Clearview Towing Mirrors Pty Ltd v Shane Miles

TRADE MARKS ACT 1995

DECISION OF A DELEGATE OF THE REGISTRAR OF TRADE MARKS WITH REASONS
Re:Opposition by Clearview Towing Mirrors Pty Ltd to registration of trade mark application 2286582 (Class 12) – MSA Power Slide (stylized)– in the name of Shane Miles

Delegate: Bianca Irgang

Representation:
Opponent: Sam Hallahan of counsel instructed by Foundry Intellectual Property Pty Ltd

Applicant: Ian Tannahill of Ahearn Fox Patent and Trade Mark Attorneys

Decision: 2025 ATMO 77
Trade Marks Act 1995 (Cth) - Section 52 opposition – ss 44 and 62A grounds of opposition argued – no grounds of opposition established – trade mark to proceed to registration.
Background

Shane Miles (‘the Applicant’), filed trade mark application number 22286582 on 22 July 2022. Current details of the application are set out below:
Trade mark:   (the ‘Trade Mark’)
Trade mark application no: 2286582
Filing Date:  22 July 2022
Specification:  Class 12: Storage systems adapted to use in motor vehicles; Luggage carriers for vehicles (‘the Applicant’s Goods’)
Acceptance of the application for possible registration was advertised on 23 December 2022. Subsequently Clearview Towing Mirrors Pty Ltd (‘the Opponent’) filed a Notice of Intention to Oppose registration followed by a Statement of Grounds and Particulars (‘SGP’).
The Applicant then filed its Notice of Intention to Defend. Thereafter, the Opponent and the Applicant filed evidence in accordance with the provisions of the Trade Mark Regulations 1995 (Cth) (‘the Regulations’).
I heard the opposition by teleconference as a delegate of the Registrar of Trade Marks on 3 March 2025. The Opponent was represented by Sam Hallahan of counsel instructed by Foundry Intellectual Property Pty Ltd. The Applicant was represented Ian Tannahill of Ahearn Fox Patent and Trade Mark Attorneys.
Grounds of Opposition
The SGP nominated the grounds of opposition under ss 44, 58 and 62A of the Trade Marks Act 1995 (Cth)(‘the Act’) but only those grounds under ss 44 and 62A were pursued at the hearing. The Opponent bears the onus of establishing at least one of the grounds of opposition.[1] The standard of proof is the ordinary civil standard of the balance of probabilities.[2]
[1] Food Channel Network Pty Ltd v Television Food Network GP [2010] FCAFC 58, [32] (Keane CJ, Stone and Jagot JJ).
[2] Pfizer Products Inc v Karam [2006] FCA 1663, [6]-[26] (Gyles J); Telstra Corporation Ltd v Phone Directories Co Pty Ltd [2015] FCAFC 156, [132]-[133] (Besanko, Jagot and Edelman JJ).
On 28 February 2025, the Opponent requested to amend the SGP to include the ground of opposition under s 59. I took submissions on this request as a preliminary matter at the start of the hearing on 3 March 2025. The Opponent reiterated its request to amend the SGP to include the s 59 ground of opposition on the basis of:
The applicant has admitted in paragraph 9.15 of its written submissions that it does not intend to use the trade mark, stating:
9.15. As an aside, we agree with counsel for the Opponent that it is unlikely the Applicant will ever use the Opposed Trade Mark in it’s current crude form. Rather, sometime in the future, the Applicant will most likely file a request to replace the Opposed Trade Mark with a refined version of the Opposed Trade Mark, being the version that is used commercially, but wherein the layout, and in particular the proportions, of the various word elements will undoubtedly remain the same
