Chromagen Solar Australia Pty Ltd v First Solar, Inc

[2015] ATMO 45

TRADE MARKS ACT 1995

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

Re:Opposition by Chromagen Solar Australia Pty Ltd to registration of trade mark application no(s) 1422626 – FIRST SOLAR with device– and 1422628 – FIRST SOLAR - filed in the name of First Solar, Inc.

Delegate:	Bianca Irgang
Representation:	Opponent: Stephen Rebikoff of Davies Collison Cave Applicant: Gary Nock of Counsel instructed by Cullens
Decision:	2015 ATMO 45 Opposition under section 52 of the Trade Marks Act 1995 – Sections 42(b), 44 and 60 pressed – section 44 established for all goods and services – costs awarded against the applicant.

Background

1. First Solar, Inc (‘the applicant’) filed its trade mark applications on 29 April 2011 in classes 7, 9, 11, 37 and 42 of the International Classification of Goods and Services. Relevant details of the applications are set out below.

Trade mark:  

Trade mark application:      1422626

Filing Date:  29 April 2011

Specification:  Class 7: Machinery for the manufacture of solar panels

Class 9:Photovoltaic modules, assemblies and arrays of photovoltaic cells, solar cells for direct generation of electricity; electrical apparatus (other than generators) for use in electricity supply, including electrical apparatus for use in supplying electricity generated from photovoltaic cells

Class 11:Solar photovoltaic collector panels

Class 37:Construction services relating to planning, laying out and construction of photovoltaic arrays, systems and subsystems; construction information; installation of solar energy systems; installation of electrical systems to distribute electricity generated by solar cells; construction

Class 42:Technical research and consulting services on energy saving; quality control of solar panels; mechanical research of machinery for the manufacture of solar panels; technical research; consultancy in the field of energy saving; quality control of the layout, construction and operation of solar panels and photovoltaic arrays; design of power plants; design of solar photovoltaic systems; technical planning of photovoltaic installations and solar energy systems; and mechanical research

Trade mark:  FIRST SOLAR

Trade mark application:      1422628

Filing Date:  29 April 2011

Specification:  Class 7: Machinery for the manufacture of solar panels

Class 9: Photovoltaic modules, assemblies and arrays of photovoltaic cells, solar cells for direct generation of electricity; electrical apparatus (other than generators) for use in electricity supply, including electrical apparatus for use in supplying electricity generated from photovoltaic cells

Class 11: Solar photovoltaic collector panels

Class 37: Construction services relating to planning, laying out and construction of photovoltaic arrays, systems and subsystems; construction information; installation of solar energy systems; installation of electrical systems to distribute electricity generated by solar cells; construction

Class 42: Technical research and consulting services on energy saving; quality control of solar panels; mechanical research of machinery for the manufacture of solar panels; technical research; consultancy in the field of energy saving; quality control of the layout, construction and operation of solar panels and photovoltaic arrays; design of power plants; design of solar photovoltaic systems; technical planning of photovoltaic installations and solar energy systems; and mechanical research

1. The applications were advertised as accepted for possible registration in the Australian Official Journal of Trade Marks on 25 August 2011. Chromagen Solar Australia Pty Ltd (‘the opponent’) filed Notices of Opposition (‘the Notices’) to the registration of the trade marks on 25 November 2011. Thereafter the opponent and applicant served and filed evidence as provided by the Trade Mark Regulations 1995 (‘the Regulations’).

2. I heard the matter in Melbourne on 16 March 2015 as a delegate of the Registrar of Trade Marks. Mr Stephen Rebikoff of Davies Collison Cave represented the opponent. The applicant was represented by Mr Gary Nock of Counsel instructed by Cullens.

