Caterpillar Inc v Puma SE

[2019] ATMO 99

TRADE MARKS ACT 1995

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

ReOpposition by Caterpillar Inc to registration of trade mark application 1803303 (18, 25) – procat - in the name of Puma SE

Delegate:                 Robert Wilson

Representation:       Opponent: Warwick Rothnie of Counsel, instructed by Herbert Smith Freehills

Applicant: Siobhan Ryan of Counsel, instructed by Watermark Intellectual Property Pty Ltd

Decision:                   2019 ATMO 99

Trade Marks Act 1995 (Cth) - Section 52 opposition: ss 42(b), 44 and 60 considered – no grounds of opposition established – trade mark may proceed to registration

Background

1. This decision concerns an opposition brought by Caterpillar Inc (‘the Opponent’) pursuant to s 52 of the Trade Marks Act 1995 (‘the Act’) to registration of the trade mark the subject of the application detailed below in the name of Puma SE (‘the Applicant’):

Application Number:

1803303

Filing Date:

21 October 2016

Goods:

Class 18: Bags made of imitation leather; Bags made of leather; Imitation leather; Leather; Leather cases; Trunks (luggage); Travelling bags; Umbrellas; Parasols; Walking sticks; Purses; Pocket wallets; Key cases; Carrying bags (other than disposable carrier bags); Bags for sports; Pouches (bags); Duffel bags; Rucksacks; School bags; Toilet bags

Class 25: Clothing; Footwear; Headgear for wear

(‘the Applicant’s Goods’)

Trade Mark:

(‘the Applicant’s Trade Mark’)

2. On 16 March 2017 the application’s acceptance for possible registration was advertised in the Australian Official Journal of Trade Marks. The Opponent filed a Notice of Intention to Oppose the registration on 16 May 2017 and a Statement of Grounds and Particulars (‘the SGP’) on 16 June 2017. The SGP nominated grounds of opposition under ss 42(b), 44 and 60 of the Act. The Applicant filed a Notice of Intention to Defend on 26 July 2017.

Evidence

3. The Opponent filed Evidence in Support of its opposition (‘EIS’) being a:

·Declaration made on 31 October 2017 by Stephen Straub, in house Attorney – Intellectual Property employed by the Opponent, with Exhibits 1 to 22 (‘Straub 1’); and

·Declaration made on 31 October 2017 by Diane Lantz-Rickard, the Global Brand Marketing Manager within Marketing and Brand of the Opponent, with Exhibits 1 to 5 (‘the Lantz-Rickard declaration’).

4. The Applicant filed Evidence in Answer (‘EIA’) being a:

·Declaration made on 7 February 2017 by Neil Narriman, Senior Head of Intellectual Property of the Applicant, with Annexures NN-1 to NN-10 (‘the Narriman declaration’); and

·Declaration made on 5 February 2018 by Linda Elizabeth Xie, a lawyer at Watermark Intellectual Property Pty Ltd, the representatives of the Applicant, with Annexures LEX-1 to LEX-6 (‘the Xie declaration’).

5. The Opponent filed Evidence in Reply (‘EIR’) being a:

·Declaration made on 12 April 2018 by Stephen Straub with Exhibits SS-1 to SS-13 (‘Straub 2’).

6. Once the time allowed for filing evidence had ended the parties requested an oral hearing. I heard the matter as a delegate of the Registrar of Trade Marks in Melbourne on 30 April 2019. Warwick Rothnie of Counsel, instructed by Herbert Smith Freehills, appeared for the Opponent. Siobhan Ryan of Counsel, instructed by Watermark Intellectual Property Pty Ltd, appeared for the Applicant. Counsels’ oral submissions were supplemented by a written summaries of submissions which were filed with IP Australia prior to the hearing.

The Opponent

7. According to Straub 1:

[The Opponent] is the world’s leading manufacturer of construction and mining equipment, diesel and natural gas engines, industrial gas turbines and diesel-electric locomotives.

[The Opponent] serves customers in over 190 countries worldwide, including in Australia. It has over 95,000 employees, of which 24,000 are located in the Asia Pacific region.

[The Opponent] was formed in 1925 following the merger of the Holt Manufacturing Company and the C.L. Best Tractor Co. The company was initially known as Caterpillar Tractor Co. The name was later changed to Caterpillar Inc., the current name of the Opponent, in the 1980’s.

