Climate Technologies Pty Ltd v Carrier Air Conditioning Pty Ltd
[2011] ATMO 49
•16 June 2011
TRADE MARKS ACT 1995
DECISION OF A DELEGATE OF THE REGISTRAR OF TRADE MARKS WITH REASONS
Re:Opposition by Climate Technologies Pty Ltd to registration of trade mark application 1223523(11) - BRIVIS PROFILER - filed in the name of Carrier Air Conditioning Pty Ltd.
Delegate: | Iain Thompson |
Representation: | Opponent: Margaret Ryan of Phillips Ormonde Fitzpatrick Applicant: Siobhan Ryan of Counsel, instructed by Griffith Hack |
Decision: | 2011 ATMO 49 s52 opposition - s44(1) trade marks BRIVIS PROFILER and PROFILE deceptively similar - s44(3) honest concurrent user not established. Registration refused |
Background
In this matter, Carrier Air Conditioning Pty Ltd of Dingley, Victoria, applied to register the trade mark current details of which appear below:
Application No: 1223523
Priority Date: 8 February 2008
Goods: Class 11: Ducted evaporative air conditioners
Trade Mark: BRIVIS PROFILER
The application was assigned to Brivis Climate Systems Pty Ltd (‘the applicant’) on 10 June 2010.
The application was examined in compliance with section 31 of the Trade Marks Act 1995 (‘the Act’) and advertised as accepted for possible registration in the Australian Official Journal of Trade Marks.
On 16 January 2009, Climate Technologies Pty Ltd of Salisbury, South Australia, (‘the opponent’) filed Notice of Opposition (‘the Notice’) to the registration of the trade mark. The Notice recites most of the grounds of opposition available under the Act including those which were argued at the hearing of the matter being those relevant to sections 44 and 60 of the Act. For the sake of completeness I find that those other grounds have not been established by the opponent.
I heard the matter as a delegate of the Registrar of Trade Marks at a hearing in Melbourne on 8 March 2011. Margaret Ryan of Phillips Ormonde Fitzpatrick represented the opponent. Siobhan Ryan of Counsel, instructed by Griffith Hack, represented the applicant.
It is convenient to record now that this is not the first encounter between these parties concerning this trade mark. The Registrar’s delegate, Mr Terry Williams, previously heard the parties concerning the applicant’s prior application to register the opposed trade mark and his decision concerning the matter is given at Carrier Air Conditioning Pty Ltd v Climate Technologies Pty Ltd [2008] ATMO 9. In his decision Mr Williams found that trade marks of the parties were deceptively similar in terms of subsection 44(1) and that the applicant had not established a proper basis for the application of subsection 44(3).
The Evidence
The evidence in this matter comprises statutory declarations:
In support:
David Scott Aird - 14 November 2005 (“Aird 1”)
Margaret Mary Ryan - 24 July 2009 (“Ryan 1”)
Clive Roger Smith - 31 May 2005 (“Smith”)
Timothy O’Leary - 5 July 2005 (“O’Leary”)
Michael Peter Squires - 6 May 2005 (“Squires 1”)
Michael Peter Squires - 29 September 2006 (“Squires 2”)
Steven John Bensted - 7 April 2006 (“Bensted 1”)
Michael Peter Squires - 29 December 2006 (“Squires 3”)
In answer:
Steven John Bensted - 9 April 2010 (“Bensted 2”)
In reply:
Margaret Mary Ryan - 9 July 2010 (“Ryan 2”)
David Scott Aird - 8 November 2010 (“Aird 2”)
Ryan 1 brings into evidence the declarations which was filed and served in relation to the proceedings before Delegate Mr Williams referred to above, these being the Smith, O’Leary, Squires 1, Squires 2, Bensted 1, and Squires 3 declarations.
