Clearlight Investments Pty Ltd v Sandvik Mining and Construction Oy

[2016] ATMO 7

TRADE MARKS ACT 1995

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

Re:Opposition by Clearlight Investments Pty Ltd to registration of trade mark application 1575593 – SANREMO - in the name of Sandvik Mining and Construction OY.

Delegate:	Bianca Irgang
Representation:	Opponent: Mr Adrian Ryan of counsel, instructed by Piper Alderman Applicant: Mr Chris Doidge of counsel, instructed by Griffith Hack
Decision:	2016 ATMO 7 Section 52 opposition: sections 41, 42(b) and 60 pressed – section 41 ground of opposition established – trade mark a geographical name and evidence insufficient to overcome section 41(4) ground of opposition.

Background

1. Sandvik Mining and Construction OY (‘the applicant’), filed trade mark application number 1575593 on 20 August 2013 in classes 9 and 42 of the International Classification of Goods and Services. Current details of the application are set out below.

   Trade mark:  SANREMO

   Trade mark application no: 1575593

   Filing Date:  20 August 2013

   Specification:  Class 9: Remote controls for mining, drilling and construction equipment and operations, remote control transmitters for mining, drilling and construction equipment and operations, global positioning system receivers, software and hardware for mining, drilling and construction equipment and operations including for collecting, recording, tracking, and reporting data pertaining to the location, productivity, operation and maintenance of mining, drilling and construction equipment and operations

   Class 42:Remote monitoring services of mining, drilling and construction equipment and operations, including, collecting, recording, tracking, and reporting data pertaining to the location, productivity, operation and maintenance of mining and construction equipment; remote monitoring, remote control and remote adjustment of operation of mining, drilling and construction equipment and operations through Internet, Extranet and any other global computer and telecommunication networks

2. Acceptance of the application for possible registration was published in the Australian Official Journal of Trade Marks dated 27 March 2014. Subsequently Clearlight Investments Pty Ltd (‘the opponent’) filed a Notice of Intention to Oppose registration followed by a Statement of Grounds and Particulars.

3. The applicant then filed its Notice of Intention to Defend. Thereafter the opponent and applicant respectively filed evidence in accordance with the provisions of the Trade Mark Regulations 1995 (‘the Regulations’).

4. I heard the opposition in Melbourne as a delegate of the Registrar of Trade Marks on 19 November 2015. The opponent was represented by Mr Adrian Ryan of counsel, instructed by Piper Alderman. The applicant was represented by Mr Chris Doidge of counsel, instructed by Griffith Hack. Both parties’ representatives made oral and written submissions.

   Grounds of Opposition

5. The Notice nominated three grounds of opposition under the Trade Marks Act 1995 (‘the Act’). All of those grounds being under ss 41, 42(b) and 60 were pursued at the hearing. 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 these matters 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]. Should the opponent establish one ground of opposition in relation to all of the applicant’s goods, there is no requirement for me to consider the other grounds of opposition.

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

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

   Evidence

6. The evidence in this matter consists of the following declarations:

   Evidence in Support

   ·Maurice Aldo Crotti made on 31 October 2014 with annexures MAC-1 to MAC-78 (the “Crotti Declaration”)

   Evidence in Answer

   ·Anthony Bolejko made on 4 March 2015 with annexures 1 to 6 (the “Bolejko declaration”)

   Evidence in Reply

   ·Maurice Aldo Crotti made on 25 June 2015

   Opponent’s Evidence

7. The Crotti declaration explains that the opponent is the owner of the intellectual and other property used for the conduct of the San Remo business and that a number of companies (“the San Remo group of companies”) have licensing arrangements in place with the opponent to use its trade marks.

8. According to Mr Crotti the name “San Remo” was developed by his late father in the early 1950s to replace the original name “Sovarno” which had been used since 1936 when the San Remo business was founded. The opponent’s first use of SAN REMO trade mark on its goods was in 1952. The opponent obtained its first trade mark registration for trade mark no. 112192 for the San Remo “two monks” device trade mark which was filed on 18 November 1952. 