[The Opponent’s] predecessor first adopted and commenced using the mark CATERPILLAR in around 1907 in respect of tractors. Around that time, Benjamin Holt, a founder of the Holt Manufacturing Company business, replaced tractor wheels with wooden tracks bolted to chains. … The CATERPILLAR trade mark was created and adopted to mark this innovation. …

[The Opponent] was established in the USA but expanded into the Australia market early in the company’s history. The first sale of [the Opponent’s] products occurred in Sydney in 1913. The CATERPILLAR mark was registered in Australia two years earlier in 1911. …

During the inter-war and early post-war period, [the Opponent’s] operations in Australia grew significantly. In 1925, [the Opponent] began local operations in Western Australia. Its first Australian plant was opened in 1956 in Melbourne coinciding with the 1956 Melbourne Olympics, which used CAT branded machines in the construction of event sites.

The CAT trade mark was adopted and first used by [the Opponent] in 1949. Over time, the CAT brand acquired such strong familiarity amongst consumers that it became and continues to be [the Opponent’s] primary public-facing brand name.

CAT became the cornerstone of [the Opponent’s] brand portfolio and remains so today. It is a key feature of [the Opponent’s] trade marks and trade dress. …

[The Opponent] first registered the mark CAT in Australia in 1949.

Throughout its history, Caterpillar has used the mark CAT in connection with machinery and equipment, such as tractors and trucks …

In or around 1976, Caterpillar diversified and expanded its product range to include goods such as clothing, footwear, bags and other accessories. … The offering of CAT-branded soft goods has continued to grow and diversify and has developed into a strong brand amongst both business and lifestyle consumers.

In the business sector, the CAT brand is used in respect of a very successful range of workwear apparel. …

In the lifestyle sector, CAT is a brand for street wear, urban wear and fashion apparel, footwear and accessories.

8. The Opponent is the owner of the registered trade marks detailed below (‘the Opponent’s Trade Marks’):

Trade Mark Number	Trade Mark	Priority Date	Class(es)	Typical goods/services
318732	CAT	1 June 1978	25	Clothing, footwear, headgear
502760	10 January 1989	18	Leather and imitation leather bags, wallets
502762	10 January 1989	25	Clothing, footwear, headgear
567670 (series)	10 January 1989	18	Leather and imitation leather bags, wallets
923125	CAT RACING	13 August 2002	16, 25, 28, 35	Paper and cardboard goods, printed matter, writing instruments, clothing, footwear, headgear, games and playthings, promotional services and marketing relating to motor sport
1246275	13 June 2008	25, 35	Clothing, footwear and headgear. Advertising, business management, maintenance of construction, mining and forestry equipment
1246277	CAT	13 June 2008	25, 35	Clothing, footwear and headgear. Advertising, business management, maintenance of construction, mining and forestry equipment

The Applicant

9. According to the Narriman declaration:

[The Applicant’s] house mark PUMA is a famous brand in Australia and worldwide in relation to goods including clothing, footwear, headgear, bags and accessories. Puma has been listed in Interbrand’s top 100 global brands in previous years, including 2009, and on other ‘best brand’ rankings. …

PUMA is one of the top five sportswear brands in the world by revenue. …

According to statistics on the Euromonitor Portal, PUMA is one of the top 15 brands, classified under ‘sportswear’ on the Portal, by revenue in Australia. …

[The Applicant] has sponsored motorsports and other sports in Australia and overseas since the end of the last century, many years before [the Opponent] started sponsoring NASCAR. …

The puma silhouette  (‘the PUMA device’) is eponymous, signifying the company, [the Applicant], which is well-known in Australia and overseas. …

The PUMA device frequently appears in conjunction with the PUMA word mark in advertising and on goods.

[The Applicant] created the PUMA word and device marks in around 1949.

[The Applicant] has been using the PUMA word mark and/or the PUMA device or historical variations of it (‘PUMA trade marks’) overseas since 1949 and in Australia since 1957.

[The Applicant] has been using the PUMA trade marks in Australia in relation to footwear since 1957; clothing since 1968; bags since 1966 and accessories since 1966.

Grounds of Opposition, Onus and Standard of Proof

10. As indicated above, in the SGP the Opponent nominated grounds of opposition under ss 42(b), 44, and 60. All grounds were pressed at the hearing. The onus of proof in an opposition rests upon the Opponent.[1] The relevant standard of proof is the ordinary civil standard based on the balance of probabilities.[2] The date at which the rights of the parties are to be determined is 21 October 2016, being the filing date of the application (‘the Relevant Date’).[3]

Discussion

[1] Food Channel Network Pty Ltd v Television Food Network GP [2010] FCAFC 58, [32].