Grounds of Opposition

1. The Notices nominated most of the grounds of opposition available under the Trade Marks Act 1995 (‘the Act’). The onus is upon the opponent to establish one or more of its grounds of opposition. Gyles J has referred to the standard of proof required in terms of a ‘balance of probabilities’.[1] His findings upon that issue, arrived at after a consideration of the relevant authorities, have been discussed with approval by Sundberg J in Chocolaterie Guylian NV v Registrar of Trade Marks[2].

   [1] See Pfizer Products Inc v Karam [2006] FCA 1663; (2006) 70 IPR 599

   [2] [2009] FCA 891, para 22-27 (2009) 82 IPR 13. See also Sports Warehouse Inc v Fry Consulting [2010] FCA 664; (2010) 87 IPR 300 at [36] to [39]; NV Sumatra Tobacco Trading Company v British American Tobacco Services Limited [2011] FCA 1051 (9 September 2011) at [16] to [32]

2. Prior to the hearing the opponent advised that it would press and provide submissions only on the grounds under sections 42(b), 44 and 60 of the Act. None of the evidence served and filed by the opponent appears to go to the other grounds in the Notice and for the sake of completeness I find that those grounds have not been established.

3. Therefore, the grounds remaining for my consideration are those under sections 42(b), 44 and 60 of the Act. Should the opponent establish one ground of opposition in relation to all of the applicant’s specification of goods and services, there is no requirement for the other grounds of opposition to be considered.

Evidence

1. The evidence consists of the following statutory declarations:

Declarant	Position	Date Made	Exhibits
Evidence in Support
Ian Drew	Attorney of Davies Collison Cave	28.01.14	ID-1 to
Evidence in Answer
Jack Frederick Curtis	Vice President, Business Development Asia-Pacific for First Solar, Inc.	17.04.14	1 to 12

Opponent’s Evidence

1. The declaration of Ian Drew (‘the Drew declaration’) states that the opponent claims confidentiality in any exhibits in its evidence labelled ‘confidential’ or any information in the declaration or exhibits which relates to sales revenue, promotional activities and expenditure. With this in mind, I will outline the opponent’s evidence in the broadest terms and not refer to any of the above in the decision except to state whether the evidence before me is sufficient to meet any tests at law.

2. The opponent is the owner of two trade mark registrations. The details of these registrations are as follows:

Trade Mark:  SOLAR FIRST

Trade mark registration:     1016845

Filing Date:  20 August 2004

Specification:  Class 11: Apparatus for heating, steam generating, cooking, drying, water supply, sanitary purposes; solar collectors (heating), solar furnaces; heating installations, heating elements, heating plates; solar heating panels; solar panels for use in heating water; hot water heating installations, apparatus and equipment, including solar powered hot water heating installations, apparatus and equipment; heat accumulators; heaters; heating boilers; parts and accessories for all of the foregoing

Trade mark:  SOLAR FIRST

Trade mark application:      1324324

Filing Date:  7 October 2009

Specification:  Class 9: Solar cells and panels; solar batteries; solar batteries for domestic use; solar batteries for industrial use; solar cells for electricity generation; solar collectors electricity generation; solar energy collectors for electricity generation; solar energy operating apparatus; solar panels for electricity generation; control apparatus; electrical apparatus for use in energy supply; energy control devices; energy regulators; solar energy collectors for electricity generation; solar energy operating apparatus; thermal energy measuring apparatus; apparatus for managing energy supplies; devices for measuring energy; control units (thermostats) for heating installations; electric control apparatus for heaters; electric control devices for heating installations; electrical apparatus; scientific apparatus

10.  According to the Drew declaration, the opponent initially used the above trade marks in relation to a business which manufactured, retailed and wholesaled solar and gas hot water systems to Australian consumers. The opponent has now expanded its product range under its SOLAR FIRST trade marks to include solar electricity generation systems including their installation, maintenance and repair. Exhibits ID-1 through to ID-4 contain copies of prints outs and advertisements of the opponent’s SOLAR FIRST goods dated from 2006. However, I note that these early advertisements related to the opponent’s hot water systems and that the earliest advertisement relating to the opponent’s solar electricity systems is dated February 2009.  

