in air conditioners. He supported this by reference to the applicant’s own published material. on which the opponent relied. Exhibit TOL-5 was, he noted, a Brivis owner’s manual. At the rear of this is a questionnaire, of the sort that is commonly found among warranty paperwork, wherein the new purchaser of a BRIVIS product is asked various questions about age, and about the reasons “for choosing Brivis”. There are other similar usages and, equally tellingly, the very first page of the manual notes:
In this manual the Brivis Profiler is referred to as the Profiler. [1]
Mr Sgourakis relied, for his client’s part, on very solid principles of case law. Those principles are not in dispute, and are conveniently set out in Melbourne Chinese Press Pty Ltd v Australian Chinese Newspapers Pty Ltd[2]. He noted, moreover, that a mere possibility of confusion is not enough, there must be a real tangible risk of this.
[1] Exhibit TOL-4 is the Installer’s Manual. It carries a similar statement. The manual relates also to the applicant’s CONTOUR product, and both trade marks are used solus, without BRIVIS.
[2] [2004] FCAFC 201 at 16-21.
Where the matter becomes complex is in the need to apply sound general principles such as those that come from London Lubricants and Cooper Engineering[3] to the facts of the particular case. With this in mind, Mr Sgourakis noted that the word “profile” was not a particularly distinctive element in relation to these goods. He referred me to exhibit SJB3, which shows that any number of firms are, and probably were at the critical date, in the habit of indicating that their air conditioners have a “roof hugging profile”, a “low profile”, or a “slimline profile”. He endeavored thereby to show that the principles applied in deciding that DURATA was not deceptively similar to DURACELL, DURA4X AND DURA2X, would assist the applicant in the present matter.
[3] Respectively, CASTROL/TRIPCASTROID compared, (1925) 42 RPC 264 at 279; RAINMASTER/RAINKING compared, (1952) 86 CLR 536.
In the latter case, Hearing Officer Thompson noted:
Further, the prefix ‘DURA-’ is not one without any facility in relation to the goods. It is, as mentioned above, a recognised prefix which denotes something that is lasting, a quality that is desirable in batteries. This contrasts with the situation in John Fitton, above, where the trade mark JESTS had no facility in relation to the goods, and the present instance is more in line with Conde Nast Publications Pty Ltd v Virginia Taylor [1998] 864 FCA (VOGUE and EUROVOGUE) where Burchett J commented:
"At the same time, it should be borne in mind that "vogue" is neither a made-up word nor a word wholly without any direct application, in the ordinary use of language, to the goods in question. A trader is not entitled to monopolize such a word, denying its use entirely to other traders. Deceptive or confusing use is barred by the applicant's registration, but the Court should be careful not to shut out inappropriately other traders from the fair use of the language in ways that will not in reality deceive or confuse.”
Another circumstance of the trade that would be relevant to my determination is the fact that these goods are not bags of sweets. They are bought with thought and careful attention although it is true, as Mr Squires noted, that the period between purchases by average householders may increase the potential for imperfect recollection.
I am required, those things being so, to consider the potential for confusion when the applicant uses BRIVIS PROFILER in normal and fair ways. I believe that I should treat the fact that the applicant has, in the past, abridged its trade mark to simply PROFILER cautiously. The decision by the applicant to use PROFILER as a trade mark is no doubt a significant step, and one that may have serious legal consequences. However, that decision does not, of itself, show that BRIVIS PROFILER is deceptively similar to PROFILE.
I am of course mindful that what the applicant does as a matter of practice might well guide the recall of the ordinary members of the public in buying these products, educating them, as it were, that BRIVIS is a house mark. It may well be that, thus or otherwise, relevant buyers would come to refer to the applicant’s goods as PROFILER rather than using the trade mark in full. The applicant’s actions in abbreviating its trade mark are consistent with the norms of the trade in products as diverse as motor cars and confectionery. Mr Squires, under this heading, noted that it was quite usual for the public to refer to a HOLDEN COMMODORE as a COMMODORE and a CADBURY CHERRY RIPE as a CHERRY RIPE.
