Centor Products Pty Ltd v D & D Group Pty Limited

[2005] ATMO 20

TRADE MARKS ACT 1995

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

Re:Opposition by Centor Products Pty Ltd to registration of trade mark application 892863(6) & 921041(6) - FORTE - filed in the name of D & D Groups Limited.

And

Re:Opposition by D & D Groups Limited to registration of trade mark application 919434(6) - FORTE - filed in the name of Centor Products Pty Ltd.

Delegate:

Jock McDonagh

Representation:

Centor Claude Anese of Cullen & Co, Attorneys, 

D &D   John Terry of Griffith Hack, Attorneys

Decision:

Section 52 opposition to 892863 & 921041 – grounds under ss42(b), 58 and 60 established – registration refused, costs awarded against D & D.

Section 52 opposition to 919434 – grounds under ss44, 58, 59 and 60 not established – application to proceed to registration, costs as above.

Background

1. D & D Groups Limited (“D & D”), filed trade mark application for the following trade marks:

Application Number:	892863	921041
Priority date:	23 October 2001	25 July 2002
Goods:	Class 6: Security hardware for the locksmith industry including locking devices of a type marketed through, or supplied by professional locksmiths and of a heavy duty character for relatively high security purposes and suitable for external applications for securing doors of building structures, such  as security hardware including integral face-mounted locking devices in the form of lockable bolts and hasp locks; none   of such security hardware being marketed for security hardware for cabinets, windows and internal doors	Class 6: Locks for gates and doors including hasplocks; parts and accessories for all the aforesaid goods including tongues, casings, hasps, cylinders, fixing and cover plates, coupling extensions and fitting templates; all the aforementioned goods being of metal or predominantly of metal and being security hardware for the locksmith industry including locking devices of a type marketed through, or supplied by professional locksmiths and of a heavy duty type character for relatively high security purposes and suitable for external applications for securing doors of building structures, but none of the aforementioned goods being locks marketed for cabinets, windows and internal doors
Trade Mark:	forte
Advertised:	9 May 2002	12 December 2002

1. Centor Products Pty Ltd (“Centor”) filed trade mark application for the following trade marks:

Application Number:	919434
Priority date:	10 July 2002
Goods:	Class 6 Dropbolts, latches and locks, all being made predominantly of metal; metal security fittings and other metal hardware for doors and windows
Trade Mark:	Forte
Advertised:	30 January 2003

1. Centor filed notice of opposition to the registration of 892863 on 7 August 2002, and to 921041 on 10 March 2003.  That notices listed effectively all of the available grounds of opposition provided in the Trade Marks Act 1995 ("the Act").

2. D & D filed notice of opposition to the registration of 919434 on 30 April 2003.  That notice, likewise, listed effectively all of the available grounds of opposition provided in the Trade Marks Act 1995 ("the Act").

3. The parties duly served and filed evidence in accordance with the Trade Marks Regulations 1995 ("the Regulations").

4. The matter came to a hearing before me, as a delegate of the Registrar of Trade Marks, in Canberra on 31 January 2005. Mr Claude Anese of Cullen & Co, Attorneys, represented Centor. Mr John Terry of Griffith Hack, Attorneys, represented D & D.

Evidence

1. The evidence relating to the oppositions to applications 892863 and 921041 consists of the following declarations:

Declarant	Date declared	Exhibits	Known As
Evidence in Support
Nigel Frank Spork	2.12.02	NFS-1 to NFS-11	Spork 1
David Alan Edward Ringsell	19.05.03	Ringsell
Jon Matthew Perceval	22.05.03	Perceval
Evidence in Answer
Phillip Doyle	28.11.03	PD-1 to PD-6	Doyle
Mark Johnson	27.11.03	Johnson
Evidence in Reply
Nigel Frank Spork	25.02.04	NFS-12	Spork 2
Applicant’s Further Evidence
Phillip Doyle	23.07.04	PD-7A to PD-7F, PD-8A to PD-8F	Doyle 2

1. The evidence relating to the opposition to 919434 (some of which is the same as in the preceding oppositions) consists of the following declarations:

Declarant	Date declared	Exhibits	Known As
Evidence in Support
Phillip Doyle	28.11.03	PD-1 to PD-6	Doyle
Mark Johnson	27.11.03	Johnson
Evidence in Answer
Nigel Frank Spork	25.02.04	Spork 3
Nigel Frank Spork	2.12.02	NFS-1 to NFS-11	Spork 1
David Alan Edward Ringsell	19.05.03	Ringsell
Jon Matthew Perceval	22.05.03	Perceval
Evidence in Reply
Phillip Doyle	23.07.04	PD-7A to PD-7F, PD-8A to PD-8F	Doyle 2

Grounds Relied Upon at Hearing

1. Prior to the hearing, the parties narrowed their grounds of opposition, and at the hearing the issues in contention were likewise narrowed in focus.