Put briefly, both parties manufacture evaporative air conditioners. These relevantly include those which sit on the roofs of houses and supply cool air to the rooms of the houses via ducts in the ceiling space; these are described as being ducted evaporative air conditioners. The opponent’s ducted evaporative air conditioner bears the trade mark PROFILE. The opponent’s PROFILE trade mark is registered and details of this registration are:
Application No: 388294
Priority Date: 7 March 1983
Goods:Class 11: Installations for heating, ventilating, air conditioning and cooling, being air conditioners or evaporative room coolers
Trade Mark: PROFILE
The opponent first used its PROFILE trade mark in relation to a portable evaporative air conditioner in the mid 1980s[1]. The opponent has also used the PROFILE trade mark since early 2004[2] in relation to ducted evaporative air conditioners.
[1] Smith, para 11
[2] Aird 1, para 5
The applicant first used its BRIVIS PROFILER trade mark in relation to ducted evaporative air conditioners in 2003.[3]
[3] Bensted 1, para 6.
This use in 2003 of the opposed trade mark by the applicant resulted in a ‘cease and desist’ letter from the predecessor of the opponent which sparked an exchange of letters between attorneys for the applicant and the opponent culminating in Draft Proceedings which were not filed in Court, because of, Mr Aird states, the costs involved.
It is my understanding of the evidence that both parties’ ducted evaporative air conditioners which bear the trade marks in question are aimed at the lower end of the market.
I will further discuss the parties’ use of their trade marks under the heading Section 44 in these reasons.
Onus
It is the practice of the delegates of the Registrar to follow Pfizer Products Inc v Karam [2006] FCA 1663, as regards onus. Gyles J said of the onus in trade mark oppositions:
I am faced with the clear words of the statute, on one hand, and the opinions of various judges, on the other. There is no binding Full Court authority. I cannot find any instance where a single judge has actually applied the higher standard. In my opinion, in this case, comity does not demand that I depart from my view as to the meaning of the statute. ‘The fundamental responsibility of a court when it interprets a statute is to give effect to the legislative intention as it is expressed in the statute’ per Mason J in Babaniaris v Lutony Fashions Pty Ltd [1987] HCA 19; (1987) 163 CLR 1; cited with approval by Mason CJ, Wilson, Dawson, Toohey and Gaudron JJ in John v Federal Commissioner of Taxation [1989] HCA 5; (1989) 166 CLR 417 at 439. I will, therefore, approach the matter on the basis that the opponent has to establish a ground of opposition, although not clearly establish such a ground, whether in a summary fashion or otherwise.
See also Chocolaterie Guylian N.V. v Registrar of Trade Marks [2009] FCA 891 (18 August 2009) at [22] to [26]. The standard of the onus may nevertheless still be considered a live issue although, in my opinion, it has not been changed by the more recent decision of Lander J in Hills Industries Limited v Bitek Pty Ltd [2011] FCA 94 whose words at paragraphs 54-55 were clearly obiter and his Honour was in any event discussing section 56 of the Act rather than section 52:
In Kowa Co Ltd v NV Organon [2005] FCA 1282; 66 IPR 131 I said that I should follow the decision in Lomas because it was a decision of the Full Court and I should follow Bennett J’s decision in Torpedoes Sportswear Pty Ltd v Thorpedo Enterprises Pty Ltd [2003] FCA 901; 132 FCR 326 as a matter of comity and because other judges of the Court had followed that decision.
That is still my opinion. It may be, as Gyles J has pointed out, that the decision in Lomas was obiter and does not strictly need to be followed but it is a decision of the Full Court in circumstances where there are competing lines of authority at first instance which have left judges of this Court divided. The conflict cannot be resolved at first instance and must be resolved in the Full Court. As I indicated in Kowa Co Ltd v NV Organon [2005] FCA 1282; 66 IPR 131, I favour the reasoning of Gyles J in Clinique Laboratories Inc v Luxury Skincare Brands Pty Ltd [2003] FCA 1517; 61 IPR 130 but thought because of Lomas v Winton Shire Council [2002] FCAFC 413; [2003] AIPC 91-839 and comity I should follow the other line of authority. That is still my view, notwithstanding the criticism of that approach in Pfizer Products Inc v Karam [2006] FCA 1663; 237 ALR 787. [Stress added]
I will accordingly decide this matter on the balance of probabilities.
Section 44
Relevant to these reasons, section 44 of the Act provides:
Identical etc. trade marks
44.(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.
Note 1: For deceptively similar see section 10.
Note 2: For similar goods see subsection 14(1).