The Applicant has counter-argued that this is the opinion of the legal counsel for the Applicant and not a reflection or indication of the actual intentions the Applicant. The Applicant has its own intentions towards making use of the Trade Mark which is not reflected in the opinion expressed by its legal representative. I agree with the Applicant. The Applicant has made no concessions as to its use or non-use of the applied for Trade Mark. The opinion of the Applicant’s legal representative cannot be viewed as establishing that a s 59 ground of opposition exists and this is the only ‘evidence’ which the Opponent seeks to bring before me to support a s 59 ground of opposition. I refuse to the amend the SGP to include the ground of opposition under s 59.
Evidence
The evidence filed in this matter consists of the following declarations being:
Evidence in Support
·Declaration of Michael Cowan, CEO and co-founder of the Opponent, dated 17 August 2023, and its Exhibits MC-1 to MC-13
·Declaration of Andrew Richard Jones, solicitor for the Opponent, dated 18 August 2023, and its Exhibits AJ-1 to AJ-11.
Evidence in Answer
·Declaration of Ian Robert Tannahill, solicitor for the Applicant, dated 28 November 2023, and its Exhibits IRT-1 to IRT-37 (‘Tannahill’)
·Declaration of Ian Robert Tannahill, solicitor for the Applicant, dated 28 July 2023, and its Exhibits IRT-38 to IRT-58
·Declaration of Ian Robert Tannahill, solicitor for the Applicant, dated 28 November 2023, and its Exhibits IRT-59 to IRT-68
Evidence in Reply
·Declaration of Andrew Richard Jones, solicitor for the Opponent, dated 5 February 2024, and its Exhibits AJ-12 to AJ-19.
Discussion
Section 44
Section 44 of the Act relevantly provides:
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.
To establish its opposition in terms of section 44 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 present applicant, and in relation to which the opposed 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(s) of the other person’s trade mark(s) is (are) the earlier.
The Opponent is the registered owner of the following registration relied on in support of its s 44 ground of opposition:
Trade mark:   CLEARVIEW POWER SLIDE
(the ‘Opponent’s Trade Mark’)
Trade mark application no: 2135019
Filing Date:  11 November 2020
Specification:  Class 12: Drop down fridge slides; sliding storage devices adapted for vehicles; vehicle accessories being fridge slides and storage systems; trays adapted for motor vehicles; storage systems for motor vehicles for storing refrigerators ( the ‘Opponent’s Goods’)
As verified on the Register of Trade Marks the Opponent’s Trade Mark has an earlier priority date than the Trade Mark and covers the same goods in class 12 as the Applicant’s Goods. Therefore, the remaining issue for me to determine is whether the Trade Mark is either substantially identical or deceptively similar to the Opponent’s Trade Mark..
It is obvious that the Opponent’s Trade Mark is not substantially identical to the Trade Mark according to the side-by side test set out by Windeyer J in Shell Co (Aust) Ltd v Esso Standard Oil (Aust) Ltd[3]. While the respective trade marks contain the expression POWER SLIDE this is where the similarities between them end. They each have a different and striking element, either CLEARVIEW or MSA, which changes the visual and aural sound of each trade mark and precludes a finding of substantial identity.
[3] [1963] HCA 73, [12].
I now consider whether the Trade Mark is deceptively similar to the Opponent’s Trade Mark. Deceptive similarity is defined by s 10 of the Act, which states ‘[f]or 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.’ The determination of deceptive similarity requires a comparison of the impression persons of ordinary intelligence and memory would have, in recalling the opponent’s trade mark, to the impression they would get from the opposed trade mark.[4] The probability of deception must be finite and non-trivial.[5]
[4] The Shell Company of Australia Ltd v Esso Standard Oil (Australia) Ltd (1961) 109 CLR 407, 415 (Windeyer J).
[5] Registrar of Trade Marks v Woolworths Limited [1999] FCA 1020, [43] (French J).
The trade marks for comparison are:

