Climate Master (Australia) Pty Ltd v Seeley International Pty Ltd and FF Seeley Nominees Pty Ltd

[2016] ATMO 68

TRADE MARKS ACT 1995

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

Re:Oppositions by Climate Master (Australia) Pty Ltd to registration of trade mark applications 1596545, 1596547 and 1596549 – CLIMATE MASTERS OF SEELEY INTERNATIONAL – in the name of Seeley International Pty Ltd and FF Seeley Nominees Pty Ltd

Delegate:	Debrett G. Lyons
Representation:	Opponent: Chris Burgess of Counsel, instructed by of Spruson & Ferguson, Patent & Trade Mark Attorneys Applicant:  Stephen Rebikoff of Counsel, instructed and assisted by Michael Wolnizer of Davies Collison Cave, Patent & Trade Mark Attorneys
Decision:	2016 ATMO 68 Oppositions under section 52 of the Trade Marks Act 1995: s 60 considered; sufficient reputation on which to base s 60; likelihood of confusion or deception – opposition established.

Background

1. In this matter Climate Master (Australia) Pty Ltd (“the Opponent”)[1] has brought oppositions pursuant to section 52 of the Trade Marks Act 1995 (“the Act”) to registration of the trade mark, CLIMATE MASTERS OF SEELEY INTERNATIONAL (“the Trade Mark”), subject of the three applications detailed below (together, “the Opposed Applications”) in the name of Seeley International Pty Ltd and FF Seeley Nominees Pty Ltd (“the Applicant”):

   Application Number:        1596545

   Services:Class 35: advertising; promotional services; promotion and public relations; business and administration services in connection with dealer membership programs; organisation and management of dealer loyalty programmes; business development advisory services; association or membership services being the promotion of the interests of members of the association or group

   Application Number:        1596547

   Services:Class 41: Education and training services; planning, organising and conducting seminars, meetings and conferences for education and training purposes and to provide information on new product launches; association or membership services being the provision of training and education to members of the association or group

   Application Number:        1596549

   Services:Class 42: Accreditation services relating to the application of quality standards; association or membership services being the certification of goods or services provided by members of the association or group; certification services relating to quality

   [1] Although the oppositions were filed in the name of Climate Master Pty Ltd, it appears from the Opponent’s evidence that the relevant entity is in fact called Climate Master (Australia) Pty Ltd and so I have referred to the Opponent by that name.

2. The Opposed Applications were filed on 12 December 2013 (“the Priority Date”) but their paths through examination to advertisement of acceptance differed in time as did the dates of the Notices of Intention to Oppose, the Statements of Grounds and Particulars and the Notices of Intention to Defend (the dates not being material to the decision in this case).  Thereafter the parties filed evidence in accordance with the Trade Marks Regulations 1995 (“the Regulations”) as follows:

   Evidence in Support

   (a)statutory declaration of Robert Edward Williams, director of the Opponent, made 12 December 2014 (“the First Williams Declaration”);

   (b)statutory declaration of Helen Therese Smith, receptionist at the Opponent, made 15 December 2014 (“the Helen Smith Declaration”);

   (c)statutory declaration of Anthony Edward Smith, salesman with the Opponent, made 15 December 2014 (“the Anthony Smith Declaration”); and

   (d)statutory declaration of Francesca Giulia Colubriale, solicitor for the Opponent, made 16 December 2014 (“the First Colubriale Declaration”).

   Evidence in Answer

   (a)statutory declaration of Frank Seeley AM, Chairman of the Applicant, made on 4 May 2015 (“the Frank Seeley Declaration”);

   (b)statutory declaration of Harold Adolphe Seeley AM, former Managing Director of Craig & Seeley Ltd, made on 4 May 2015 (“the Harold Seeley Declaration”);

   (c)statutory declaration of Aparna Watal, solicitor for the Opponent, made on 16 December 2014 (“the Watal Declaration”);

   (d)statutory declaration of Larissa Vella-Xuereb, licensed private enquiry agent, made on 21 October 2015 (“the Vella-Xuereb Declaration”); and

   (e)statutory declaration of Paul Munster, General Counsel and Company Secretary of the Applicant, made on 22 October 2015 (“the Munster Declaration”).