[2] Telstra Corporation Limited v Phone Directories Company Ltd [2015] FCAFC 156, [132]-[133].

[3] Southern Cross Refrigerating Co v Toowoomba Foundry Pty Ltd [1954] HCA 82, [2].

Section 44

11. Relevant provisions of the Act with respect to the s 44 ground are reproduced below:

Section 44 - 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.

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.

Note 4: The regulations may provide that an application must also be rejected if the trade mark is substantially identical with, or deceptively similar to, a protected international trade mark or a trade mark for which there is a request to extend international registration to Australia: see Part 17A. …

Section 10 - Definition of deceptively similar

For the purposes of this Act, a trade mark is taken to be deceptively similar to another trade mark if it so nearly resembles that other trade mark that it is likely to deceive or cause confusion.

12. In the SGP the Opponent nominated the Opponent’s Trade Marks in support of s 44.

13. To successfully oppose the application pursuant to s 44 of the Act the Opponent must establish the requirements of s 44(1), i.e. that one or more of the Opponent’s Trade Marks:

·     is registered by a person other than the Applicant (‘the first requirement’); and

·     has a priority date which is earlier than the Relevant Date (‘the second requirement’); and

·     is in respect of at least some goods which are similar to some of the Applicant’s Goods (‘the third requirement’); and

·     is substantially identical with or deceptively similar to the Applicant’s Trade Mark (‘the fourth requirement’).

The first requirement

14.     All of the Opponent’s Trade Marks are registered by a person other than the Applicant, thus satisfying the first requirement.

The second requirement

15.     All of the Opponent’s Trade Marks have a priority date which is earlier than the Relevant Date, thus satisfying the second requirement.

The third requirement

16.     The Applicant’s Goods in Class 25 are similar to the goods in the same class of a number of the Opponent’s Trade Marks, being trade mark numbers: 318732, 502762, 923125, 1246275 and 124627 (‘the Class 25 trade marks’). The Applicant’s claim in Class 18 is similar to the goods in the same class of two of the Opponent’s Trade Marks, being trade mark numbers: 502760 and 567670 (‘the Class 18 trade marks’). The third requirement is thus satisfied.

The fourth requirement

Substantially identical

17.     When considering ‘substantial identity’ in Shell Co of Australia Ltd v Esso Standard Oil (Australia) Ltd Windeyer J said:

In considering whether marks are substantially identical they should, I think, be compared side by side, their similarities and differences noted and the importance of these assessed having regard to the essential features of the registered mark and the total impression of resemblance or dissimilarity that emerges from the comparison.[4]

[4] [1963] HCA 66, [12].

18.     The Opponent has not submitted that any of the Opponent’s Trade Marks is substantially identical to the Applicant’s Trade Mark. On a side by side comparison I am satisfied there are sufficient differences between all of the Opponent’s Trade Marks such that none are substantially identical with the Applicant’s Trade Mark.

Deceptive similarity

19.     Guidance for determining whether trade marks are deceptively similar is generally found in the judgment of Windeyer J in Shell Co (Aust) Ltd v Esso Standard Oil (Aust) Ltd:

On the question of deceptive similarity, a different comparison must be made from that which is necessary when substantial identity is in question. The marks are not now to be looked at side by side. The issue is not abstract similarity, but deceptive similarity.

Therefore the comparison is the familiar one of trade mark law. It is between, on the one hand, the impression based on recollection of the plaintiff’s mark that persons of ordinary intelligence and memory would have; and, on the other hand, the impressions that such persons would get from the defendant’s [trade mark].[5]

[5] [1963] HCA 66, [13].

20.     Two of the Class 25 trade marks are the trade mark CAT (‘the CAT word mark’), one is the trade mark CAT RACING (‘the CAT RACING word mark’) and two are the trade mark shown below:

‘the CAT logo’

21.     The Opponent has submitted that the Applicant’s Trade Mark is deceptively similar to the CAT word mark and the CAT logo. In my view, if the CAT word mark is found not to be deceptively similar to the Applicant’s Trade Mark neither will the CAT logo or the CAT RACING word mark be found to be so. This is because the additional stylisation and/or material contained in those trade marks would simply serve to create further points of difference. If the CAT word mark is found to be deceptively similar to the Applicant’s Trade Mark this would be sufficient to satisfy the fourth requirement in respect of the goods claimed by the Applicant in Class 25. Therefore, at this point I need only consider whether the CAT word mark is deceptively similar to the Applicant’s Trade Mark.