However, this matter cannot be simplified down to the single issue, “will the goods be called PROFILER?” It is not so much that there is a prospect of BRIVIS being left out, forgotten or otherwise excluded in the process of using or recalling the applicant’s trade mark. Rather, the question comes down to how I am to assess the likely weight that members of the relevant buying public would give to the two elements of the applicant’s trade marks and how they would react, those things being so, on encountering notional fair use of PROFILE on the goods now specified in the application. What weight, in other words, would they give to the obvious absence, from the opponent’s trade mark, of the word BRIVIS? What function, as part of this, would such buyers impute to the element PROFILER as an element of BRIVIS PROFILER, noting also that the opponent’s trade mark is simply the ordinary English word PROFILE?
Mr Squires rejected, very strongly, the argument that PROFILE was in any way descriptive. It remains as a registered trade mark and was registered, he noted, in Part A of the register under the older 1955 legislation. It is equally true, as he also noted, that there is no evidence that the word “profile” is descriptive of air conditioners. It is only when coupled with another word, typically “low”, that “profile” takes on any significant meaning. PROFILE, solus, is thus unlike the element “dura” that appeared, in Hearing Officer Thompson’s decision, to be a common enough allusion to durability.
One matter that was raised in submissions is the notoriety or otherwise of the element BRIVIS. There is no evidence that would justify me applying any particular weight to the reputation of that trade mark in the comparison of BRIVIS PROFILER with PROFILE. I note, further, Mr Sgourakis’s comments about the carefully-chosen words of the Full Court of the Federal Court in Henschke[4]. The issues around the proper weight to assign to the reputation of trade mark elements that have attained notoriety is simply one facet of deceptive similarity. It would go too far, in any case, to dismiss the element BRIVIS from the comparison. My task is to assess what the relevant public will make of the competing trade marks as wholes, allowing as best I can for what the public is likely to make of the relationship between the two elements of the applicant’s trade mark.
[4] CA Henschke & Co v Rosemount Estates Pty Ltd [2000] FCA 1539
On a related issue, Mr Squires sought to draw support from a number of decided cases. Both TUB HAPPY and VAPORUB were infringed, he noted, by usages of those words, or words that were very close to them, albeit the actual usage was in each case closely linked to the name of the (infringing, as the courts decided) manufacturer. Similarly, he noted that in Wellness Pty Ltd v Pro Bio Living Waters Pty Ltd[5], the respondent’s trade mark, which Mr Squires described in terms of “Pro Bio Living Waters”, was an infringement of the registered trade mark LIVING WATERS.
[5] [2004] FCA 438
I think the argument on which Mr Squires relies under this heading runs a risk of putting the cart ahead of the horse. In deciding an infringement matter, a court is required to decide what (if any) trade mark(s) are in actual use in the actions complained of, and to thereafter decide if any of the trade mark(s) so used is deceptively similar to the registered trade mark. In the present matter, my task is different: I am to consider if deception or confusion will result from the notional and fair use of the mark proposed for registration. In considering that usage, I am also to allow for the surrounding circumstances – specifically, that the public will be familiar with the use of house marks such as, perhaps, BRIVIS. However, I am in no way required to postulate how the use by the present applicant of the (arguably) infringing trade mark PROFILER, alone, might be viewed by a court of law. That is a separate question entirely and it cannot inform my decision as to the deceptive similarity, or otherwise, of the trade marks BRIVIS PROFILER and PROFILE. The relevant facts that emerge from the various infringement cases are simply the ultimate finding that various trade marks, as used, were deceptively similar to various other trade marks.
At an administrative level, Mr Squires noted that PACE and OLIN PACE had been found to be deceptively similar[6]. Again, a reputation extant in CONFEST precluded registration of EARTHHAVEN CONFEST[7]. SONJA CHLOE precluded CHLOE, while FOOD FOR LIFE prevented registration of OLIVER’S FOOD FOR LIFE[8]. Those decisions show that deceptive similarity can quite readily be established where a comparatively strong trade mark is adopted, holus bolus, by another person.
[6] (1994) AIPC 93-216
[7] This decision (Down To Earth (Victoria) Co- Operative Society Ltd v Schmidt (1998) 41 IPR 632,) was an early one under s 43. Strictly speaking, it did not involve a finding of deceptive similarity. Hearing Officer Forno elaborated on this in a supplementary statement of reasons, issued 9 April 1998. This statement highlights his critical finding that there was, to a limited extent only, "a perception among some people in the intended market that the word CONFEST has a meaning". However, Mr Squires’ analogy is obvious.