11.  According to Mr Drew, the opponent has promoted its SOLAR FIRST goods through direct marketing by employing people to hand out brochures at Bunnings Stores in Victoria, Western Australia and New South Wales. From the evidence it is clear that the opponent sells its SOLAR FIRST goods through Bunnings retail stores although it is unclear how many Bunnings stores sell the opponent’s SOLAR FIRST goods. I note that the opponent’s SOLAR FIRST trade mark is represented in its advertising materials in a different format to the above registrations. The trade mark the opponent uses on its advertising material from 2009 most commonly is:

12.  The above trade mark slightly changes in later years to include a different slogan under the words SOLAR FIRST to read: “solar and hot water solutions by Chromagen”. The opponent has also advertised its SOLAR FIRST goods through a number of newspaper articles over a period of years.

Applicant’s Evidence

13.  According to the declaration of Jack Frederick Curtis (‘the Curtis declaration’) the applicant was founded in 1990 in the United States and initially traded under the name Solar Cells, Inc. In 1999 it was purchased by True North Partners, LLC which restructured and rebranded it as First Solar, Inc. Mr Curtis states that the application has continuously traded under the FIRST SOLAR trade mark since 1999.

14.  The applicant has been involved in integrating solar power into the global energy mix by providing photovoltaic (PV) energy solutions to address modern energy needs such as fuel cost volatility and supply reliability. According to the Curtis declaration the applicant is the largest solar power plant developer and engineering, procurement and construction contractor in the world. The applicant is also asserted to be the second largest manufacturer and supplier of photovoltaic modules in the world. The applicant provides a number of photovoltaic technologies and capabilities for sale within Australia and internationally which include Grid integration, plant design and engineering, advanced PV Modules, balance of systems technologies, mounting systems, operation and maintenance technologies and turnkey engineering, procurement and construction.

15.  Mr Curtis states that the applicant now has operations in a number of countries including Australia, Belgium, Brazil, China, Germany, India, Indonesia, Japan, Saudi Arabia, South Africa, UAE, United Kingdom and the United States of America. In November 2007 Mr Curtis states that the applicant made its first moves into the Australian marketplace through a business trip made by Jos van der Hyden, Vice President of Business Development for the applicant, in which he travelled to Australia and had meetings with a number of potential customers in Australia. During his trip Mr van der Hyden visited a number of energy utilities, potential clients, universities and non-government organizations to deliver invitations to do business with the applicant, including an offer to sell solar photovoltaic modules to the energy utilities.

16.   In July 2008 the applicant (through a partner Phoenix Solar) submitted tender documentation to Horizon Power which was unsuccessful (exhibit 2). On 31 October 2008 Mr Curtis, Rich Hossfeld and John Carrington gave an investor presentation at Merrill Lynch in Sydney (exhibit 4). Most notably, in 2008 Phoenix Solar facilitated the installation of a small 7kW test system at the Desert Knowledge Australia Solar Centre located in Alice Springs, Northern Territory. This installation used the applicant’s FIRST SOLAR branded modules (Exhibit 3).

17.  Exhibits 5 and 6 contain press releases from the first half of 2009 which announce the applicant’s further sales and development of its FIRST SOLAR presence in the Australian marketplace as a seller and distributer of photovoltaic modules. I note that the applicant does not advertise in newspapers, magazines and other publications. However, due to its activity in the solar industry the applicant is mentioned in media and industry publications such as ABC News, Australian Financial Review, Business Spectator and ENP Newswire. I also note that the cost of its photovoltaic modules, which most often are sold in the form of complete solar power plants, is very considerable and that its typical customers are energy utilities.

Discussion

Section 44 –Substantially Identical or deceptively similar

18. Section 44 of the Act relevantly provides:

44       Identical etc. trade marks

(1)Subject to subsections (3) and (4), and 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)…; 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.