22.     The Opponent’s submissions in respect of deceptive similarity include the following:

[The Applicant’s Trade Mark], ‘procat’ combines the descriptive prefix ‘pro’ meaning superior or professional quality with the distinctive word CAT … Viewed in its entirety, taking into account fair and notional use, the surrounding circumstances and the effects of imperfect recollection, there is a tangible risk that consumers will be mistaken into believing that ‘procat’ goods are a superior or professional range of [the Opponent’s goods]. …

[I]t is necessary to take into consideration the objective surrounding circumstances, including the type of consumer and the circumstances in which the marks will be used, bought and sold. The goods specified in each of [the Opponent’s Trade Marks] and [the Applicant’s Goods] are all goods marketed to and bought by the general public. They are not goods just used in or by some narrow, specialised field.

Additionally, the goods would normally be purchased in store or on line based on the visual representation of the marks. Accordingly, the visual resemblance between the marks is of particular importance in assessing the issue of deceptive similarity in this matter.

Secondly, the term ‘procat’ does not have a meaning which differentiates it from CAT. ‘procat’ does not appear in any dictionaries. It is, however, an obvious portmanteau of two common English words; one, ‘pro’, being descriptive and the other, ‘cat’, which in this context is [the CAT word mark]. …

Thirdly, ‘procat’ contains the whole of [the CAT word mark]. …

The word CAT is not in the least bit descriptive of the goods in either classes 18 or 25. In relation to these goods, it is as distinctive as Kitto J’s ‘North Pole’ for bananas.[6]

Fourthly, the word ‘pro’ dos not provide any distinguishing features. It is the first element of the Applicant’s trade mark, but that is not decisive especially where, as here, it serves to characterise the qualities of the ‘cat’ and is not distinctive in and of itself. …

[6] Clark Equipment Co v Registrar of Trade Marks (1964) 111 CLR 551, 515.

23.     The Applicant disagreed with the Opponent’s assessment of deceptive similarity, and made submissions which included the following:

There are significant visual, aural and conceptual differences [between the respective trade marks], as follows:

Visual

a)[The Applicant’s Trade Mark], , is immediately differentiated from [the CAT word mark] by being a longer, six letter single word;

b)[T]he sans-serif font [in which the Applicant’s Trade Mark is rendered] is striking … Its rounded form unites the letters, while the elongated letters ‘p’ and ‘t’ bookend the word. This teaches away from the separation of the syllables, ‘pro’ and ‘cat’;

Aural

c)An obvious distinction is that [the Applicant’s Trade Mark] consists of two syllables, compared to the singular, ‘CAT’;

d)The distinguishing element ‘pro’ in the Opposed Mark is positioned at the front-end and receives the stronger emphasis when spoken than the suffix ‘cat’;

e)Any aural similarity arising from the common suffix ‘…cat’ is swamped by the additional syllable ‘pro’;

Conceptual

f)‘procat’ is an invented, meaningless word.

[The Opponent] bifurcates [the Applicant’s Trade Mark] to suit its case, but there is nothing about the appearance of [the Applicant’s Trade Mark] which suggests that it would be read as anything but the single word ‘procat’. … (citations omitted)

24.     On balance, I am inclined to the Applicant’s view that the CAT word mark is not deceptively similar to the Applicant’s Trade Mark. The Opponent provided a number of examples where, in my estimation, distinctive terms preceded by a rather less distinctive term were found to be deceptively similar to the distinctive term on its own. None of those examples is entirely analogous to the situation in the present case. The Opponent also provided a number of examples to demonstrate how ‘pro’ when used in a trade mark suggests superior quality or attributes. Those examples were: Timberland Pro, Nike Pro and Adidas Pro. If the Applicant’s Trade Mark had been CAT PRO the result may well have been different. I am not satisfied that when taken as a whole the respective trade marks so nearly resemble each other that the use of the Applicant’s Trade Mark is likely to deceive or cause confusion.

25.     The Class 18 trade marks are shown below.

502760 567670

I note that trade mark 502760 is the CAT logo, and trade mark 567670 is the registration number of a series of trade marks consisting of the CAT word mark and the CAT logo. For the same reasons as stated above, I am not satisfied that any of the Class 18 trade marks is deceptively similar to the Applicant’s Trade Mark. The Opponent has therefore failed to establish this ground of opposition.