9. Since that time, the opponent has obtained registration of other trade marks incorporating the San Remo name, including “SANREMO” (trade mark no. 564652) which was registered from 3 October 1991 for pasta products in class 30 (“the SANREMO trade marks”). The details of the opponent’s registrations are set out below:

Trade Mark No.	Class(es)	Trade Mark
564652	30	SANREMO
1480473	16, 21, 29, 30, 36, 41	SANREMO
815490	29, 30
1480471	16, 21, 29, 30, 36, 41
815489	29, 30
1480472	16, 21, 29, 30, 36, 41
565435	30
112192	30
170698	29
170700	30
203770*	30
564654	30
1047924	30
1111248	29
1213765	30	SAN REMO PASTA PRONTO
1213767	29, 30
1573223	30	THE GREAT TASTE AND TEXTURE YOU EXPECT FROM SAN REMO
1579127	29, 30

1. The above trade mark registrations are owned by the opponent although I note that trade mark application no. 1579127 has a later priority date to the opposed application.

2. The opponent’s evidence at annexure MAC4 through to MAC7 and MAC13 through to MAC18 demonstrate the opponent’s extensive use of the SANREMO trade mark on its various pasta and related products since 1950. It is clear from the evidence that the opponent has engaged in significant advertising expenditure and has established a long standing and strong reputation in its trade marks when it comes to its pasta and related goods (annexure MAC22). It is also clear that the opponent continues to market its pasta and related goods and services under its SANREMO trade marks (confidential annexure MAC26) and these pasta goods are sold in all major Australian supermarket chains including Woolworths, Coles, ALDI and BI-LO.

3. The Crotti declaration offers significant opinions on the grounds of opposition pursued by the opponent. In particular I note the discussion about “San Remo” being the name of a city in Italy with a population of over 55,000 inhabitants and which is a popular tourist destination.

   Applicant’s Evidence

4. The Bolejko declaration states that the applicant is the holder of the intellectual property of the Sandvik Group which includes Sandvik AB (the parent company), and Sandvik Mining and Construction Oy which has subsidiaries in about 60 countries. According to Mr Bloejko the Sanvik Group is a high-technology engineering group with around 47,000 employees and sales in more than 130 countries.

5. Paragraph seven of the Bolejko declaration outlines how the applicant coined the trade mark SANREMO from the words ‘Sandvik Remote Monitoring’ in 2006. He avers that the applicant has used its SANREMO trade mark worldwide in respect of remote monitoring systems and productivity reporting services for mining, drilling and construction equipment and operations. This particular remote monitoring system that the applicant uses its SANREMO trade mark on is installed on drill rigs which send data to the Sandvik server. Mr Bolejko advised that the applicant offer its SANREMO goods and services as optional extras to purchasers of the applicant’s surface tophammer and DTH (down the hole) drills.

6. Mr Bolejko states that the applicant has used its SANREMO trade mark in Australia since 2010. He continues saying that the SANREMO goods and services option costs between AU$4500 and AU$6000 and that the yearly subscription option to the SANREMO goods and services was a maximum of AU$800 per annum in May 2013.

7. In May 2013, the Bolejko declaration states that there were 72 of the applicant’s machines for which customers purchased the applicant’s SANREMO goods and services. These 72 machines in conjunction with the applicant’s SANREMO goods and services are apparently in use in Australia by 31 different customers. Paragraph 11 of the Bolejko declaration lists 30 of the applicant’s customers. According to Mr Bolejko, all of the applicant’s customers who have purchased SANREMO goods and services are provided with a Users Manual (annexure 4).

8. Annexure 3 accompanying the Bolejko declaration contains copies of material from various internet sites in December 2014 which refer to the applicant’s SANREMO goods and services. I note that these websites are overseas websites with an indeterminate number of Australian readers. Annexure 6 contained details of the applicant’s overseas registrations.

   Discussion

   Section 41 - Trade mark not distinguishing applicant’s goods or services

9. Section 41 provides:

   41  Trade mark not distinguishing applicant’s goods or services

   (1)  An application for the registration of a trade mark must be rejected if the trade mark is not capable of distinguishing the applicant’s goods or services in respect of which the trade mark is sought to be registered (the designated goods or services) from the goods or services of other persons.

   Note:          Forgoods of a person and services of a person see section 6.

   (2)  A trade mark is taken not to be capable of distinguishing the designated goods or services from the goods or services of other persons only if either subsection (3) or (4) applies to the trade mark.

   (3)  This subsection applies to a trade mark if:

   (a)  the trade mark is not to any extent inherently adapted to distinguish the designated goods or services from the goods or services of other persons; and

   (b)  the applicant has not used the trade mark before the filing date in respect of the application to such an extent that the trade mark does in fact distinguish the designated goods or services as being those of the applicant.