   Evidence in Reply

   (a)statutory declaration of Robert Edward Williams, director of the Opponent, made on 21 August 2015 (“the Second Williams Declaration”); and

   (b)statutory declaration of Francesca Giulia Colubriale, solicitor for the Opponent, made on 21 August 2015 (“the Second Colubriale Declaration”).

3. Most of this evidence is common to the three oppositions; some is particular[2] but the variation does not affect the reasoning or the outcome which is the same for all.

   [2] For example, the Vella-Xuereb and Munster Declarations have only been filed in relation to application 1596545.

4. A hearing was convened in Canberra on 28 June, 2016.   As a delegate of the Registrar of Trade Marks I heard submissions from Chris Burgess of Counsel, acting for the Opponent and instructed by Spruson & Ferguson, Patent & Trade Mark Attorneys.  The Applicant was represented by Stephen Rebikoff of Counsel, assisted and instructed by Michael Wolnizer        of of Davies Collison Cave, Patent & Trade Mark Attorneys.

5. In the lead up to the hearing both sides provided me with outline written submissions in accordance with a timetable I gave. The Opponent’s submissions showed that it intended to rely on grounds of opposition listed in the Statements of Grounds and Particulars corresponding with sections 42(b), 44, 60 and 62A of the Act[3].

   [3] under s 42(b) that use of the Trade Mark would be contrary to law; under s 60 that use of the Trade Mark is likely to deceive or cause confusion because of the prior reputation of another trade mark; under s 44 that the Trade Mark is substantially identical with, or deceptively similar to, a prior trade mark registered by another person in respect of similar goods; under s 62A that the applications for the Trade Mark were made in bad faith.

6. The Opponent bears the onus of establishing at least one of those grounds of opposition.  The standard of proof is the ordinary civil standard based on the balance of probabilities.[4] The relevant date for assessing the grounds of opposition is 12 December 2013.[5]

   Discussion and reasoning

   [4] Following Gyles J in Pfizer Products Inc v Karam (2006) 70 IPR 599 at [6] to [26]. See also the recent decision of the Full Federal Court in Telstra Corporation Limited v Phone Directories Company Pty Ltd [2015] FCAFC 156 (4 November 2015) at [132]-[133] affirming Gyles J’s approach.

   [5] Southern Cross Refrigerating Co v Toowoomba Foundry Pty Ltd (1954) 91 CLR 592, per Kitto J at 595.

7. I am able to decide the oppositions under section 60, which is reproduced below:

   Trade mark similar to trade mark that has acquired a reputation in Australia

   The registration of a trade mark in respect of particular goods or services may be opposed on the ground that:

   (a) another trade mark had, before the priority date for the registration of the first-mentioned trade mark in respect of those goods or services, acquired a reputation in Australia; and

   (b) because of the reputation of that other trade mark, the use of the first-mentioned trade mark would be likely to deceive or cause confusion.

   Note:  For priority date see section 12.

   Reputation

8. As can be seen, a reputation is essential to the Opponent’s success under section 60. In McCormick & Co Inc v McCormick[6] (‘McCormick’) Kenny J said at [81]:

   What is intended by the word "reputation" in s 60? The word is defined in The Macquarie Dictionary as follows:

   reputation ... 1. the estimation in which a person or thing is held, esp. by the community or the public generally; repute ... 2. favourable repute; good name ... 3. A favourable and publicly recognised name or standing for merit, achievement, etc. ... 4. The estimation or name of being, having done, etc, something specified.

   Cf. The Oxford English Dictionary. In s 60, the word is, I think, apt to refer to "the recognition of the McCormick & Co marks by the public generally".

   [6] [2000] FCA 1335; (2000) 51 IPR 102; [2000] AIPC 38-192.