Note 3: For priority date see section 12.If the opposition is established in terms of subsection 44(1), the applicant relies on the provision of subparagraph 44(3)(a) which provides
(3) If the Registrar in either case is satisfied:
(a) that there has been honest concurrent use of the 2 trade marks; or
(b) that, because of other circumstances, it is proper to do so;the Registrar may accept the application for the registration of the applicant’s trade mark subject to any conditions or limitations that the Registrar thinks fit to impose. If the applicant’s trade mark has been used only in a particular area, the limitations may include that the use of the trade mark is to be restricted to that particular area.
Note: For limitations see section 6.
Should it become an issue, the onus is on the applicant to establish the honest concurrent user of the opposed trade mark on the balance of probabilities.
In the circumstances before me:
The goods of the parties are the same goods
The priority date of the registration on which the opponent relies is earlier than that of the opposed application.
It is not submitted by the opponent that the trade marks are substantially identical, it therefore remains to be decided whether the trade marks are deceptively similar.
I am to consider the fair and normal use of each trade mark within the particular markets for such goods. In Registrar of Trade Marks v Woolworths [1999] FCA 1020, French J said at paragraph 88:
The test to be applied is that proposed by Evershed J in Re An Application by Smith Hayden & Co Ltd (1945) 63 RPC 97 at 101. That test may be paraphrased for the purposes of this appeal as follows. Assuming use by the proprietor of the cited trade marks in a normal and fair manner for any of the goods or services covered by the registrations of trade marks, is the Court satisfied that there is a reasonable likelihood of deception or confusion among a substantial number of persons if the applicant for registration also uses its mark normally and fairly in respect of services covered by the proposed registration. See also Berlei v Hestia Industries Ltd [1973] HCA 43; (1973) 129 CLR 353 per Mason J at 362.
Some discussion of the way in which the goods are marketed and trade marks are used in the marketplace is appropriate since the comparison of the trade marks takes place in the context of the marketplace.[4] The question thus becomes, “What is fair and normal use of a trade mark within the particular marketplace for evaporative air conditioners?”
[4] In Re Application by the Pianotist Co Ltd (1906) 1A IPR 379 p 380; 23 RPC 774 at 777, per Parker J.
The evidence which I will discuss here is that which shows where the stress in the opposed trade mark lies, or (viewed in another light) where the weight which I attribute to the individual words which form the opposed trade mark should lie.
It is axiomatic that while comparing trade marks, the trade marks should be considered as wholes. However, if the evidence shows that due to peculiarities or idiosyncrasies in the marketing of the goods this ‘wholes’ approach is not appropriate, then this ‘wholes’ approach is obviously subject to some modification or re-casting as to the weight given to the individual elements of the trade marks under comparison.
Much of the opponent’s evidence goes to attempt to establish that the goods are generally marketed under both a house trade mark and a model trade mark. Relevant examples of house trade marks are CELAIR and BREVIS. Relevant examples of model trade marks are PROFILE and PROFILER.
The opponent’s argument is that, in the trade – that is, amongst manufacturers, retailers and installers of ducted air conditioning systems – it is common to omit reference to the house trade mark and refer only to model trade marks.
The evidence in the earlier proceedings before Mr Williams established that the applicant frequently referred to a particular model of ducted air conditioner made by it as the PROFILER – that is, that the house trade mark BRIVIS was frequently omitted by the applicant in its brochures and literature which referred to the goods. The evidence filed and served by the applicant relating to proceedings before me tends to establish that the applicant has attempted (with mixed success) to only designate that particular model of ducted air conditioner as being the BRIVIS PROFILER.