19. To establish its opposition under the terms of section 44(1) of the Act the opponent must show all of the following:

• a trade mark (or trade marks), either registered or pending registration, in the name of a person other than the applicant, and in relation to which the applicant’s trade mark is either substantially identical or deceptively similar;
• the trade mark(s) in the name of the other person must be in respect of similar goods or closely related services; and
• the priority date of the trade mark(s) of the other person is earlier than the priority date of the application.

20. The opponent cited two trade mark registrations in support of the section 44 ground of opposition which can be seen in paragraph nine of this decision. The opponent is the registered owner of the two trade mark registrations which have earlier priority dates than that of the opposed applications. The opponent’s submissions in regard to the respective goods and services are as follows:

There  is  no  question  that  the  goods  included  in  the  specification  for  the  Opposed Marks in classes 7, 9 and 11 are goods which are the same or of the same description as the  goods  in respect  of which  the Prior  Marks  are registered.  In particular,  it is clear that   solar  hot   water   systems  and   solar  panels   are  goods  of  the  same  description: Solahart Industries Pty Ltd v Solar Shop Pty Ltd (201 1) 92 IPR 165 at [35].

In relation to the design and installation services in classes 37 and 42, it is well­ established that services  concerning  the  manufacture, sale, installation, operation  and maintenance of particular goods will generally be considered to be similar  or  closely related to  those goods: Registrar of Trade Marks  v  Woolworths Ltd  (1999) 93 FCR 365 at [38]; Warnaco US Inc  v Estee  Lauder  Cosmetics Ltd  (2000)  50 I PR  143 at 153-4.

In this case, all of the goods and services covered by the specifications for the Opposed Marks relate specifically to solar panels. Further, it is clear that solar panels for heating and solar panels for energy collection are manufactured and sold by the same sorts of traders to the same sorts of consumers for similar purposes: see Solahart Industries Pty Ltd v Solar Shop Pty Ltd (2011) 92 IPR 165 at [28]-[35].

Accordingly, there does not appear to be any dispute that the goods and services in respect of which the Opposed Marks are sought to be registered are similar or closely related to the goods in respect of which the Prior Marks are registered.

21.  I accept the opponent’s submissions. The opponent’s trade mark registrations cover the same and similar goods in classes 9 and 11 to the goods that relate to the specifications applicant’s trade mark applications. The applicant’s specification of services in classes 37 and 42 are similar and/or closely related services to the goods. The key issue to now be decided is whether the applicant’s FIRST SOLAR trade marks are either substantially identical or deceptively similar to the opponent’s SOLAR FIRST trade mark. The opponent’s trade mark and the applicant’s trade mark can be seen below:

Opponent’s trade mark	Applicant’s trade marks
SOLAR FIRST	FIRST SOLAR

‘Substantially Identical/Deceptively Similar’

22. While there is no definition of ‘substantially identical’ within the Act, the comments of Windeyer J in Shell Co (Aust) Ltd v Esso Standard Oil (Aust) Ltd[3] set out the relevant test for comparison: 

[the trade marks] 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.

[3] (1961) 109 CLR 407 at 414-415.

23.  I find that, on a side by side comparison, the trade marks are not substantially identical as they contain certain visual differences. I must then consider the question of whether they are deceptively similar. Section 10 of the Act indicates that a trade mark is taken to be deceptively similar to another if it so nearly resembles that trade mark that it is likely to deceive or cause confusion. Dixon and McTiernan JJ in Australian Woollen Mills Ltd v F. S. Walton and Company Ltd[4] detailed the relevant assessment:

[T]he marks ought not … to be compared side by side. An attempt should be made to estimate the effect or impression produced on the mind of potential customers by the mark or device for which the protection of an injunction is sought. The impression or recollection which is carried away and retained is necessarily the basis of any mistaken belief that the challenged mark or device is the same … The usual manner in which ordinary people behave must be the test of what confusion or deception may be expected. Potential buyers of goods are not to be credited with any high perception or habitual caution. On the other hand, exceptional carelessness or stupidity may be disregarded.