9. As for the assessment of reputation, Kenny J went on to say at [86]:

   In practice, it is commonplace to infer reputation from a high volume of sales, together with substantial advertising expenditures and other promotions, without any direct evidence of consumer appreciation of the mark, as opposed to the product: see, e.g., Isuzu-General Motors Australia Ltd v Jackeroo World Pty Ltd (1999) 47 IPR 198; Marks & Spencer plc v Effem Foods Pty Ltd (2000) AIPC 91-560; Photo Disc Inc v Gibson (1998) 42 IPR 473; and RS Components Ltd v Holophane Corp (1999) 46 IPR 451. This Court has followed this approach as well, acknowledging that public awareness of and regard for a mark tends to correlate with appreciation of the products with which that mark is associated, as evidenced by sales volume, amongst other things. Thus, in Toddler Kindy Gymbaroo Pty Ltd v Gymboree Pty Ltd [2000] FCA 618 ("Gymboree"), Moore J accepted at [94] that the applicant had established a reputation for the purposes of s 60 solely on the basis of use and promotion of the relevant mark. Another example of this approach is Nettlefold Advertising Pty Ltd v Nettlefold Signs Pty Ltd (1997) 38 IPR 495 ("Nettlefold"), in which Heerey J relied upon the public visibility of the applicant's marks over approximately two decades as well as a $100,000 promotional campaign in finding that a reputation for the purposes of s 28 of the 1955 Act existed.

10. The Opponent’s evidence of reputation is principally found in the First Williams Declaration. Mr Williams is a co-founder of the Opponent and has been a director of the company since July 1997. He declares that since September 1998 the Opponent has provided for the sale, installation, repair and maintenance of heating and cooling systems (“the Opponent’s Services”) by reference to the expression CLIMATE MASTER (the “Word Mark”). For the purposes of section 60 the Opponent asserts trade mark rights in the Word Mark and in a CLIMATE MASTER logo shown below (the “Logo Mark”):

11. The Logo Mark has been registered since 24 February 1999 (trade mark number 786505)  in respect of the following services:

    Class 35: Sale of airconditioning systems, equipment, apparatus, parts and accessories for airconditioning systems, equipment and apparatus 

    Class 37: Installation, repair and maintenance of heating and cooling systems, airconditioning systems, equipment and apparatus 

12. The Opponent’s business premises are located in the Canberra suburb of Fyshwick. From there it has continuously served customers in the ACT and, it is said, nearby areas in New South Wales, over the years leading up to the Priority Date. The Fyshwick offices include a large showroom. At the time of the First Williams Declaration the Opponent’s services were enabled by 12 vehicles all bearing the livery of the business. Since 2000 a developed website has existed which receives approximately 5000 hits per annum.

13. The Opponent has promoted its business in various ways including advertisements on local television and radio and in newspaper and other print advertising such as flyers and brochures and point of sale material.  The Opponent has sponsored NRL players and run various promotional competitions.

14. Sales figures for the period leading up to the Priority Date have been provided on a confidential basis and can be characterized as very substantial relative to the nature of the business. 

15. I have left it open whether all of these sales and promotional activities have been undertaken by reference to both of the Opponent’s claimed trade marks since this is a matter of contention, as are other matters now considered.

16. The Applicant asserts that the only mark given prominence in the advertising and promotion of the Opponent’s business[7] is the stylised (and coloured) CLIMATE MASTER trade mark shown below:

    [7] on signage, vehicles, uniforms, stationery and on the Opponent’s website.

17. The Applicant alleges “some incidental use of the words CLIMATE MASTER … not sufficient to establish a reputation among a significant or substantial number of members of the public.

18. Further, the Applicant alleges that the words CLIMATE MASTER lack inherent distinctiveness (and would themselves be unregistrable as a trade mark) in connection with the Opponent’s Services.

19. Furthermore, the Applicant claims that in many instances use of the words CLIMATE MASTER has not been trade mark use but use merely referring to the Opponent as a business entity.