[8] See, respectively, Chloe SA v Lin Australia Pty Ltd [2006] ATMO 10 and Unilever Ltd v Taonga Nui Holdings NZ Ltd [2006] ATMO 6.
Admittedly, as Mr Sgourakis argued, whatever “profile” may mean, PROFILER is a step removed. BRIVIS PROFILER is again further removed. Although neither step is a large one, it cannot be said that the applicant has entirely subsumed the trade mark of the opponent.
It might, even so, be difficult to characterize the word PROFILE as of a descriptive character such that variations on it can easily be registered by others upon the addition of another, stand-alone, trade mark. The applicant’s usage of PROFILER as a distinguishing element would tend to negative the argument that PROFILE is primarily descriptive. Consistently, the evidence of both parties suggests that the trade marks PROFILER and PROFILE are being used, not as descriptive words, but to allude to some aspect of the shape or styling of the goods. Mr Bensted, for the applicant, shows that PROFILER was adopted to indicate that the particular units in respect of which it is used follow the roofline of the building whereon they are installed. Similarly, Mr Smith, for the opponent, shows that the trade mark PROFILE “was an allusion to the smaller size and the sleeker, more attractive appearance of the product”. But, beyond that allusion, neither “profile” nor “profiler” has any apparent reference to the shape or nature of air conditioners, ducted or otherwise.
If this were a completely abstract comparison, one where I was left to guess at how the element BRIVIS would be weighed in the memory and in the cognitive processes of relevant consumers, the matter might, arguably, approach balance. Absent a positive finding of deceptive similarity, registration would then be required. The present situation, however, is not such a case. It is a contested opposition, wherein the opponent has relied on material that originates from the applicant itself. I think I am entitled to regard the actions that the applicant has taken, in referring to its trade mark as PROFILER, as being of indicative value as regards the likely thought processes of its customers and potential customers. While I believe that I would have arrived at the same conclusion even without the material put before me by the opponent, the scales have now tipped against the applicant and I therefore find that the two trade marks are deceptively similar.
Section 44
Deceptive similarity has been established. Section 44(1) comes into play at this point. It reads, leaving aside various non-contentious explanatory notes:
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.
Given that the trade mark on which the opponent relies, PROFILE, is a long-standing registration in respect of “Installations for heating, ventilating, air conditioning and cooling, being air conditioners or evaporative room coolers”, s 44(1) is fully enlivened.
This, potentially, brings s 44(3) into consideration. Leaving aside s 44(2), which relates to applications in respect of services rather than goods, s 44(3) provides:
(3) If the Registrar in either case is satisfied:
(a) that there has been honest concurrent use of the 2 trade marks; or
(b) that, because of other circumstances, it is proper to do so;the Registrar may accept the application for the registration of the applicant's trade mark subject to any conditions or limitations that the Registrar thinks fit to impose. If the applicant's trade mark has been used only in a particular area, the limitations may include that the use of the trade mark is to be restricted to that particular area.
Note: For limitations see section 6.
With this in mind, Mr Sgourakis urged me to consider the five factors conveniently set out at Shanahan’s Law of Trade Marks and Passing Off, 3rd edition, at para 9.50.
Of the above criteria, one of the most important factors is the honesty of the concurrent user, "for if the concurrent use is not honest it is as nothing ", to quote Mr Myall in the Granada case[9]. Of the requisite honesty to be exercised, Romer J stated[10]
It is commercial honesty, which differs not from common honesty, that is the criterion; and it is commercial honesty alone that can found a basis for the commercial claims to which Sargant J referred in Maeder's case (1916) 33 RPC 77.
[9] [1979] RPC 303 at 313
[10] in Re JR Parkington & Co Ltd's Application (1946) 63 RPC 171 at 182-3
This would be consistent with the decision of Carr J in PB Foods Ltd v Malanda Dairy Foods Ltd[11]:
58 I do not accept the applicant's submission that once honesty of use is established, the other relevant factors of are lesser importance. As I read the authorities (including Granada Trade Mark), honesty is essential, but not sufficient to render the other relevant factors relatively unimportant.