Section 60

26. The ground based on s 60 of the Act is particularised in the SGP as follows:

[The Opponent], itself and through its predecessor in title and authorised licensees, has used its CAT trade mark in connection with clothing, footwear, headgear, bags and related accessories in Australia since the 1970s. The brand is used on its own, with other elements and in stylised fonts, including:

[The Opponent’s] reputation in CAT has been developed as a result of long standing use in Australia, such as through advertising, promotion, publicity and sales of goods, including on clothing, footwear, headgear, bags and related accessories. Such reputation was well established as at the priority date of the application under opposition.

As a result of [the Opponent’s] reputation in CAT, use of the opposed trade mark by the Applicant on the goods claimed in the application is likely to deceive or cause confusion.

27. Section 60 of the Act is reproduced below:

Section 60 - 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.

28. To establish its ground of opposition under s 60 the Opponent must demonstrate that at the Relevant Date the CAT word mark and/or the CAT logo had acquired a reputation in Australia amongst a significant number of persons in the relevant market and because of that reputation use of the Applicant’s Trade Mark would be likely to deceive or cause confusion.

Reputation

29.     In McCormick & Co Inc v McCormick, Kenny J considered what is intended by the word ‘reputation’. Her Honour had consulted the Macquarie Dictionary and on the basis of the definition provided decided that, in s 60, reputation is ‘the recognition of the [trade mark] by the public generally’.[7] Her Honour quoted with approval the following words of Lockhart J from Re ConAgra Inc v McCain Foods (Aust) Pty Ltd:

[R]eputation within the jurisdiction may be proved by a variety of means including advertisements on television or radio, or in magazines and newspapers within the forum. It may be established by showing constant travel of people between other countries and the forum and that people within the forum, (whether residents there or persons simply visiting there from other countries) are exposed to the goods of the overseas owner …[8]

[7] [2000] FCA 1335, [81].

[8] [1992] FCA 159, [118].

30.     On the subject of reputation Kenny J also referred to the Hugo Boss decision, where the Registrar’s delegate observed:

[I]t is true that the assessment of the reputation of a trade mark goes far beyond mere examination of sales or turnover of goods sold under that trade mark and contemplation of the advertising and promotional figures.

As regards a trade mark, its reputation derives both from the quantum of sales under that mark and also its esteem, or image, projected by that trade mark. The quantum of sales, advertising and promotion contributes to the ‘recognition’ component of the trade mark’s reputation. The credit, image and values projected by a trade mark attaches to the ‘esteem’ component of the reputation as do the public events and other trader’s marks with which [the] owner of the trade marks in question chooses to associate the trade marks via sponsorships, cross-promotions, ‘contra deals’ and so forth.

It follows that a trade mark used in relation to goods with comparatively low sales may have a high and strong reputation by virtue of the high credit or esteem in which it is held, or, conversely, that a trade mark which has very high sales may have a strong reputation notwithstanding the lack of esteem that attaches to it. The particular popular images, or sets of values, that attach to the trade mark are also, therefore, important parts of the reputation of the trade mark and may be as strong an associative force in the minds of the public as the association of the trade marks with the goods or services themselves.[9]

[9] Jackson International Trading Co Kurt D Bruhl GMbH & Co KGv Hugo Boss AG [1999] ATMO 23 (Thompson).

31.     The Applicant has conceded that before the Relevant Date the CAT logo had acquired a reputation in Australia. I agree with the Applicant and assess that reputation as significant. However, the Applicant has not conceded that the CAT word mark has acquired a reputation in Australia, but submitted:

The word mark is primarily used to identify the logo or its source. It invariably appears in conjunction with the logo and/or the company name, Caterpillar.

While there is some evidence of use of the CAT word mark, it is minimal and insufficient to satisfy me that it had acquired a reputation before the Relevant Date.

Likelihood of deception or confusion

32. I found in considering s 44 that the CAT logo and the Applicant’s Trade Mark were sufficiently different that the use of the Applicant’s Trade Mark is unlikely to deceive or cause confusion. In some circumstances reputation acquired by a trade mark will serve to increase the likelihood of deception or confusion; in other circumstances it militates against deception or confusion. ‘Reputation in a trade mark can thus be a double-edged sword’.[10] Reputation often increases the likelihood of deception or confusion where very similar or identical trade marks are used in respect of goods or services which are not similar or closely related (as contemplated by s 44). However, where the trade marks under consideration have notable differences the acquisition of a reputation by one trade mark often means that persons familiar with that trade mark will be acutely aware of its characteristics. In those situations, differences between the respective trade marks will be obvious to those persons, thereby reducing the likelihood of deception or confusion.

