Castrol Limited

[2010] ATMO 11

TRADE MARKS ACT 1995

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

Re:Trade mark application numbers 1029988 (4) and 1116301 (1, 4, 37, 42) - LIQUID ENGINEERING- in the name of Castrol Limited (International Registrations Designating Australia numbers 834961 and 882813)

Delegate:	Bianca Irgang
Representation:	Holder: Written submissions by Fiona Brittain of Davies Collison Cave
Decision:	2010 ATMO 11 Regulation 17A.24 – Marks are substantially identical – consideration of paragraphs 44(3)(a) and (b) – evidence insufficient for acceptance and no other circumstances made out. IRDA 1029988 - full refusal. IRDA 1116301 – protection extended to classes 37 and 42 only.

Background

1. Castrol Limited (“the holder”) applied for two International Registrations Designating Australia (“IRDAs”) through the International Bureau of the World Intellectual Property Organisation (“the IB”) for the following trade marks:

   Trade mark:   LIQUID ENGINEERING

   Trade mark registration:     1029988

   International registration:    834961

   Lodgement Date:                  6 August 2004

   Convention details:              27 July 2004
     2369132 – UNITED KINGDOM

   Goods Specification:            Class: 4 Industrial oils and greases; lubricating oils and greases; non-chemical additives for fuels, lubricants and greases; dust absorbing, wetting and binding compositions; illuminants; gear oils; transmission oils

   Trade mark:   LIQUID ENGINEERING

   Trade mark registration:     1116301

   International registration:    882813

   Lodgement Date:                  22 December 2005

   Convention details:              24 June 2005
     2395082 – UNITED KINGDOM

   Goods Specification:            Class: 1 Chemicals used in industry, science, photography, horticulture and forestry; chemical products for use in industry and/or for use in manufacturing processes; synthetic materials for absorbing oil; detergent additives to petrol; chemical additives for fuels, lubricants and greases; adhesives for industrial purposes; anti-freeze; brake fluids; brazing preparations; degreasing preparations for use in manufacturing processes; oil dispersants; fluids for hydraulic circuits; soldering chemicals; transmission oils and fluids; coolants; chemical products for use in treatment of cooling systems

   
   Class: 4Cutting and grinding fluids and oils

   
   Class: 37Servicing, lubrication, maintenance, and repair services for vehicles, engines and machinery; anti-rust treatment for vehicles; tyre fitting and puncture repair; motor vehicle wash services; vehicle service stations

   
   Class: 42Analysis, testing and monitoring of oils, coolants, greases and lubricants; monitoring of fuel and lubricant levels in machines and in vehicles; analysis and diagnosis of wear rates, defects and faults in engines and machinery; advisory services based upon the results of the aforementioned analysis and diagnosis; monitoring services relating to the servicing, lubrication, maintenance and repair services for vehicles, engines and machinery; inspection services relating to the servicing, lubrication, maintenance, and repair services for vehicles, engines and machinery

2. The IRDAs were examined and, on 6 December 2004 and 6 August 2006 respectively, Notices of Provisional Refusal for both of the holder’s IRDAs were issued. The following trade mark registration no. 760645 has been raised as a ground for rejection under section 44 of the Trade Marks Act 1995 (“the Act”) on the basis that its goods specification encompassed similar goods to those specified in the holder’s IRDAs and the trade mark was substantially identical to the holder’s trade marks:

Trade mark:   LIQUID ENGINEERING

Trade mark registration:     760645

Lodgement Date:                  24 April 1998

Owner:  Liquid Engineering 2003 Pty Ltd

Goods Specification:            Class: 1 Chemicals used in industry; chemicals used for maintaining plant, machinery and equipment including automobiles; fuel-saving preparations; chemical additives to motor fuel; chemical preparations for use as a water-proofing solution or as a coating composition or as a type of pipe threading composition; anti-spatter product for welding, brazing and soldering

Class: 2Chemicals for the prevention of corrosion and rust; anti-corrosive preparations; anti-rust preparations (for preservation); undercoating for vehicle chassis; paints

Class: 3 Cleaning preparations; rust removing prepartions; degreasers other than for use in manufacturing processes

Class: 4Lubricants; industrial oils; industrial greases; lubricating oils, additives to lubricating oils; lubricating penetrants; non-chemical additives to motor fuel

1. Protection in respect of the services specified in IRDA 1116301 was not disputed by the examiner. However, the examiner issued provisional refusals under Part 17A.16 of the Trade Mark Regulations 1995 (“the Regulations”) on each of the holder’s IRDAs in respect of the goods in classes 1 and 4. The holder provided evidence of use which the examiner did not find persuasive. Eventually, the examiner advised that unless the holder was able to produce additional evidence or other circumstances in support of the application she would initiate a full refusal against the IRDAs. The holder requested a decision on the matter under Part 17A.17 of the Regulations.