[4] (1937) 58 CLR 641 (at 658).

24.  The first point to note on the visual comparison is that the trade marks both have identical words FIRST and SOLAR contained in them even though the words are used in the reverse order: FIRST SOLAR vs. SOLAR FIRST. The applicant has argued that the ‘idea’ of the respective trade marks is different. However, I am not persuaded by this argument. This is not a case where the reversal of the order of the words leads to two completely different ideas. For example: CRAZY ANIMAL vs. ANIMAL CRAZY both contain the same words but when the order of them is reversed the idea conveyed and the impression left with the consumer is very different.

25.  In the case before me the respective trade marks comprise of the same words and essentially the same idea being the word SOLAR (the sun) and the number one. This impression does not change no matter the order of the words.  Ultimately,:

One must bear in mind the points of resemblance and the points of dissimilarity, attaching fair weight and importance of all, but remembering that the ultimate solution is to be arrived at, not by adding up and comparing the results of such matters, but by judging the general effect of the respective wholes.[5]

[5] Clark v Sharp (1898) 15 RPC 141 at 146 (Ch D).

26.  I am not convinced that the reverse order of the words FIRST SOLAR or the addition of the device in the applicant’s trade marks significantly distinguishes the trade mark from the opponent’s SOLAR FIRST trade mark. I accept that there is a difference in sound when saying the trade marks aloud, however, that difference is overwhelmed by the other abovementioned similarities and imperfect recollection. I also refer to the comments of Luxmoore LJ inRystaLtd’s Application[6]:

The answer to the question whether the sound of one word resembles too nearly the sound of another so as bring the former within the limits of s 12 of the Trade Marks Act, 1938, must nearly always depend on first impression, for obviously a person who is familiar with both words will neither be deceived nor confused. It is the person who only knows the one word, and has perhaps an imperfect recollection of it, who is likely to be deceived or confused. Little assistance, therefore, is to be obtained from a meticulous comparison of the two words, letter by letter and syllable by syllable, pronounced with the clarity to be expected from a teacher of elocution. The court must be careful to make allowance for imperfect recollection and the effect of careless pronunciation and speech on the part not only of the person seeking to buy under the trade description, but also of the shop assistant ministering to that person’s wants.

[6] RystaLtd’s Application (1943) 60 RPC 87 (at 108-109).

27.  In terms of any meaning or connotation within the trade marks I reiterate that both trade marks convey the idea of the sun and the number one. Finally, I have made allowance for the fact that some consumers would pay more attention to the purchase of solar panels for their home. However, given the nature of the goods the word SOLAR is descriptive and the potential consumer is likely to focus on the double barrel idea of the sun and the number one as their point of reference when considering the goods rather than the particular order the words are in.

28. Taking all the above factors into the assessment of judging the respective wholes of the two trade marks I find that there is a real and tangible danger that Australian consumers would imperfectly recall the opponent’s trade mark and be deceived or confused as a result on encountering the applicant’s goods bearing the opposed trade marks. I find the applicant’s trade marks to be deceptively similar to the opponent’s trade mark and the ground of opposition under section 44 has been made out. However, paragraphs 44(3) and subsection 44(4) of the Act make provision for the applicant to overcome a section 44 ground of opposition on the basis of prior use, honest concurrent use or other circumstances.

29. In order to consider the potential prior use and honest concurrent use or other circumstances which may allow the applicant to overcome the established section 44 ground of opposition I turn to the applicant’s evidence. I say now that I do not doubt the honest adoption of the FIRST SOLAR trade marks by the applicant. The applicant has been using its FIRST SOLAR trade marks overseas since 1999 which is around 5 years before the opponent commenced use of its SOLAR FIRST trade marks in Australia.