[10] Flight Centre Pty Ltd v World Flight Centre Pty Ltd [2003] ATMO 60, [21].

33.     In the present matter, the reputation acquired by the CAT logo would serve to reduce the likelihood of deception or confusion. I am not satisfied, therefore, that because of the reputation acquired by the CAT logo that the use of the Applicant’s Trade Mark would be likely to deceive or cause confusion.

34.     The Opponent has failed to establish this ground of opposition.

Section 42(b)

35. Section 42 of the Act is reproduced below:

42 Trade mark scandalous or its use contrary to law

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

(a) …

(b) its use would be contrary to law.

36.     The onus is on the Opponent to establish that use of the Applicant’s trade mark would be, rather than could be, contrary to law on the balance of probabilities.[11]

[11] Advantage Rent-a-Car Inc v Advantage Car Rental Pty Ltd [2001] FCA 683.

37. The ground of opposition pursuant to s 42 of the Act was particularised in the SGP as follows:

Registration of the opposed trade mark is contrary to law because CAT is the owner of a prior reputation in the trade mark CAT in connection with clothing, footwear, headgear, bags and related accessories.

CAT’s reputation in CAT has accrued through longstanding use of the mark on these goods by CAT itself and by its predecessor in title and authorised licensees in Australia continuing to the present date.

Use of the opposed trade mark by the Applicant would be in breach of sections 18 and 29 of the Australian Consumer Law because it is likely to cause consumers to be misled or deceived or would falsely represent that the Applicant’s goods or business originate from, are affiliated with or are in some way connected to CAT’s goods or business, which they are not.

Use of the opposed trade mark by the Applicant would also constitute passing off and trade mark infringement.

38. In the present matter the Opponent has failed to establish a ground of opposition under s 60 of the Act. As the test for misleading or deceptive conduct under s 18 of the Australian Consumer Law (‘the ACL’) is a more stringent test than that for deception or confusion under s 60,[12] I am satisfied that the Opponent has also failed to establish that the use of the Applicant’s Trade Mark would be contrary to s 18 of the ACL.

[12] See, e.g.: Ownit Homes Pty Ltd v Ownit Conveyyancing Pty Ltd [2005] ATMO 47, [36]; Parkdale Custom Built Furniture Pty Ltd v Puxu Pty Ltd (1982) 149 CLR 191, 198 (Gibbs CJ).

39. Where a trade mark does not run afoul of s 18 of the ACL, neither will it run afoul of s 29 of the ACL, nor the tort of passing off. In Pacific Publications Pty Ltd v IPC Media Pty Ltd, Beaumont J considered—in connection with the superseded Trade Practices Act1974 (‘TPA’)—that ‘the Court’s conclusion on s 52 would necessarily carry with it a conclusion on s 53(c) and (d)’.[13] Sections 53(c) and 53(d) of the TPA are the equivalent provisions to ss 29(1)(g) and 29(1)(h) of the ACL. Hill J in Re Equity Access Pty Ltd v Westpac Banking Corporation also addressed the relationship between s 52 of the TPA and passing off. His Honour considered that:

The scope for the operation of s 52 will thus be broader than that involved in the tort of passing off so that in a case such as the present where the claim is for the protection of the reputation in a name against the use of that name by another, failure to succeed under s 52 or s 53 will invariably mean that proceedings for passing off would likewise fail.[14]

[13] [2003] FCA 104, [107].

[14] [1989] FCA 506, [40] (citations omitted).

40.     For these reasons I am not satisfied that use of the Applicant’s Trade Mark would be contrary to law. Therefore, the Opponent has failed to establish this ground of opposition.

Decision

41. Section 55 of the Act relevantly provides:

55Decision

(1)Unless subsection (3) applies to the proceedings, 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.

42.     The Opponent has failed to establish any of the grounds of opposition it nominated in the SGP. Accordingly, application 1803303 may proceed to registration after one month from the date of this decision. If the Registrar has been served with a notice of appeal before that time, I direct that registration shall not occur until either the appeal is withdrawn or a court so orders.

Costs

43. The Applicant has sought an award of costs in its favour. I see no reason to depart from the general rule that costs follow the event. As the Opponent has failed to establish a ground of opposition, I award costs against the Opponent under s 221 of the Act in line with the amounts in Schedule 8 of the Trade Mark Regulations 1995.

Robert Wilson
Hearing Officer
Trade Mark Oppositions and Hearings
28 June 2019