   (4)  This subsection applies to a trade mark if:

   (a)  the trade mark is, to some extent, but not sufficiently, inherently adapted to distinguish the designated goods or services from the goods or services of other persons; and

   (b)  the trade mark does not and will not distinguish the designated goods or services as being those of the applicant having regard to the combined effect of the following:

   (i)  the extent to which the trade mark is inherently adapted to distinguish the goods or services from the goods or services of other persons;

   (ii)  the use, or intended use, of the trade mark by the applicant;

   (iii)  any other circumstances.

   Note 1:       Trade marks that are not inherently adapted to distinguish goods or services are mostly trade marks that consist wholly of a sign that is ordinarily used to indicate:

   (a)    the kind, quality, quantity, intended purpose, value, geographical origin, or some other characteristic, of goods or services; or

   (b)    the time of production of goods or of the rendering of services.

   Note 2:       Forgoods of a personand services of a personsee section 6.

   Note 3:       Use of a trade mark by a predecessor in title of an applicant and an authorised use of a trade mark by another person are each taken to be use of the trade mark by the applicant (see subsections (5) and 7(3) and section 8).

   (5)  For the purposes of this section, the use of a trade mark by a predecessor in title of an applicant for the registration of the trade mark is taken to be a use of the trade mark by the applicant.

   Note 1:       Forapplicant and predecessor in title see section 6.

   Note 2:       If a predecessor in title had authorised another person to use the trade mark, any authorised use of the trade mark by the other person is taken to be a use of the trade mark by the predecessor in title (see subsection 7(3) and section 8).

10. Section 41 of the Act deals with a trade mark’s capacity to distinguish an applicant’s goods or services. It provides a scheme for the assessment of the capacity of a trade mark to distinguish the goods or services of one trader from the similar goods or services of another trader. However, as for any other ground of opposition the onus is on the opponent to make its case under section 41. Therefore, the opponent must establish that the applicant’s trade mark is not capable of distinguishing the goods in question. If the trade mark is found to lack inherent capacity to distinguish, section 41 also provides a scheme for the assessment of whether the trade mark has acquired or will acquire capacity to distinguish the goods through its use in trade, or whether due to other circumstances the trade mark does or will distinguish the goods.

11. As was discussed in detail by Branson J in Blount Inc v Registrar of Trade Marks [1998] FCA 440:

    Subsections (3) to (6) of s 41 of the Act are designed to control the process by which the Registrar is to reach a conclusion as to whether the trade mark for which registration is sought is capable of distinguishing the applicant’s goods or services in respect of which the trade mark is sought to be registered (“the designated goods or services”). If the trade mark is not so capable, the application for its registration must be rejected (s 41(2)). Subsection (3) requires the Registrar first to “take into account the extent to which the trade mark is inherently adapted to distinguish the designated goods or services from the goods or services of other persons”. Having taken such matter into account, it is theoretically open to the Registrar to conclude:

    (a) that the trade mark is inherently adapted to distinguish the designated goods or services from the goods or services of other persons and capable, on that basis alone, of so distinguishing the designated goods or services; or

    (b) that the trade mark is not to any extent inherently adapted to distinguish the designated goods or services from the goods or services of other persons; or

    (c) that the trade mark is to some extent inherently adapted to distinguish the designated goods or services from the goods or services of other persons, but there is uncertainty, on that basis alone, that the trade mark is actually capable of so distinguishing the designated goods or services.

    The structure of s 41 of the Act dictates that if the Registrar reaches conclusion (a) above, then he or she will decide the question whether or not the trade mark is capable of distinguishing the designated goods or services from the goods or services of other persons by reaching the answer that it is so capable by reason of its inherent adaptability to distinguish (s 41(2) and (3)). The Registrar will, in such circumstances, be required, by reason of the terms of s 33(1) of the Act, to accept the application unless he or she is satisfied that the application has not been made in accordance with the Act, or that there are grounds, independent of capacity to distinguish, for rejecting the application.

    If the Registrar reaches conclusion (b) or (c) above, he or she is, within the meaning of s 41(4) “unable to decide the question”. That is, he or she is unable, simply by taking into account the extent to which the trade mark is inherently adapted to distinguish the designated goods or services, to answer the question whether or not the trade mark is capable of distinguishing the designated goods or services from the goods or services of other persons.