[11] 1999 FCA 1602
Briefly, Mr Sgourakis argued that the applicant had adopted the trade mark honestly, used it extensively and was unaware of any instances of confusion. Given that the opponent’s trade mark was also in use, he argued that the matter had been well tested in the marketplace and ought to be resolved in the applicant’s favour.
Mr Sgourakis noted that there was no requirement for the applicant to be unaware of the opponent’s trade mark at the time of adoption. That may well be so as a tenet of case law. Equally, however, such an applicant, reliant on the honesty of its actions, is inevitably disadvantaged unless it can give a full and frank explanation of how it came, knowingly, to adopt a deceptively similar trade mark in the face of an existing trader’s rights. While s 44(3) is by no means limited to matters of honest concurrent use, it is predicated on circumstances that make registration “proper”, with the onus under the provision being on the applicant to establish the propriety of the matter.
Ultimately, the honesty of the applicant may lie in the fact that its goods are specialised. There is no direct competition between the applicant’s ducted installations and the comparatively portable appliances that bear the opponent’s trade mark. However, there is a distinct lack of candour in Mr Bensted’s declaration. He has said that his company uses the trade mark because the word “profiler” is “largely descriptive”. There is a degree of equivocation about this. It is by no means clear just what Mr Bensted means by “largely”, and the remaining reasons for adoption are not stated. Beyond this, Mr Bensted’s declaration acknowledges that his company is, now at least, aware that the trade mark PROFILE is registered. How and when his company came to know of that registration is unstated. Mr Bensted has been with the applicant for 14 years, and was appointed to his present position, Product Development, Engineering and Market Support Manager, on 1 December 2004. He refers also to having access to the applicant’s books and records, and to information supplied to him by other officers. His lack of explanation of the full circumstances of the adoption and usage of the trade mark is, it would appear, deliberate.
Against this, the history of this application shows that the use of the opposed trade mark commenced two months before the applicant had even had the benefit of the examiner’s report in relation to the now-opposed application. In other words, the applicant has conspicuously avoided giving a full account of the circumstances under which it first became aware of the state of the register of trade marks, without giving an unambiguous account for any objective basis for believing that its use would not result in deception or confusion. If it be said, as I have hypothesised, that the honesty of the applicant lay in the restricted use on ducted installations only, then the decision to apply for registration in respect of a broader range of goods would itself require an explanation.
That being so, I am not prepared to infer honesty from the facts that have been put in front of me. I do not suggest that the applicant in this matter set out to flout the existing registration, or brazenly sought to become a user in the face of the rights flowing from the registration of the opponent. Those, however, are two, albeit two of the more sinister, of many possibilities here. Without a better account of the motivations and actions of the applicant, I am not satisfied that the circumstances would make registration “proper”. While presumably both the public in general and users of trade marks in particular will understand that the provisions of s 44(3) are there to be used, I think that proper regard for the interests of the owners of registered trade marks will put a premium on the cautious and reserved application of those provisions. The provisions are not there to assist those who appear to be, knowingly and perhaps recklessly, encroaching on the territory of others without wishing to give a full account of their actions.
At the hearing, Mr Sgourakis put stress on the extent of the applicant’s usage since September 2003. However, while usage post filing is certainly relevant for the purposes of s 44(3)(b), the total time period is not particularly significant and the market share held by the applicant’s goods under the relevant trade mark is not particularly convincing. Those factors, in other words, while clearly important, are not present in such abundance that they can counter the conspicuous silence about other aspects of the applicant’s usage.
Accordingly, I am not prepared to apply the provisions of s 44(3), and the opponent has established a ground of opposition.
Conclusion
A ground of opposition has been established. I refuse to register the trade mark and I direct that the applicant pay the costs of the opponent.
This refusal may mean that the applicant will consider re-applying. It may be, therefore, that the parties would find my views on the balance of the presently-existing case to be of some guidance for the future. Let me say that, had a candid and satisfactory explanation been available about the circumstances of the adoption of the trade mark in the face of the opponent’s registration and the honesty of the usage over time, registration of the application may otherwise have been in order. I would not have found that the extent of the opponent’s reputation at the critical date, coupled with the distinguishable nature of the competing goods, the observable differences between the trade marks and the lack of evidence of confusion, was sufficient to activate s 60.
Terry Williams
Hearing Officer
14 January 2008
7
0