   The Law

2. 17A.28 Grounds for rejecting IRDA

   (1)The grounds for rejecting an IRDA are the grounds set out in sections 39 to 44 of the Act, as affected by subregulation (2).

   (2)Sections 39 to 44 apply in relation to an IRDA as if:

   (a)a reference in those sections:

   (i)to an application for the registration of a trade mark were a reference to the IRDA; and

   (ii)to an applicant were a reference to the holder of the IRDA; and

   (b)the reference in paragraph 41 (6) (a) to the filing date in respect of an application were a reference to the date of international registration or the date of recording, as applicable, in respect of the IRDA; and

   (c)each reference in subparagraphs 44 (1) (a) (i) and (2) (a) (i) to a trade mark registered by another person included a protected international trade mark held by another person; and

   (d)each reference in subparagraphs 44 (1) (a) (ii) and (2) (a) (ii) to a trade mark whose registration is being sought by another person included a trade mark in respect of which the extension of protection to Australia is being sought by another person.

3. Grounds for rejection of these IRDAs have been raised under section 44 of the Act which relevantly states:

4. 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)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.

   (2)Subject to subsections (3) and (4), an application for the registration of a trade mark (applicant’s trade mark) in respect of services (applicant’s services) 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 services or closely related goods; or

   (ii)a trade mark whose registration in respect of similar services or closely related goods 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 services is not earlier than the priority date for the registration of the other trade mark in respect of the similar services or closely related goods.

   (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.

   The Evidence

5. The holder has provided a single statutory declaration in support of its trade mark applications:

Declarant	Position	Date Made	Exhibits
Stephen Tony Berry	Trade Mark Officer of Castrol Limited	23 March 2009	STB-1 to STB-4

Discussion

1. The cited trade mark registration has an earlier priority date than both of the holder’s IRDAs and its goods are the same as those goods claimed in the holder’s IRDAs. The trade marks are substantially identical. However, these are not the issues before me in these proceedings and the holder has not argued against these findings. Rather, it is up to me to determine if the holder’s trade marks may be accepted under the provisions of subsections 44(3) (a) or (b) of the Act, in classes 1 and 4, on the basis of the evidence provided by the holder.

2. In McCormick & Company Inc v McCormick [2000] FCA 1335, Kenny J said of subsection 44(3) and honest concurrent use:

   Section 44(3) gives the Registrar a discretion to accept an application that would otherwise be rejected under s 44(1) in the case of honest concurrent use or other circumstances making it proper to do so. The authorities establish that the principal criteria for determining whether registration should be permitted pursuant to s 44(3) include:

   (1) the honesty of the concurrent use;

   (2) the extent of the use in terms of time, geographic area and volume of sales;

   (3) the degree of confusion likely to ensue between the marks in question;

   (4) whether any instances of confusion have been proved; and

   (5) the relevant inconvenience that would ensue to the parties if registration were to be permitted.

   See In Re Alex Pirie & Sons Ltd's Application (1932) 49 RPC 195; (1933) 50 RPC 147 at 159-160; In Re John Fitton & Co Ltd's Application (1949) 66 RPC 110 at 112; and Stingray Surf Co Pty Ltd v Lister (1997) 37 IPR 306 at 310-311. These factors are not necessarily exhaustive of the matters to be considered, but they are a useful guide: see In Re Electrix Ltd's Application [1957] RPC 369 at 379.

3. The holder has stated that its “LIQUID ENGINEERING” trade mark was originally conceived in the United Kingdom in 1976. I am satisfied that the holder honestly adopted its various “LIQUID ENGINEERING” trade marks for use. The statutory declaration of Stephen Berry (the “Berry declaration”) states that the holder first used its trade mark in Australia on the relevant goods and services between April 1993 and until some time in 1995. Mr Berry avers that the holder then recommenced using its trade mark in Australia from 2006 to the present. However, much of the holder’s evidence is of little assistance in supporting Mr Berry’s claims.

4. Exhibit STB-1 of the Berry declaration contains a list of authorised agents or distributors of goods and services under a “LIQUID ENGINEERING” trade mark. However, there is nothing in the evidence to indicate how long these traders have been dealing in the holder’s goods, nor does the Berry declaration itself refer to this matter.

5. The holder has provided sales and advertising expenditure figures for the periods 1993 to 1995 and 2006 to present. The rights of the parties are to be determined as at the date of the application for registration[1]. Therefore, the figures from 1993 to 1995 are the most relevant for consideration of whether the holder’s trade marks may be accepted under the provisions of section 44(3). However, the figures from 2006 to the present may also be considered by exercise of the Registrar’s discretion under section 44(3)[2].