20. Finally, the Applicant submits that any reputation would be territorially limited.  It states in its written submissions[8] that:

    although the Opponent claims to have a reputation which extends throughout New South Wales and the Australian Capital Territory, it is plain that the Opponent’s use of the CLIMATE MASTER trade mark since 1999 has been limited almost exclusively to the city of Canberra. The Opponent has a single showroom located in Fyshwick, advertises only in media directed to the Canberra market, and describes itself on its website as “one of Canberra’s heating and air conditioning specialists”.

    Indeed, while the Opponent claims to make its services available in Queanbeyan and “surrounding districts”, there is no evidence that the Opponent has actually supplied products or services to any customers located outside of the Australian Capital Territory.

    [8] Applicant’s original footnotes being omitted.

21. I cannot agree completely with any of those criticisms.  In my assessment, there is evidence of use of the Word Mark and evidence of its use in a trade mark sense.  However, my final decision does not depend on a finding that a reputation exists in the Word Mark for these reasons.

22. The more abundant use is of the Logo Mark (in black and white as registered and in colour as shown above in paragraph 16). In my assessment there is clear evidence that the Logo Mark had a reputation on the Priority Date. I find that reputation existed in respect of the Opponent’s Services. Further, for the purposes of the discussion which follows in relation to the likelihood of confusion or deception, I find that the stylisation (and occasional colouration) of the Logo Mark is unremarkable and that the essential element of the Logo Mark is the words, “CLIMATE MASTER”. Finally, having regard to the promotion of the business over a lengthy period and by way of television and radio advertisement, I find that this reputation existed throughout the ACT and extended to surrounding parts of New South Wales.

23. I note here in passing that section 60 requires a reputation in Australia, not an Australia-wide reputation,[9] a matter to which I will return briefly in connection with the Applicant’s fall-back position that the oppositions could result in no better outcome for the Opponent than a territorial limitation of the Applicant’s monopoly to exclude the ACT.

    [9] See, for example, Toddler Kindy Gymbaroo Pty Ltd v Gymboree Pty Ltd [2000] FCA 618 where Moore J said at para. 94: “I am satisfied that at this time the mark constituted by the word "Gymbaroo" had a reputation, in Melbourne, Geelong and elsewhere in Victoria at least in the market for the provision of services of the type provided by TKG. It thus had a reputation in Australia for the purposes of s 60.”

    Likelihood of deception or confusion

24. The assessment of the likelihood of confusion depends on reputation, but regard must also be paid to the level of similarity of the services and the degree of similarity of the trade marks.

25. In Registrar of Trade Marks v Woolworths[10] French J said at [50]:

    In Southern Cross Refrigerating Co v Toowoomba Foundry Pty Ltd (1954) 91 CLR 592 at 594-5, which concerned the 1905 Act, Kitto J set out a number of propositions which have frequently been quoted and applied to the 1955 Act. The essential elements of those propositions continue to apply to the issue of deceptive similarity under the 1995 Act. Applied also to service marks and absent the imposition of an onus upon the applicant they may be restated as follows:

    (i) To show that a trade mark is deceptively similar to another it is necessary to show a real tangible danger of deception or confusion occurring. A mere possibility is not sufficient.

    (ii) A trade mark is likely to cause confusion if the result of its use will be that a number of persons are caused to wonder whether it might not be the case that the two products or closely related products and services come from the same source. It is enough if the ordinary person entertains a reasonable doubt.

    It may be interpolated that this is another way of expressing the proposition that the trade mark is likely to cause confusion if there is a real likelihood that some people will wonder or be left in doubt about whether the two sets of products or the products and services in question come from the same source.

    [10] [1999] FCAFC 1020; [1999] FCA 1020; (1999) 93 FCR 365; (1999) 45 IPR 411; [1999] AIPC 91-499.