However, the evidence also shows that amongst retailers and installers of ducted air conditioners, (and also the applicant itself) there a tendency to revert to the short form and call ducted air conditioners by only their model name. In particular the evidence shows that the air conditioner in respect of which registration of the opposed trade mark is sought is identified by reference to the trade mark PROFILER.[5]
[5] Ryan 2, Exhibits MMR-3 and MMR-4
This suggests that in the context of the market place for ducted evaporative air conditioners and the matter before me, appropriate weight or notice should be given to the model designator in the opposed trade mark to reflect general usage in the marketplace and to also reflect that that is the most obvious short form to use in relation to that model of evaporative air conditioner. Mr Williams, in his decision concerning the identical facts said in his decision at paragraph 11:
I am required, those things being so, to consider the potential for confusion when the applicant uses BRIVIS PROFILER in normal and fair ways. I believe that I should treat the fact that the applicant has, in the past, abridged its trade mark to simply PROFILER cautiously. The decision by the applicant to use PROFILER as a trade mark is no doubt a significant step, and one that may have serious legal consequences. However, that decision does not, of itself, show that BRIVIS PROFILER is deceptively similar to PROFILE.
I am of course mindful that what the applicant does as a matter of practice might well guide the recall of the ordinary members of the public in buying these products, educating them, as it were, that BRIVIS is a house mark. It may well be that, thus or otherwise, relevant buyers would come to refer to the applicant’s goods as PROFILER rather than using the trade mark in full. The applicant’s actions in abbreviating its trade mark are consistent with the norms of the trade in products as diverse as motor cars and confectionery. Mr Squires, under this heading, noted that it was quite usual for the public to refer to a HOLDEN COMMODORE as a COMMODORE and a CADBURY CHERRY RIPE as a CHERRY RIPE.
However, this matter cannot be simplified down to the single issue, “will the goods be called PROFILER?” It is not so much that there is a prospect of BRIVIS being left out, forgotten or otherwise excluded in the process of using or recalling the applicant’s trade mark. Rather, the question comes down to how I am to assess the likely weight that members of the relevant buying public would give to the two elements of the applicant’s trade marks and how they would react, those things being so, on encountering notional fair use of PROFILE on the goods now specified in the application. What weight, in other words, would they give to the obvious absence, from the opponent’s trade mark, of the word BRIVIS? What function, as part of this, would such buyers impute to the element PROFILER as an element of BRIVIS PROFILER, noting also that the opponent’s trade mark is simply the ordinary English word PROFILE?
The tests applicable to deceptive similarity are set out in Shell Company of Australia Ltd v Esso Standard Oil (Australia) Ltd [1963] HCA 66; (1963) 109 CLR 407 at paragraph 13 per Windeyer J:
On the question of deceptive similarity a different comparison must be made from that which is necessary when substantial identity is in question. The marks are not now to be looked at side by side. The issue is not abstract similarity, but deceptive similarity. Therefore the comparison is the familiar one of trade mark law. It is between, on the one hand, the impression based on recollection of the plaintiff’s mark that persons of ordinary intelligence and memory would have; and, on the other hand, the impressions that such persons would get from the defendant’s television exhibitions. To quote Lord Radcliffe again: “The likelihood of confusion or deception in such cases is not disproved by placing the two marks side by side and demonstrating how small is the chance of error in any customer who places his order for goods with both the marks clearly before him . . . . It is more useful to observe that in most persons the eye is not an accurate recorder of visual detail, and that marks are remembered rather by general impressions or by some significant detail than by any photographic recollection of the whole”: de Cordova v. Vick Chemical Co (1951) 68 RPC, at p 106 . And in Australian Woollen Mills Ltd v. F.S. Walton & Co. Ltd. (1937) 58 CLR 641 Dixon and McTiernan JJ. said: “In deciding this question, the marks ought not, of course, 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” (1937) 58 CLR, at p 658.
The standard which is applied to the test is that specified in Registrar of Trade Marks v Woolworths [1999] FCA 1020 at paragraph 50 by French J who said:
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.
(iii) In considering whether there is a likelihood of deception or confusion all surrounding circumstances have to be taken into consideration. These include the circumstances in which the marks will be used, the circumstances in which the goods or services will be bought and sold and the character of the probable acquirers of the goods and services.
(iv) The rights of the parties are to be determined as at the date of the application.
(v) The question of deceptive similarity must be considered in respect of all goods or services coming within the specification in the application and in respect of which registration is desired, not only in respect of those goods or services on which it is proposed to immediately use the mark. The question is not limited to whether a particular use will give rise to deception or confusion. It must be based upon what the applicant can do if registration is obtained.