2. Centor relied on the ss42(b), 58 and 60 grounds of opposition for both oppositions.

3. D & D’s opposition was primarily based on s44 of the Act and also supplemented by ss58, 59 and 60. Central to D & D’s argument was the proposition that while the parties had applied for trade mark registration in respect of similar goods, such goods were not the same kind of thing, with the exception of some of the goods relating to the alleged prior use of 892863 with respect to 919434.

4. There was no dispute that the respective marks were substantially identical, since both parties relied upon this for their arguments. In considering whether marks are ‘substantially identical’, the relevant test remains that stated in Shell Company (Aust) Limited v Esso Standard Oil (Aust) Limited (1961) 109 CLR 407 at 414-415:

   ‘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 that comparison’

5. I am satisfied that each of the marks is substantially identical to the others.  It is well established that differences in font, case and inclusion of accents are insubstantial matters. Blount v Registrar of Trade Marks (1998) 40 IPR 498 (albeit in relation to subsection 41(6)).

6. The largest area of dispute was regarding whether or not the goods of the opposed parties were/are the same kind of thing.  It is clear from both the submissions of the attorney for D & D, and from D & D’s statements of goods that it was the intention of D & D to distinguish its goods from mere locks.

7. I note that the Macquarie Dictionary, Third Edition, defines the word “lock” as 1. a device for securing a door, gate, lid, drawer, or the like in position when closed, consisting of a bolt or system of bolts propelled and withdrawn by a mechanism operated by a key, dial, etc.

8. In my opinion, both parties sell varieties of locks. The statements of goods of both parties fall squarely within the above dictionary definition.  Locks are the ‘kind of goods’ the parties sell.  I note that the evidence of both parties establishes that they both sell their gods to locksmiths and hardware stores, amongst other purchasers of their goods.

Centor’s Oppositions to Applications 892863 and 921041

1. I shall first deal with the opposition to application 892863.

Section 58: Applicant not owner of trade mark

1. This section of the legislation reads:

Applicant not owner of trade mark

58. The registration of a trade mark may be opposed on the ground that the applicant is not the owner of the trade mark.

Note:  For applicant see section 6.

1. It is now well established law that, in order to succeed under this ground of opposition the opponent must establish three factors. These are:

   (i) that the respective trade marks of applicant and opponent be either identical or substantially identical (Carnival Cruise Lines Inc. v Sitmar Cruises Limited 31 IPR 375, (1994) AIPC ¶91-049, (1994) 120 ALR 495);

   (ii) that the respective goods of both parties be the 'same kind of thing' (Re Hicks' Trade Mark (1897) 22 VLR 636; 3 ALR 75); and

   (iii) that the opponent has the earliest claim to ownership based on use prior to both the application to register and actual use of the mark by the applicant (Settef S.p.A. v Riv-Oland Marble Co (Vic) Pty Ltd 10 IPR 402 at 413 and Re: Hicks's Trade Mark, supra, at 639).

2. As I have previously found, the respective marks of the applicant and of the opponent are substantially identical. I have also found that the evidence shows that the respective goods on which the parties have both used the mark are the same kind of thing.

3. The evidence also satisfies me that Centor has been using its mark as a trade mark prior to both the filing dates of D & D’s applications and of D & D’s actual use of its marks.

4. Consequently, I am satisfied that Centor is the owner of the trade mark, and that this ground of opposition is established.

Section 60: Prior reputation

1. To satisfy s.60, the opponent has the burden of establishing the following elements:

¨    a pre-existing trade mark;

¨    substantial identity or deceptive similarity between the applied for trade mark and the pre-existing trade mark;

¨    the acquisition of a reputation in Australia by the pre-existing trade mark; and

¨    a likelihood that, because of that reputation, use of the applied for trade mark would be likely to deceive or cause confusion.

1. I am satisfied that Centor has established a pre-existing trade mark.

2. As determined earlier, D & D’s marks are substantially identical to that of Centor.

3. The next question in respect of the s.60 ground, is whether the opponent has shown a sufficient reputation in its trade mark to satisfy the requirements of subsection 60 (b), such that the reputation is wide enough that deception and confusion is likely. The reputation must be shown to have existed at the priority date.