Opponent’s Trade Mark

Trade Mark

CLEARVIEW POWER SLIDE

The Trade Mark consists of the very large and striking stylized letters ‘MSA’ which are in prominent position along the top of the trade mark and above the words POWER SLIDE which is in a much smaller text. This prominent position of the MSA forms the first impression of the Trade Mark and emphasises the letters ‘MSA’ which are unusual and memorable when applied to the Applicant’s Goods.
The Opponent’s Trade Mark is for the three plain text words CLEARVIEW POWER SLIDE. The format of the Opponent’s Trade Mark contains the Opponent’s name, or housemark, at the beginning of the Opponent’s Trade Mark which places a strong emphasis on the word ‘CLEARVIEW’ as a striking and unusual term when applied to the Opponent’s Goods.
Looking at the Trade Mark it is clear that the respective trade marks share the same expression POWER SLIDE. However, even though these similarities are present in the respective trade marks, I am not persuaded that the Trade Mark is deceptively similar to the Opponent’s Trade Mark.
The Opponent has argued in their submissions:
The Opposed Mark – which comprises the words “MSA POWER SLIDE” is deceptively similar to the Opponent’s CLEARVIEW POWER SLIDE mark due to the common distinctive element “POWER SLIDE.
However, I am not persuaded by this reasoning. The Applicant has argued in their submissions:
… given that the likely purchaser of the goods will be a four-wheel drive enthusiast, we believe it is likely the purchaser will be familiar with the terms “fridge slides” or “slides” used by sellers of motor vehicle accessories to refer to storage systems for motor vehicles for storing refrigerators. In this regard, we believe it is worth noting that both the Applicant and the Opponent have used the words “fridge slides’ in their respective trade mark applications/registrations and the use by traders, such as ARB of the word “slides”.
Bearing the above in mind, we believe it is arguable that the words “power slide” are descriptive of a storage system for motor vehicles for storing a refrigerator, namely a “fridge slide” or “slide”, that is actuated by an additional power source and mechanism other than manual labour.
We further believe that the owners of a four wheel drive vehicle or a ute are most likely aware of descriptive terms that include the word “power”, because we believe four-wheel drives typically include seats, mirrors, windows and perhaps even a moon roof, and wherein the position of these items relative to the motor vehicle may be moved, or adjusted, remotely using a mechanism that is operatively connected thereto that is actuated by a power source that is not manual, such as electricity
I agree with the Applicant. The expression POWER SLIDE is the common element in both of the trade mark representations. This term is indicative to the average Australian consumer that the storage systems offered by the Applicant and Opponent involve a ‘powered’ slide system. Turning to the Applicant’s evidence, I note there are examples of third parties using the expression ‘Power Slide’ as a descriptor for their goods[6]. I am satisfied that ‘POWER SLIDE’ has some descriptive appeal and that it is an expression which other traders dealing in powered slide systems are likely to use in the ordinary course of their business. The use of a descriptive term within each of the trade marks is unlikely to cause the potential consumer to wonder whether the trade marks are related.
[6] Exhibits IRT-32 to IRT-34 accompanying Tannahill.
In this case, the respective trade marks are structured similarly. The respective trade marks both contain a combination of words that may be perceived by the average Australian consumer to be a descriptive expression - POWER SLIDES- describing what the goods on offer are and an apt description of fridge slides that are electronically driven. The most striking and distinctive elements of the respective trade marks are essentially the parties ‘house marks’ being CLEARVIEW and MSN. These house marks create considerable changes in the visual, aural and cognitive cues which are important and carry significant weight when comparing the respective trade marks.
Applying all the considerations relevant for an assessment of s 44, I am not satisfied the Trade Mark is deceptively similar to the Opponent’s Trade Mark. This is particularly so when the trade marks are considered, as they must be, as wholes. To refuse the Trade Mark because of the common and descriptive expression POWER SLIDE would impermissibly seize on a single similarity between the trade marks, while ignoring the trade marks in their entirety. I recall, ‘it is the whole mark as used which is the subject of the comparison with the registered mark.’[7]. My finding is that the respective trade marks of the two parties are neither substantially identical nor deceptively similar. As a result of this finding, the ground of opposition under s 44 has not been made out.
[7] Anheuser-Busch Inc v Budejovicky Budvar [2002] FCA 390, [154] (Allsop J).
Section 62A – Application made in bad faith
Section 62A of the Act provides:
The registration of a trade mark may be opposed on the ground that the application was made in bad faith.
Justice Bennett in DC Comics v Cheqout Pty Ltd[8] considered bad faith and endorsed the approach taken by Dodds-Streeton J in Fry Consulting Pty Ltd v Sports Warehouse (No 2)[9], wherein her Honour commented:
Bad faith, in the context of s62A, does not, in my opinion, require, although it includes, dishonesty or fraud. It is a wider notion, potentially applicable to diverse species of conduct.
The formulation in the United Kingdom authority of bad faith as falling short of the standards of acceptable commercial behaviour observed by reasonable and experienced persons in a particular area is, in my view, an apt touchstone. An overly literal application may, however, tend to negate the relevance attributed to the applicant’s mental state in the combined test preferred in [Harrison’s Trade Mark Application [2005] FSR 10, in which the “combined test” of bad faith was said to involve both subjective and objective elements].