In respect of the last proposition, Mason J observed in Berlei Hestia Industries Ltd v The Bali Company Inc [1973] HCA 43; (1973) 129 CLR 353 at 362:
“...the question whether there is a likelihood of confusion is to be answered, not by reference to the manner in which the respondent 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.”
As I have observed, above, I am to make the comparison of the trade mark in the context of the particular goods. This contextual comparison was stressed in Pianotist, above, where Parker J said:
You must take the two words. You must judge of them, both by their look and by their sound. You must consider the goods to which they are to be applied. You must consider the nature and kind of customer who would be likely to buy those goods. In fact, you must consider all the surrounding circumstances; and you must further consider what is likely to happen if each of those trade marks is used in a normal way as a trade mark for the goods of the respective owners of the marks.
Ms Ryan, for the applicant submitted that the word ‘profile’ lacks inherent capacity to distinguish the goods and that notice of this should be taken in the comparison of the trade marks. However, the word ‘profile’ is the sole word within the opponent’s trade mark – if the word does lack capacity to distinguish, as is alleged by the applicant, this forum is not appropriate for a resolution of that issue. It is the only constituent of the opponent’s trade mark and I am obliged to give it due weight.
At the hearing, Ms Ryan, for the applicant, also drew my attention to the dictionary meaning of the word ‘profiler’ which is defined in the Macquarie Dictionary:
profiler
noun a person who compiles a profile (def. 6): police profiler.
In my consideration this meaning of the word ‘profiler’ does not spring to the forefront of one’s mind in the context of the goods. The idea which comes to mind that the one which is given in Bensted 2 as the reason for the applicant selecting the trade mark.[6] That is, that the word PROFILER suggests that the goods, which are installed on top of a house, have streamlined features. In other words, in the context of the goods, the parties’ reasons for selecting the trade marks, the ideas of the words PROFILE and PROFILER, their appearance and the way they are likely to be remembered and recalled are very similar.
[6] Bensted 2 para 5.
In the end, I am in full agreement with Mr William’s decision in the earlier matter and there is no evidence before me which suggests I should deviate from his finding of deceptive similarity. In summarising his decision he said at paragraph 21 of his reasons:
If this were a completely abstract comparison, one where I was left to guess at how the element BRIVIS would be weighed in the memory and in the cognitive processes of relevant consumers, the matter might, arguably, approach balance. Absent a positive finding of deceptive similarity, registration would then be required. The present situation, however, is not such a case. It is a contested opposition, wherein the opponent has relied on material that originates from the applicant itself. I think I am entitled to regard the actions that the applicant has taken, in referring to its trade mark as PROFILER, as being of indicative value as regards the likely thought processes of its customers and potential customers. While I believe that I would have arrived at the same conclusion even without the material put before me by the opponent, the scales have now tipped against the applicant and I therefore find that the two trade marks are deceptively similar.
I also find that the two trade marks are deceptively similar.
I turn now to subparagraph 44(3)(a) and the concurrent user of the trade marks.
In McCormick & Company Inc v McCormick [2000] FCA 1335 Kenny J said at paragraph 30:
Section 44(3) gives the Registrar a discretion to accept an application that would otherwise be rejected under s 44(1) in the case of honest concurrent use or other circumstances making it proper to do so. The authorities establish that the principal criteria for determining whether registration should be permitted pursuant to s 44(3) include:
(1) the honesty of the concurrent use;
(2) the extent of the use in terms of time, geographic area and volume of sales;
(3) the degree of confusion likely to ensue between the marks in question;
(4) whether any instances of confusion have been proved; and
(5) the relevant inconvenience that would ensue to the parties if registration were to be permitted.
See In Re Alex Pirie & Sons Ltd’s Application (1932) 49 RPC 195; (1933) 50 RPC 147 at 159-160; In Re John Fitton & Co Ltd’s Application (1949) 66 RPC 110 at 112; and Stingray Surf Co Pty Ltd v Lister [1997] ATMO 3; (1997) 37 IPR 306 at 310-311. These factors are not necessarily exhaustive of the matters to be considered, but they are a useful guide: see In Re Electrix Ltd’s Application [1957] RPC 369 at 379.