4. It is not necessary to prove reputation by direct evidence of consumer appreciation; it is commonplace to infer reputation from a high volume of sales, together with substantial advertising and other promotions: McCormick & Company v McCormick (2000) 51 IPR 102, at 127.

5. Reputation in Australia cannot be assumed - it must still be established as a question of fact - per Lockhart J in Conagra Inc v McCain Foods (Aust) Pty Ltd, (1992) 23 FCR 302. The opponent has demonstrated to my satisfaction a high volume of sales, together with substantial advertising and other promotions in Australia at or before the relevant date such as to establish reputation. On the basis of the evidence before me, I am satisfied that the requisite reputation existed at the relevant date.

6. I am satisfied that the reputation is such as to make likely that the use of D & D’s applied for marks would be likely to deceive or cause confusion.  Therefore, I am satisfied that this ground of opposition is established.

Section 42: The use of the Mark would be contrary to law

1. In assessing whether use would be contrary to law under s.42(b), the Registrar is obliged to take into account the operation of law and legislation other than the Act: Advantage-Rent-a-Car Inc v Advantage Car Rental Pty Limited [2001] FCA 683; (2001) 52 IPR 24.

2. The opponent submitted that the use of the Mark by D & D would be a contravention of s.52 of the Trade Practices Act 1974 ('TPA'), or various Fair Trading legislation, or the common law tort of passing off, namely, that the use of the Mark by D & D in respect of goods within the Specification would be conduct that was misleading or deceptive or likely to mislead or deceive, as suggesting some association with Centor.

3. In Equity Access Pty Limited v Westpac Banking Corporation (1989) 16 IPR 431 at 440-442, Hill J formulated a number of propositions as relevant to a determination of whether a contravention of s.52 was made out in a name/getup type case, which can be summarised as follows:

(a)for conduct to be misleading or deceptive it must convey in all the circumstances of the case a misrepresentation;

(b)there will be no contravention of s.52 unless the error or misconception results or would be likely to result from the conduct of the corporation and not from other circumstances for which the corporation is not responsible;

(c)conduct will be likely to mislead or deceive if there is a ‘real or not remote chance or possibility’ of misleading or deception, regardless of whether it is more or less than 50%;

(d)conduct causing mere confusion or uncertainty in the minds of the public, in the sense that there may be cause to wonder whether two products or services have come from the same source, is not necessarily co-extensive with misleading or deceptive conduct.  The court must consider whether a reasonably significant number of potential purchasers would be likely to be misled or deceived.  However, it is not necessary to show that all or substantially all persons in the market associate the name with the applicant/plaintiff’s goods/services, if it can be shown that if a substantial proportion of persons who are probable purchasers of the goods/services of the kind in question do so;

(e)the applicant/plaintiff must establish that it has acquired the relevant reputation in the name, that is to say that the name has become distinctive of the applicant’s business or goods in a particular country or geographical area (the area may be local or Australia wide);

(f)section 52 is not confined to conduct which is intended to mislead or deceive, and a corporation that acts honestly and reasonably may nonetheless engage in conduct that is likely to mislead or deceive.

1. These principles have been restated by the Full Court of the Federal Court in S&I Publishing Pty Limited v Australian Surf Lifesaver Pty Limited (1998) 168 ALR 396 at 402 - 403.

2. Applying these principles to the facts of the matters before me, and noting that D & D is a corporation subject to the TPA, I am satisfied that D & D’s use of its mark would be contrary to s52 of the TPA. Consequently, this ground of opposition is also made out.

D & D’s Opposition to Application 919434

1. As a result of my conclusions in respect of the previous opposition, I do not believe that the opposition by D & D can be sustained in respect of the ss44, 58 and 60 grounds. I am also satisfied that Centor has demonstrated an intention to use its mark, so s59 cannot be sustained either.

Conclusion and Decisions

1. Centor has established grounds of opposition on which it relied so that its oppositions have been successful. Pursuant to s.55 of the Act, I refuse to register applications 892863 and 921041.

2. The trade mark application 919434 may then proceed to registration 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 the appeal has been decided or discontinued.

Costs

1. Centor sought its costs in this matter. As Centor has been successful in these oppositions, I award costs against D & D and direct that D & D pay the costs of the Centor in accordance with the official scale.

Jock McDonagh

Hearing Officer

Trade Marks Hearings

29 April 2005