Further, in my view, mere negligence, incompetence or a lack of prudence to reasonable and experienced standards would not, in themselves, suffice, as the concept of bad faith imports conduct which, irrespective of the form it takes, is of an unscrupulous, underhand or unconscientious character…
The question is whether, in all the particular circumstances, the applicant’s knowledge was such that his decision to apply for registration at the relevant date would be regarded as in bad faith by persons adopting proper standards.
[8] [2013] FCA 478; (2013) 101 IPR 334.
[9] [2012] FCA 81; (2012) 94 IPR 551, [164].
The Opponent has based its bad faith ground of opposition on the basis of the following circumstances:
(a)    The Applicant’s company had adopted the trade mark POWERED DROP SLIDE for its new automatically actuated fridge slide products. The following post was made in February 2022, and the products were launched under the POWERED DROP SLIDE mark at the Brisbane show in March 2022:
(b)    The Opponent launched its POWER SLIDE products at the Brisbane show and also displayed its towing mirrors under the POWER FOLD mark.
(c)    There was ongoing animosity and conflict between the Applicant and the Opponent, with the hearing of the Applicant’s patent infringement suit against the Opponent due to commence in less than two months.
(d)    The Applicant and the Opponent were in close proximity to one another at the Show from 18-20 March, where the Opponent was promoting its products under its POWER FOLD and POWER SLIDE trade marks.
(e)    On the first business day after the show, the Applicant filed applications to register trade marks which clearly co-opt both of the Opponent’s POWER FOLD and POWER SLIDE marks and which simply combine them with the Applicant’s “MSA” brand. Obviously, the filing of applications to register pirated versions of two of the Opponent’s the day after the Show was not a coincidence.
(f)     A week later, the Applicant filed an application to register the POWER SLIDE trade mark (i.e. without the Applicant’s “MSA” brand) (see No. 2259064 – 2 June 2022).
(g)    After adverse reports were issued in relation to the Applicant’s “MSA POWER SLIDE” and “POWER SLIDE” applications, on 22 July 2022 the Applicant filed an application to register the Opposed Mark, which simply comprises the words “POWER SLIDE” typed in Times New Roman below the Applicant’s stylised “MSA” logo. The Applicant was plainly hell-bent on having any “POWER SLIDE” mark accepted for registration, even though such a crudely developed logo would never be used in that form. The Applicant’s attorney accepted this proposition during the oral hearing of the opposition to the Applicant’s application No. 2257556 in respect of the MSA POWER FOLD mark.
(h)    There is no evidence of the Applicant ever using the Opposed Mark. It cannot be inferred that the Applicant has decided to refrain from using the Opposed Mark until it is registered, because the Applicant began using POWER SLIDE and MSA POWER SLIDE shortly after the Brisbane show without obtaining registration for either of those marks (applications no. 2257454 MSA POWER SLIDE and no. 2259064 POWER SLIDE are currently deferred).
The Applicant counter argued:
…How can a person be deemed to have filed a trade mark application in bad faith when their trade mark contains nothing that the other party can claim they own and/or that functioned as a trade mark in respect of goods the other party offered for sale?
In our opinion, filing an application for a trade mark that comprises the Applicant’s registered trade mark MSA, (registration No. 1835341 for MSA in plain block capitals) represented in a stylized form that is consistent with their use of same over many years preceding the filing date of 22 July 2022, in combination with the words “power slide”, which the Applicant and others believed at the time were descriptive of the way in which the Applicant’s goods function, and wherein the letters MSA are positioned above the words “power slide” and are approximately 5.5 times larger so as to emphasise the distinctive component of the trade mark, cannot constitute an act of bad faith…
…The Applicant, in applying for registration of the trade mark MSA POWER SLIDE represented in a stylized form is merely availing himself of the provisions of s 122(1)(e) which protect him from baseless attacks that he can’t use descriptive words such as “power slide” to describe the goods he sells.
The Opponent has previously asserted that the Opposed Application and applications Nos. 2257454, 2257556 and 2259064 were all filed by the Applicant in bad faith. In relation to application No. 2257556, we respectfully point out that Hearing Officer Jason Galloway, in his decision concerning the Opponent’s opposition to the registration of application No. 2257556, stated:
“The EIA indicates that ‘powerfold’ has some descriptive appeal which adds plausibility to the Applicant’s assertion that ‘powerfold’ is a generic term in relation to these types of goods. But ultimately, I am unable to positively conclude, based on the EIA, that ‘powerfold’ is a descriptive term. For reasons that follow, it is not necessary that I make that finding.
Both parties acknowledge the acrimonious nature of their relationship. The hostility between the parties seems to be exacerbated by the fact that they were recently engaged in a Federal Court matter concerning alleged patent infringement and before this office in relation to multiple trade mark opposition matters. The Opponent asserts that the Applicant filed the four trade mark applications, which includes the present application under consideration, in order to frustrate the Opponent.
While, as discussed above, the evidence of the Applicant does not positively establish ‘Power Fold’ is a term that is common to the trade, both parties evidence indicates to me that the term has some descriptive appeal. I note the parties’ existing relationship raises some potential questions regarding the Applicant’s conduct, however, this is offset by the Applicant’s counter arguments that ‘powerfold’ has some descriptive appeal, and the Applicant’s claim that he wants to use the words “powerfold” to describe a commercialised version of his electrically powered folding mirror.”