The honesty of the use
Mr Bensted in Bensted 2 describes the circumstances of the adoption of the opposed trade mark. He states:
In 2002, Carrier was selling a premium ducted evaporative air conditioner under the BRIVIS CONTOUR mark. Carrier wished to launch, under a new brand, a new ducted evaporative air conditioner targeted to the builders’ market which had a similar streamlined profile but with less features. On or about September 2002, I was in a room with other staff of Carrier when we were tossing around ideas about what to call this new product, and we were thinking of words similar to CONTOUR which could be used to describe a roof-top unit which was aligned with the slope of the roof on which it sat. I do not remember whether it was me who suggested the name PROFILER at this meeting (it may have been), but I do remember that the name PROFILER was raised and that we liked the name and decided to adopt it at that meeting as the name for the new product. At this meeting, no-one mentioned that PROFILER or PROFILE was the brand name of another air conditioning company’s product. I would not have chosen the PROFILER name if I knew that another air-conditioning company was using it for the same type of product. At this meeting, therefore, I was not aware (and I believe that the staff in the room were not aware) that Climate Technologies, its predecessors or any other company, was using or had used the mark PROFILE or PROFILER with respect to any type of air conditioning product.
After that meeting, Carrier began preparations to use the PROFILER mark. I attach at Annexure B copies of minutes of three meetings (dated 17 September 2002, 3 July 2003 and 10 July 2003) which refer to the PROFILER name, and Carrier’s plans to launch products under that name.
Carrier’s PROFILER product was due to be launched in August 2003. In early July 2003 we discussed the possibility of registering “PROFILER” as a trade mark. Through Wojchiech Lipski of Carrier, we therefore contacted Carrier’s trade mark attorneys, Griffith Hack, on 7 July 2003 and asked them to conduct a trade mark search for the PROFILER mark with respect to evaporative air conditioners. I attach at Annexure C a copy of email correspondence with Griffith Hack in relation to the search for PROFILER and the subsequent choice of BRIVIS PROFILER. It was only when I received Griffith Hack’s email of 9 July 2003 that I first became aware of a trade mark registration for the mark PROFILE, namely No. 388294. I note that Griffith Hack’s advice was that Carrier would not infringe the No. 388294 PROFILE registration if Carrier incorporated the word PROFILER in another trade mark that was sufficiently different to PROFILE, for example CARRIER PROFILER.
I note now that the emailed advice from Griffith Hack refers to “a search of the official records of the Australian Trade Marks Office” and states:
The search located Australian Registration 388294 for the trade mark PROFILE in respect of installations for heating, ventilating, air conditioning, being air conditioners or evaporative room coolers in the name of Ilec Investments of 26 Nylex Avenue, Salisbury, South Australia.
I believe that use by Carrier of the trade mark PROFILER in respect of evaporative air conditioners would infringe the registration.
The registration is based on an application that was lodged on 7 March 1983. Given the amount of time that has passed since this date, it is possible that the owner of the registration may no longer be interested in the trade mark or no longer uses the trade mark. With regard to the latter point, we would be able to remove the registration from the Trade Marks Register if it is the case that the owner of the registration has not used the trade mark during the last 3 years. In the circumstances, it may be worthwhile making enquiries to determine if the trade mark is being used and, if so, whether the owner is prepared to assign the registration to Carrier or otherwise consent to Carrier using the trade mark PROFILER.
Another option for Carrier is to incorporate the word PROFILER in another trade mark that is sufficiently different to the registration to avoid infringement of the registration. For example, I believe that the trade mark CARRIER PROFILER would not infringe the registration.
Bensted 2 continues:
Consistent with Griffith Hack’s advice, and in view of BRIVIS being a well known brand and as I viewed the word PROFILER as a word that described a roof-profile hugging product, the marketing staff of Carrier and I decided to adopt the mark BRIVIS PROFILER for the new ducted evaporative air-conditioning product. Both at this date of adoption of BRIVIS PROFILER (on about 15 July 2003) and ever since, I have considered that there would be little or no likelihood of confusion between the trade marks PROFILE and BRIVIS PROFILER.