26. The Applicant’s submissions in this respect can be reduced to a handful of key propositions, being that:

    ·“whatever reputation exists in the mind of the public in Canberra in connection with the Opponent’s marks, that reputation is clearly one which is inexorably bound up with the particular characteristics of the Opponent’s business as an independent supplier of heating and air conditioning systems manufactured by third parties and sold under distinct brand names…”

    ·“Accordingly, for consumers in Canberra that know of the Opponent, that is the reputation associated with the CLIMATE MASTER trade mark.” 

    ·“… a fundamental difference between the marks is the presence of the distinctive phrase OF SEELEY INTERNATIONAL, which  constitutes a significant distinguishing feature of the Opposed Marks that is wholly absent from the Opponent’s mark. That phrase serves to qualify the reference to CLIMATE MASTERS by supplying a source for the mark’s indefinite element (the CLIMATE MASTERS come from, or belong to, SEELEY INTERNATIONAL).”

    ·“…the presence of the dominant and distinctive element SEELEY INTERNATIONAL and the fundamentally different sense in which the words CLIMATE and MASTER are used in each mark makes it plain that the services bearing the marks are unrelated.”

    ·“The [Applicant’s] supply of administration and promotional services bears no relationship to the retail and repair of goods. The former is directed primarily at businesses (prospective members of the Applicant’s dealer membership scheme) while the latter is directed solely at consumers. Further, consumers who know of the Opponent’s business know that it is not a manufacturer and does not, and has never had, a network of ‘dealers’.”

    ·“… in the case of dealers the likelihood of deception or confusion is further reduced by the presence of the dealer’s own business name or trade mark.  For the same reason, the suggestion that the Applicant or its dealers will abbreviate the Opposed Mark by omitting the reference to SEELEY INTERNATIONAL is fundamentally misconceived. … To do so would be to undermine the very purpose of the dealer membership scheme: to convey an association with SEELEY INTERNATIONAL.”

27. Contrast the Opponent’s submissions which, again in redacted form, are that:

    ·“… the most distinctive and memorable feature of the prior registered CLIMATE MASTERS Device trade mark is the words CLIMATE MASTER.  The degree of stylisation provided by the font and broken circle/curved wisp device is too plain and modest to enjoy more than secondary trade mark significance.” 

    ·“Further, the CLIMATE MASTERS OF SEELEY INTERNATIONAL trade mark will inevitably be abbreviated by some persons to CLIMATE MASTERS and/or CLIMATE MASTER from time to time.  The press and Seeley’s dealers already do this.”[11]

    ·“… Seeley seeks registration of services connected with the operation of its dealer accreditation program.  The services in the class 42 specification for opposed TM 1596549 thus include “accreditation services … certification services relating to quality”, etc.  The other services in opposed TMS 1496545 and 1596547 are services associated with, or ancillary to, operation of an accreditation program, such as “promotional services” in class 35 and “association or membership services being the provision of training and education to members of the association or group” in class 41.”

    ·“The services to be accredited and certified under the opposed marks are the very services that are the subject of the prior CLIMATE MASTER (Device) trade mark, i.e., sale, supply, installation and maintenance of heating and cooling systems.” 

    ·“… a consumer exposed to the CLIMATE MASTERS OF SEELEY INTERNATIONAL trade mark might well, for example, wonder whether Climate Master has joined forces with Seeley by licensing its name to Seeley, or becoming a Seeley product dealer, or agreeing to participate in Seeley’s accreditation program.

    [11] The Opponent relies on the Applicant’s press release shown at REW-18 of the First Williams Declaration: “The introduction of distinctive uniforms, vehicle and office branding and signage will ensure that customers can easily recognise that they are receiving superb service from a Climate Master [sic] dealer.”  Also on REW-19: “It isn’t easy to gain official Climate Masters accreditation …”. 