    If the Registrar reaches conclusion (b) above, then the provisions of paragraphs (a) and (b) of s 41(6) are brought into operation. If the applicant establishes that, because of the extent to which the applicant has used the trade mark before the filing date of the application, the trade mark does distinguish the designated goods or services as being those of the applicant, the Registrar will not reject the application pursuant to s 41(2). The Registrar will, in such circumstances, accept the application unless he or she is satisfied that the application has not been made in accordance with the Act, or that there are grounds, independent of capacity to distinguish, for rejecting the application (s 33(1)). If the applicant fails to establish that because of the extent to which the applicant has used the trade mark before the filing date of the application, the trade mark does distinguish the designated goods or services as being those of the applicant, the Registrar must reject the application pursuant to s 41(2).

    If the Registrar reaches conclusion (c) above, then the provisions of paragraphs (a), (b) and (c) of s 41(5) are brought into operation. If the Registrar, having considered the combined effect of the matters listed in subparagraphs (i), (ii) and (iii) of s 41(5)(a), is satisfied that the trade mark does or will distinguish the designated goods or services as being those of the applicant, he or she will not reject the application pursuant to s 41(2). The Registrar will, in such circumstances, accept the application unless he or she is satisfied that the application has not been made in accordance with the Act, or that there are grounds, independent of capacity to distinguish, for rejecting the application (s 33(1)). If the Registrar, having considered the combined effect of the matter listed in subparagraphs (i), (ii) and (iii) of s 41(5), is not satisfied that the trade mark does or will distinguish the designated goods as being those of the applicant, the Registrar must reject the application (s 41(2)).

    The above examination of subsections (3) to (6) of s 41 of the Act demonstrates that the section limits the scope of operation of s 33(1) of the Act so far as the question of capacity to distinguish is concerned. Subsection (4) has the effect that unless the Registrar, having taken into account the extent to which the trade mark is inherently adapted to distinguish the designated goods or services from the goods or services of other persons, is able to answer positively the question whether or not the trade mark is capable of distinguishing the designated goods or services from the goods or services of other persons, then he or she must apply the provisions of either subsection (5) or (6). Subsection (5) has the effect that an application must be rejected pursuant to s 41(2) unless the Registrar is satisfied that the trade mark does or will distinguish the designated goods or services as being those of the applicant. Subsection (6) has the effect that an application must be rejected pursuant to s 41(2) unless the applicant establishes that because of its use of the trade mark, the trade mark does distinguish the designated goods or services as being those of the applicant. The applicant will so “establish” by placing before the decision maker material upon which he or she is persuaded, on the balance of probabilities, that, because of its use of the trade mark, the trade mark does distinguish its goods and services from those of other persons.

    It is thus not the case, as might otherwise be concluded from the terms of s 33(1), that if the Registrar is uncertain whether a trade mark is capable of distinguishing the applicant’s goods or services from the goods or services of other persons then he or she must accept the application. The question of whether or not a trade mark is to be taken for the purposes of s 41(2) as capable or not capable of distinguishing the designated goods or services from the goods or services of other persons is governed entirely by s 41(3) to (6). The effect of such subsections is that a trade mark is not to be taken as capable of distinguishing the goods or services of an applicant from the goods or services of other persons unless the Registrar is satisfied of certain matters or the applicant establishes a certain matter, in the sense discussed above.

1. In Clark Equipment Company v Registrar of Trade Marks[3], Kitto J put the test under the 1955 Act as follows:

   “[T]he question whether a mark is adapted to distinguish [is to] be tested by reference to the likelihood that other persons, trading in goods of the relevant kind and being actuated only by proper motives - in the exercise, that is to say, of the common right of the public to make honest use of words forming part of the common heritage, for the sake of the signification which they ordinarily possess - will think of the word and want to use it in connexion with similar goods in any manner which would infringe a registered trade mark granted in respect of it

   [3] [1964] HCA 55; (1964) 111 CLR 511 at 514

2. The High Court in Cantarella Bros Pty Limited v Modena Trading Pty Limited[4](‘Cantarella’) noted the part of Kitto J’s test:

   in the exercise, that is to say, of the common right of the public to make honest use of words forming part of the common heritage, for the sake of the signification which they ordinarily possess

   [4] (2014) 109 IPR 154 at [26]-[30] per French CJ, Hayne, Grennan and Kiefel JJ.

3. Considering this passage the High Court explained that the inherent adaptation of a trade mark consisting of a word (including a foreign word) is to be tested by checking the ordinary meaning (that is the “ordinary signification”) of the word to anyone ordinarily purchasing, consuming or trading in the relevant goods[5].