30.  Looking carefully at exhibit 1 accompanying the Curtis declaration, Mr Curtis has asserted that during 4-14 November 2007, Mr Jos van der Hyden visited Australia and met with potential clients/investors from various Energy sectors on 14 separate occasions during the trip. There is no documentation to establish what occurred from these meetings or if anything was followed up. Exhibit 2 accompanying the Curtis declaration is an email from the applicant to Horizon Power regarding their participation in a tender through their partner Phoenix Solar.  Exhibit 3 is a copy of a press release put out by Phoenix Solar about a solar array which was completed on 3 November 2008. The press release does not name the applicant but does show the type of panels used were FIRST SOLAR FS-272 panels.

31.  Exhibit 5 contains a copy of press release which shows that the applicant made sales of its solar panels to Solar Shop Australia Pty Ltd for a 1 megawatt DC rooftop project dated April 28, 2009. Exhibit 6 contains a copy of another press release which shows that the applicant entered into a supply agreement with Lend Lease for the supply of 10 megawatts of solar panels which is dated June 14, 2009. Both of these exhibits contain press releases which demonstrate sales of the applicant’s goods before the priority date of its opposed applications and before the priority date of the opponent’s trade mark registration no. 1324324, although not before the priority date of the opponent’s registration 1016845.

32.  It is clear that the applicant’s goods and services are directed at larger energy providers for industrial or scientific use rather than for the consumption of the individual Australian consumer who may like a solar energy system for their household. While the applicant’s evidence shows significant use of its trade marks before the priority dates in overseas markets, the extent of such use in Australia is limited to:

·   a few instances of meetings and presentations to Australian businesses; and

·   Phoenix Solar participating in an unsuccessful tender on the applicant’s behalf; and

·   two Australian businesses facilitating the building of solar arrays using the applicant’s goods

33.  The above examples do not even demonstrate use of the entire goods and services specification to which the opposed trade marks relate but only to those goods in classes 9 and 11. The applicant has submitted:

If the delegate concludes that the evidence does not support honest concurrent use in respect of the goods and services in classes 7, 37 and 42, we make an alternative submission that the delegate should allow the opposed applications to be registered in these classes on the basis that the evidence clearly supports honest concurrent use in respect of the class 9 and 11 goods and that the goods and services in classes 7, 37 and 42 flow naturally from production and installation of the goods in classes 9 and 11 (under the “other circumstances” provision of section 44(3)(b)).

34.  I do not agree with the applicant’s submissions. The applicant’s evidence is simply not sufficient for me to apply the provisions of paragraphs 44(3)(a) or (b) and subsection 44(4) to the goods in classes 9 and 11 much less the entire goods and services specification of the opposed trade marks.

35. The applicant has not been able to provide sufficient evidence of use before its filing date so the provisions of section 44(3)(a) are not applicable. Nor has the applicant been able to provide any evidence sufficient to support acceptance of its trade mark because of other circumstances relevant to a consideration of the provisions of section 44(3)(b). Therefore, the opponent has established the section 44 ground of opposition.

36. Having found in favour of the opponent in terms of section 44(1) there is no need for me to discuss the other grounds set out in the notice although these grounds or any others in the Act may also be relied on in the event of an appeal from this decision.

Decision

37. Section 55 of the Act relevantly provides:

(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.

…

(3) This subsection applies to the proceedings if:

(a) the proceedings are discontinued; or

(b) the proceedings are dismissed…

38. I am satisfied that the opponent has established the ground of opposition under section 44, and accordingly I refuse registration of trade mark applications 1422626 and 1422628.

Costs

39. It is usual for costs to follow the event, and I see no reason to depart from that principle here. I award costs, according to the official scale set out in Schedule 8 of the Trade Marks Regulations 1995, against the trade mark applicant First Solar, Inc.

Bianca Irgang
Hearing Officer
Trade Marks Hearings
5 June 2015