1. My decision based on the established reputation in the Logo Mark.  Whether or not a (lesser) reputation might also exist in the Word Mark, I am in agreement with the Opponent’s submission that the dominant and memorable part of the Logo Mark is the term, “CLIMATE MASTER”.  Based on the confidential sales (and other) information I find that reputation to be have been solid at the Priority Date and I make that characterisation taking full account of the degree of distinctiveness of the expression “CLIMATE MASTER” when used in connection with the Opponent’s Services.[12]

   [12] Seeing no reason in these proceedings to descend into the considerations attaching to whether or not the unembellished words “CLIMATE MASTER” might or might not be registerable as a trade mark for those same services.

2. What I must consider in the case of section 60 is the fair notional use the Applicant might make of the Trade Mark in relation to the applied-for services.[13]  I take note of the Opponent’s submissions regarding the conclusions that relevant members of the public would draw when faced with the Applicant’s use of the Trade Mark in respect of the applied-for services.  I regard those conclusions as reasonable and likely.  Whatever might have been made of the nature of the applied-for services by the Applicant’s representatives, at heart they are all inexorably tied with the Applicant’s dealer accreditation scheme and the likely and, on the evidence, manifest use of the Trade Mark is self-endorsement by those accredited dealers.  Further, I was surprised and remain perplexed by the Applicant’s argument that the added words, “OF SEELEY INTERNATIONAL”, would dispel any likelihood of confusion.  Anglo-Australian trade mark law has never required the identity of a trade mark owner to be known by the public and those members of the relevant public, familiar with the Logo Mark but knowing not the business entity behind it, may very likely indeed on seeing the Trade Mark in use, have reason to wonder whether the services offered under the Logo Mark had, all along, been services provided by the Applicant.  In the result, I find that because of the Opponent’s reputation before the Priority Date in a very similar trade mark, there is a real and tangible danger of deception or confusion.

   [13] As Mason, J observed in Berlei Hestia Industries Ltd v Bali Co Inc (1973) 129 CLR 353 at 362:

3. I am reassured of that finding by the Opponent’s claims of actual confusion.   In particular, it is said that after the Applicant began use of the Trade Mark in October 2013, the Opponent started to receive enquiries concerning products, services and promotions offered by the Applicant.[14]  Whilst the Applicant is critical of the evidence said to support that claim, its criticisms carry the innuendo that the Applicant’s business is the market leader and confusion can only occur through the agency of others.  So, for example, the Applicant’s written submissions state:

   “To the extent they show customers of the Applicant or its dealers contacting the Opponent in error, it is clear that such errors are not caused by any pre-existing reputation of the Opponent, but rather appear to be a product of consumers searching for the Applicant and being diverted by advertising for the Opponent.”

   [14] For example, shown at REW-20 of the First Williams Declaration is a 23 May 2014 email from a customer of the Opponent stating: “I am not sure who did the initial installation but TV advertisement for Climate Master has indicated a seven year warranty on installed systems”.  It is the Applicant (and not the Opponent) which promotes an “incredible seven year warranty” in its advertising materials as a benefit from choosing an accredited dealer: per Exhibit 17 to the Frank Seeley Declaration. 

4. The Opponent has accordingly established its ground of opposition under section 60.

   Decision

5. Section 55(1) of the Act relevantly provides that, unless the proceedings are discontinued or dismissed:

   …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.

6. What remains to be considered in brief is whether section 55(1)(b) might be applied by way of a condition or limitation of registration of the Trade Mark such that protection does not extend to the ACT. I think not. As said already, the Opponent need only prove, as it has done, a reputation in Australia, not an Australia-wide reputation. The Trade Mark, if registered even with such a limitation, is still capable of causing confusion.

7. The opposition has succeeded and so I refuse to register the Trade Mark.

   Costs

8. Having been successful in these proceedings the Opponent is entitled to his costs which I award against the Applicant at the scale set out in Schedule 8 to the Regulations.

   Debrett G. Lyons
   Hearing Officer
   Trade Marks Hearings
   6 September, 2016

   
   

“the question whether there is a likelihood of confusion is to be answered, not by reference to the manner in which the [Applicant] has used its mark in the past, but by reference to the use to which it can properly put the mark. The issue is whether that use would give rise to a real danger of confusion.”