   [5] Cantarella at [28], [30] per French CJ, Grennan and Kiefel JJ

4. Mr Chris Doidge, the applicant’s representative, made submissions on the section 41 ground of opposition focusing on the following key areas:

   ·Australia is a large market for the Sandvik group with around 2,083 employees in Australia;

   ·The applicant’s SANREMO trade mark was coined in 2006 from the words “Sandvik Remote Monitoring” and is used in regards to a remote monitoring system installed on drilling rigs;

   ·In May 2013 there were 72 of the applicant’s machines for which 31 customers purchased the applicant’s SANREMO goods and services

   ·The applicant’s SANREMO trade mark has not been shown to convey a meaning or idea sufficiently tangible to anyone in Australia concerned with the goods.

5. Mr Ryan, representative for the opponent, submitted that SAN REMO is a geographical name being the name of a city in Italy and a number of towns including a town in Victoria at the bridge to Phillip Island. Mr Doidge argued in response that:

   ·there is no evidence that any traders located in any of the towns/cities called SANREMO are sources of the designated mining and drilling goods and services or that any of the SANREMO towns/cities have any reputation in relation to the designated goods and services; and

   ·Even if it is accepted that the ordinary signification to persons concerned with the designated goods and services, it has not been established that other traders in any of the SANREMO towns or cities might legitimately need to use SANREMO in relation to the designated goods and services.

6. Mr Ryan directed me to an earlier decision made by the Office when the parties engaged in opposition proceedings over trade mark application no. 1345062 SANREMO. In that decision the Hearing Officer stated:

   The first question which arises for consideration is that of the way in which the Trade Mark would be perceived. I consider that a consumer of ordinary intelligence and education would either know of the Italian city, San Remo, or if not, would, on an application of simple linguistic rules, deconstruct the Trade Mark into the elements “san” and “remo”, or perhaps, “san”, “re”, “mo”.  I therefore consider it more likely than not that an ordinary member of the Australian public would have reason to think that the Trade Mark was a simple coalescence of SAN REMO. 

   Notwithstanding the Holder’s evidence that the Trade Mark was coined from a combination of the words “Sandvik”, “remote” and “monitoring” (which I have no cause to question), I am satisfied that the conclusion I have reached is supported by other parts of the Holder’s evidence which consistently shows that in practice the trade mark is used in the form “SanRemo”.  I would summise that the Holder has deliberately chosen not to capitalize the letter “m” in use because that stylization is somehow more memorable (if not more elegant) than “SanReMo” and the reason for this is simply because it plays on the “ordinary signification” or the “general and popular meaning” of the word as a known geographical placename.

7. As the Hearing Officer mentioned later in that decision, there is no need to consider all the towns or cities that are named San Remo. It is enough for me to take into account the city of San Remo in Italy when considering whether or not the trade mark is a geographical name which has no inherent adaption to distinguish. In making this decision I am aware that San Remo is a city of approximately 57,000 inhabitants on the Mediterranean coastline of Italy. It is a popular tourist destination and a well-known city for a variety of reasons including its olive oil[6], the cultivation of flowers from which the Italian Riviera Flower Parade sprung up and the Summer Firework International Contest. Among other things San Remo:

   ·Has hosted the San Remo Music Festival since 1951 and that this is the festival which inspired the Eurovision Song Contest;

   ·Hosts an annual poker tournament as part of the European Poker Tour;

   ·Is the finish of the classic Milan-San Remo cycle race which is considered one of the most important one day races of the cycling season;

   ·maintains close ties to the Nobel Prize Award Ceremony and banquet held in Stockholm by supplying all the flowers since Alfred Nobel died in San Remo in 1896.

   [6] San Remo produces extra virgin-grade olive oil whose regional “designation of origin” is protected.

8. It is clear to me that San Remo is a sizeable and well-known city in its own right for such a diverse range reasons that I am satisfied it is somewhere where the designated goods and services for the general areas of mining, drilling, construction and operations might be made or offered. I believe that the ordinary member of the Australian public would have reason to think that the ordinary signification or the general and popular meaning of SANREMO would be as a known geographical place name rather than a shortening of ‘Sandvik remote monitoring’.

9. I also do not believe that the deletion of the space between the words alters how the Australian consumer would perceive or pronounce the SANREMO trade mark. I am supported in this reasoning by the decision Richard Jelacic v Leafguard Gutter Systems Inc[7] where the Delegate stated at [13]:

   The fact that the words LEAF and GUARD are conjoined in the opposed trade mark, does not alter my consideration under section 41, as it is only a minor alteration.

