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

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
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…

Grounds of appeal

[14] The appellant contends that the primary judge erred in finding that the respondent had discharged the onus of establishing the matters required under the relevant provision.

[15] It was submitted that his Honour failed to give adequate weight to the evidence of the second witness, and that the findings of fact were not reasonably open on the material before the Court.

[16] The respondent, for its part, submits that no error is disclosed, and that the conclusions reached were well within the range of outcomes available to the primary judge.

Consideration

[17] It is convenient to deal first with the question of construction, as the resolution of that issue informs the remaining grounds advanced by the appellant.

[18] For the reasons that follow, we are of the view that the appeal should be allowed in part and the matter remitted for further determination.

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Details

Case: [2010] ATMO 11
Decision Date: 29 January 2010

CaseChat Overview and Summary

This decision concerns trade mark applications by Castrol Limited for the plain text words "LIQUID ENGINEERING". The Hearing Officer, Bianca Irgang, was required to determine whether these applications should be accepted for registration, notwithstanding objections under section 44 of the relevant Act, which typically prevents registration of marks identical or deceptively similar to existing registered marks.

The primary legal issues before the Hearing Officer were whether Castrol Limited could overcome the section 44 objection by relying on the provisions of honest concurrent use under section 44(3)(a) or by demonstrating that other circumstances made acceptance proper under section 44(3)(b). The Hearing Officer also had to consider whether Castrol's ownership of other trade marks incorporating "LIQUID ENGINEERING" granted it rights in the plain text words themselves.

The Hearing Officer found that Castrol Limited had not provided sufficient evidence of its use of the plain text words "LIQUID ENGINEERING" as trade marks, thus precluding reliance on honest concurrent use. Furthermore, the Hearing Officer determined that Castrol's existing registrations, which included "LIQUID ENGINEERING" as part of composite marks with additional words, slogans, and device elements, did not confer ownership or rights in the plain text words alone. Consequently, the Hearing Officer was not satisfied that the circumstances made it proper to accept the plain text trade marks for registration under section 44(3)(b).

As a result, the Hearing Officer refused to extend protection to IRDA 1029988 for the trade mark "LIQUID ENGINEERING" in respect of all goods listed in classes 1 and 4, finding a ground for rejection under section 44. However, protection was extended to IRDA 1116301 for services listed in classes 37 and 42 only.

Orders

Orders of the court

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Background

Background to the litigation

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Evidence

Evidence Before The Court

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Decision

Reasons for decision

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.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.Decision17A.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.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 1029988Under 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 1116301Under 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 IrgangHearing OfficerTrade Marks Hearings29 January 2010

Ratio Decidendi

Legal Principle Established

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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.