   [1] Southern Cross Refrigerating Co v Toowoomba Foundry Pty Ltd (1954) 91 CLR 592 at 594-95; In Re Simac SpA Macchine Alimentari's Application (1987) 10 IPR 81 ("Simac") at 90-91; Aromas Pty Ltd v Aroma Coffee & Tea Co Pty Ltd (1997) 40 IPR 75 ("Aromas") at 86; and Trepper v Miss Selfridge Ltd (1991) 23 IPR 335 at 346.

   [2] Trussardi SpA v Rundles Pty Ltd (1993) 25 IPR 502 (Reg); P B Foods Ltd v Malanda Dairyfoods Ltd (1999) 47 IPR 27 (FC); VB Distributors Ltd V Matsushita Electric Industrial Co Ltd (1999) 53 IPR 466

6. Mr Berry outlines in paragraph 10 of his declaration that the holder spent a considerable amount on advertising in 1994 and 1995. However, there is limited documentation in the evidence to support this assertion. Exhibit STB-2 is a selection of advertising and promotional materials which are largely un-dated or post-date the priority dates of the IRDAs. Most of these advertisements do not feature a “LIQUID ENGINEERING” trade mark or feature “LIQUID ENGINEERING” trade marks which include a number of other striking elements.

7. Exhibit STB-3 comprises a compilation of three CDs, the content of which appears to be digital copies of many of the advertisements found in exhibit STB-2. These CDs also contain a number of radio and television commercials. However, the vast majority of all the advertisements show what Jacob J described in Phillips Electronics NV b Remington Consumer Products Ltd[3] as a ‘limping mark’; that is, the words “LIQUID ENGINEERING” are more often than not accompanied by the term “CASTROL” or other expressions and striking elements. Reproduced below are the most common examples of the “LIQUID ENGINEERING” trade marks used by the holder.

   [3] (1997) 40 IPR 279

Example 1 Example 2

1. I note that the holder has obtained Australian trade mark registrations 600116 and 836112 in classes 4 and 16 for the first of above trade marks. I believe that the “CASTROL LIQUID ENGINEERING” trade mark is (and has always been intended) to be viewed as a whole and not as two separate trade marks. The holder has also registered the second example as a trade mark (registration no. 1094499). The slogan “IT’S MORE THAN JUST OIL. IT’S LIQUID ENGINEERING” (registration no. 1116347) has obtained registration in classes 1, 4, 37 and 42. Indeed, from the holder’s evidence it does not appear that the plain words “LIQUID ENGINEERING” are being used as a trade mark by the holder.

2. With this in mind, I refer to s. 7 of the Act which provides:

   7Use of trade mark

   (1)       If the Registrar or a prescribed court, having regard to the circumstances of a particular case, thinks fit, the Registrar or the court may decide that a person has used a trade mark if it is established that the person has used the trade mark with additions or alterations that do not substantially affect the identity of the trade mark.

   Note:For prescribed court see section 190.

3. I consider that the prominent and striking visual device(s), along with the term “CASTROL” is an addition to the “LIQUID ENGINEERING” phrase which substantially affects its identity. It is likely that the holder’s above mark would be recognised by the stylised device and referred to by the term “CASTROL”. It is also likely that the holder’s slogan “IT’S MORE THAN JUST OIL. IT’S LIQUID ENGINEERING” would not be referred to by consumers solely as “LIQUID ENGINEERING”. I am satisfied that consumers would remember the striking, two part slogan and refer to it as such. As such, the use of the above trade marks demonstration in the holder’s evidence does not constitute use of the plain words “LIQUID ENGINEERING” for which the holder is seeking registration.

4. In exhibit STB-3 there are some examples of advertising such as the “engine morphing” television advertisement, which may place more or equal emphasis on the words “LIQUID ENGINEERING” and the CASTROL device. However, these few examples are not sufficient to support accepting the present IRDAs under the provisions of subsection 44(3)(a). Indeed, the holder’s evidence demonstrates that the vast majority of its documented use is in relation to the aforementioned composite trade marks for which it has already obtained registration.

5. There is no reason the holder cannot use one, two or several trade marks together in its advertising. However, the essential consideration is that the plains words “LIQUID ENGINEERING” must be operating, in their own right, as a trade mark. They must, in their own right, serve the purpose of identifying the holder's goods within the particular trade. The evidence does not demonstrate that the plain words “LIQUID ENGINEERING” are acting as a trade mark in relation to the holder’s goods. Therefore, the holder’s evidence of use of its composite trade marks is not persuasive for my considerations under section 44.