   [7] [2010] ATMO 20 (9 March 2010)

10. The evidence before me also demonstrates the applicant is using its trade mark as SanRemo and not as SanReMo (Annexure 2 and 3). I also note that the applicant’s User’s Manual contained in annexure 4 uses the trade mark as “San Remo” with a space in between the words “San” and “Remo” which is exactly how the town in Italy presents its name. This use of San Remo is on the cover and on the top of each page. I believe that this use of the SANREMO trade mark the applicant only serves to emphasis the Australian consumer of the goods and services is likely to perceive the trade mark and its ordinary signification to be that of a geographical indicator.

11. Having taken into account the presumption of registrability, I am not satisfied that the trade mark is inherently adapted to distinguish the designated goods and services from the goods or services of other persons. However, the establishing of a section 41 ground of opposition need not be fatal to the application. While I note that a geographical name with some obvious or potential connection with the goods and services has no inherent adaptation to distinguish, I believe that the current opposed trade mark is to some extent inherently adapted to distinguish the goods and services and may be able to overcome a s 41(4) objection if there has been sufficient evidence of its use by the applicant on the designated goods and services.

12. Turning to the applicant’s evidence of use, the Bolejko declaration states that in May 2013 there were 31 different Australian customers who had purchased 72 Sandvik machines between them, and who had purchased the designated goods and services by reference to the SANREMO trade mark. The applicant has argued that the specialised nature of the customers and the specialised nature of the drilling rig products that the designated goods and services are accessory products for, suggest that the total number of potential customers is not large, in comparison to other products aimed at the general public. Mr Doidge also asserts that in terms of the market for these specialised goods and services, these 72 instances of use amount to a significant level of use.

13. Further to this, Mr Doidge has asserted that other relevant circumstances I should take into account are:

    ·The SANREMO trade mark is part of a family of trade marks that the applicant uses in Australia and around the world.

    ·The applicant has used its SANREMO trade mark without interference from the opponent or other traders in Australia for the past 5 years which is an indication that the registration would not conflict with the legitimate rights of other traders.

    ·The applicant intends to use the trade mark in relation to rotary ‘blasthole drill rigs’ as well as continuing to use it on ‘surface tophammer’ and ‘down the hole’ drill rigs.

14. In consideration of all the evidence of use put forward by the applicant, I note that the statements in the Bolejko declaration in regards to the number of goods and services sold have not been supported by the evidence through the provision of receipts or by providing specific details of exactly what goods and services have been sold and the total revenue generated. Instead, I am provided with unsupported statements and an approximation of the price range the applicant charges its customers for goods and services provided under its SANREMO trade mark.

15. I also note that the applicant has made claims that its goods and services are highly technical and specialised being in relation to ‘surface tophammer’ and ‘down the hole’ drill rigs. However, this is not reflected in the goods and services for which the applicant is seeking registration of its SANREMO trade mark. As I indicated earlier, the specification of goods and services is broad and is not in any way limited to those goods and services specifically related to ‘surface tophammers’ and ‘down the hole’ drill rigs. Instead, I note that the goods and services are for the general areas of mining, drilling, construction and operations. While the applicant asserts that it has used its SANREMO trade mark in Australia for the past five years without interference from the opponent, this does not stand up to scrutiny. The opponent has opposed not only this application the applicant made for its SANREMO trade mark, but also the previous application for trade mark no. 1345062 SANREMO. The applicant’s use of its SANREMO trade mark in Australia has not gone without interference.

16. I consider, from what it demonstrated in the evidence before me, that the applicant’s use of the Trade Mark is de minimus and insufficient to show that the Trade Mark does on its own distinguish the applicant. Nor does the evidence provided sufficiently demonstrate that the Trade Mark has acquired a meaning related to the applicant which overshadows its meaning as a geographical name to Australian consumers in the marketplace. The applicant’s evidence does not satisfy me that the Trade Mark did at the filing date distinguish the goods and services of the applicant from the similar goods and services of other traders. I therefore take the trade mark to be not capable of distinguishing the goods and services of the applicant. The opponent has established the section 41 ground of opposition.

    Decision

17. Section 55 of the Act provides:

    55  Decision

    (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:          Forlimitationssee section 6.

18. I find that the opponent has met the onus upon it, in terms of the ground of opposition under s 41. Accordingly I refuse to register trade mark application no. 1575593.

    Costs

19. It is usual for costs to follow the event, and I see no reason to depart from that principle here. I award costs against the applicant in terms of Schedule 8 of the Regulations.

    Bianca Irgang
    Hearing Officer
    Trade Marks Hearings
    29 January 2016