I am not satisfied that, in all of the circumstances, the evidence is sufficient to find that the Applicant’s conduct in applying to register the Trade Mark would be considered to have been in bad faith.”

I agree with the Applicant’s argument and much of Hearing Officer Galloway’s assessment is analogous with the current situation before me.[10]
[10] See: Clearview Towing Mirrors Pty Ltd v Shane Miles [2025] ATMO 6 (Hearing Officer Galloway).
The Opponent has also argued that the Applicant’s evidence fails to provide details of the adoption of the Trade Mark, the reasons for adopting the Trade Mark and the process undertaken, and that the Applicant has not denied the Application was made in bad faith, I am not persuaded by this argument. The Applicant has explained that he applied for the Trade Mark in the stylised form to utilise the provisions of s 122(1)(e) which protects him from criticism that he could not use the descriptive words ‘POWER SLIDE’ to describe the goods he sells.
Given that the Applicant has applied for the Trade Mark which essentially includes his ‘house mark’ being the stylised and prominent MSA element along the top the Trade Mark followed by what I have determined to be the descriptive words POWER SLIDE in much smaller text underneath, there is nothing in the Opponent’s evidence that sufficiently supports an argument that the Applicant filed the Trade Mark in bad faith. At any rate, ‘mere knowledge before the relevant date of another person’s trade marks, without more, does not in itself constitute the basis for a finding of bad faith’[11].
[11] 1872 Holdings VOF v Havana Club Holding SA [2017] ATMO 12, [64] (Hearing Officer Thompson).
As such, I am not persuaded that the Applicant applied for the Trade Mark in bad faith. Therefore, the Opponent has not established the ground of opposition under s 62A.
Decision
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: For limitations see section 6.
The Opponent has not established any grounds of opposition. The trade mark application may accordingly proceed to registration one month from the date of this decision. If the Registrar is served with notice of appeal before that time, I direct that registration of the Trade Mark shall not occur until the appeal has been decided or discontinued.
Costs
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 Opponent under section 221 of the Act in terms of Schedule 8 of the Regulations.
Bianca Irgang
Hearing Officer
Oppositions and Hearings
Trade Marks and Designs
30 April 2025

[2025] ATMO 77

30 April 2025

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