6. I note from exhibit STB-2 the advertising presentation by Lintas Advertising Agency which is dated 25 January 1996. In this presentation the Lintas Advertising Agency makes reference to “Liquid Engineering”. However, in the absence of more substantial demonstrated use of the plain text words by the holder, I am of the opinion that these references in the text of the presentation are more likely to refer to use of the holder’s composite trade marks rather than the plain words “LIQUID ENGINEERING”. The same can also be said of the figures provided in the Berry declaration which relate to advertising expenditure and sales revenue. As impressive as the holder’s early sales figures are, they are more realistically attributed to the use of the holder’s composite trade marks which include the distinctive term “CASTROL”, rather than any sales of goods bearing only the plain words “LIQUID ENGINEERING”.

7. The holder may have used the plain words “LIQUID ENGINEERING” prior to making its applications but the evidence before me does not support any such finding. The majority of the evidence does not feature the plain words “LIQUID ENGINEERING” distinguishing the holder’s goods and acting as a trade mark. I am also hard pressed to see how advertising expenditure and sales figures relating to the striking CASTROL composite trade marks can carry any significant weight in demonstrating use of the plain words “LIQUID ENGINEERING”. I am not satisfied that the holder’s evidence is sufficient for me to apply the provisions of subsection 44(3)(a) and accept the trade marks for possible registration.

8. As the holder has not provided sufficient evidence which demonstrates use of the plain text words “LIQUID ENGINEERING” as trade marks, the provisions of honest concurrent use (section 44 (3)(a)) are not available to the holder in order to overcome the section 44 objection. I now turn to subsection 44(3)(b) of the Act to determine if the trade mark may be accepted taking into account other circumstances that make acceptance proper. “Proper” is defined by the Oxford English Dictionary as:

   Suitable for a specified or implicit purpose or requirement; appropriate to the circumstances or conditions; of the requisite standard or type; apt, fitting; correct, right. [4]

   The “other circumstances” consist of the extent of applicant’s use of the plain words “LIQUID ENGINEERING” after the filing date and of the existence of the applicant’s other “LIQUID ENGINEERING” trade marks in both Australia and other jurisdictions. 

   [4] "proper”, adj. (1) The Oxford English Dictionary, 2nd ed. 1989, OED Online, Oxford University Press, 4 Apr. 2000 <>

   I note from the holder’s submissions that because it has ownership of trade mark registrations 600116, 836112, 1047183, 1094499 and 1116347 the holder now asserts it has rights pertaining to the use of the words “LIQUID ENGINEERING”. I do not agree with this argument. While it is true that these trade mark registrations incorporate the words “LIQUID ENGINEERING”, they also include a number of other elements including additional words, slogans and/or very striking and prominent device elements. The holder is the registered owner of the various combinations of these elements. However, these registrations do not necessarily grant the holder ownership or rights in the plain words “LIQUID ENGINEERING”. This is not a sufficient reason for the present applications to be accepted under the provisions of subsection 44(3)(b); just as the extensive evidence of use of these composite “CASTROL” trade marks from 2006 is also not a sufficient reason to accept the plain text trade marks.

1. I am not satisfied that the current circumstances make it proper to accept for registration these trade marks. Accordingly, I do not find it proper in the circumstances to apply the provisions of subsection 44(3)(b) to the holder’s trade marks in these matters.

   Decision

   17A.24Final decision on examination

   (1)The Registrar must, after the examination, accept the IRDA unless he or she is satisfied that:

   (a)it is not in accordance with this Division; or

   (b)there are grounds for rejecting it.

   (2)The Registrar may accept the IRDA subject to conditions or limitations.

   (3)The Registrar must reject an IRDA, in whole or in part, if the Registrar is satisfied that:

   (a)it is not in accordance with this Division; or

   (b)there are grounds for rejecting it, in whole or in part.

2. As the holder’s trade marks are substantially identical to trade mark registration 760645 and subsections 44(3)(a) and (b) do not apply, I am satisfied that a ground for rejection under section 44 applies to all the goods listed in classes 1 and 4 of these IRDAs.

IRDA 1029988

1. Under Part 17A.24(3)(b) of the Regulations, I refuse to extend protection to IRDA 1029988 in respect of all the goods listed for the trade mark “LIQUID ENGINEERING”.

IRDA 1116301

1. Under Part 17A.24(3)(b) of the Regulations, I decide to extend protection to IRDA 1116301 one month from the date of this decision in respect of the services listed in classes 37 and 42 only.

   Bianca Irgang
   Hearing Officer
   Trade Marks Hearings
   29 January 2010