The inherent contradiction in the above paragraph is this: if the word ‘profiler’ was as descriptive as Mr Bensted understood it to be, it could not have been prima facie registrable as a trade mark as it was first sought to be.
I note that there are intrinsic dangers in the course suggested by the firm of attorneys and adopted by the applicant. The first and most obvious is that it might be perceived that the applicant was not using one trade mark – it might be viewed as using two trade marks together. The circumstances of the case Wellness Pty Limited v Pro Bio Living Waters Pty Limited [2004] FCA 438[7] might be fairly regarded as being analogous in a situation in which a person uses both a house trade mark and a model designator together.
[7] At para 32 of her reasons, Bennett J held: “In my view, as used and as it would be understood by consumers, PRO-BIO is used to denote the company that is the origin of the range of waters collectively marketed and distinguished in the course of trade under the name LIVING WATERS. LIVING WATERS is thereby used as a separate trade mark.”
The second danger is that there could be a natural tendency on the part of the applicant or its wholesalers or distributors to refer to the goods by the model designator only. Such uses would tend to reinforce the perceptions referred to in the paragraph above.
Examples in evidence of the applicant’s past use of the opposed trade mark which stress the dangers referred to above include:
| Trade Mark | Exhibit | Date |
| SJB-1 | Apparently contemporaneous with Bensted 1 | |
| Third line, above, reads: | SJB-1 Source: Origin Energy Advertisement | As above |
| Annexure J to Bensted 1 | August 2009 | |
| Annexure J to Bensted 2 | 18 January 2010 | |
| Annexure J to Bensted 2 | 18 January 2010 | |
| MMR-3 | 6 July 2010 | |
| [8] | MMR-3 Source: Advertisement of Dual Heating and Air Conditioning Pty Ltd | 6 July 2010 |
| MMR-3 Source: Advertisement by Woodpecker Heating & Cooling Specialists | 6 July 2010 | |
| MMR-3 Source: | 8 July 2010 | |
| Brivis Advance and Profiler coolers use the “Running Refresh” method for tank water quality control. | MMR-4 Source: Brivis Owners Manual[9] | 8 July 2010 |
| MMR-4 Source: Brivis Owners Manual | 8 July 2010 | |
| Advance and Profiler models will complete a flush service approximately every 20 cycles of the pumps operation. | MMR-4 Source: Brivis Owners Manual | 8 July 2010 |
[8] The text below this heading reads, “The Profiler Series utilizes advanced technologies designed specifically for the Contour Series to provide you and your home with the best in evaporative cooling by Brivis. The Profiler is a far more personalised cooling system …”
[9] The Brivis Owners Manual is available at and is accessible to any prospective purchaser.
In the above examples the trade mark PROFILER is either stressed in relation to the word BRIVIS or used separately from it.
The difficulty that the applicant finds itself in is illustrated by the fact that most of the above usages occurred despite a warning dated 15 October 2003 in an email of Mr Charles Benevento of the applicant that “(E)verything that goes out with our brand (any brand), must be pre-approved before going out ‘live’ just in case it is [misused], incorrect logo is used or that there is an error. We really need to be brand precious.” Mr Benevento sent a further email on the same date to Mr Bensted asking that he draft an appropriate letter to Origin Energy in whose catalogue the particular usage occurred.
However, the above examples demonstrate that the word PROFILER is frequently used by the applicant on its own to designate a particular model of its evaporative air conditioners.
The onus is on the applicant to satisfy me that it has established its case of honest concurrent user. While the examples above may not unequivocally show that the applicant has not used the opposed trade mark honestly, they illustrate the difficulties in doing so and the examples, in my consideration, sway the balance against the applicant. In my consideration, what the evidence shows is that the applicant uses two trade marks: BRIVIS (as a house trade mark) and PROFILER (as a model trade mark) and that, while it has attempted to ensure that the trade marks are used together, this has been and remains an impossible task. The evidence demonstrates that human nature is inevitably prone to shorten the opposed trade mark to PROFILER (even in the applicant’s own very recent publications).
In the email from the attorneys for the applicant advising the results of their search of the word ‘profiler’ on the official records of the Trade Marks Office they advised that, “[the] use by Carrier of the trade mark PROFILER in respect of evaporative air conditioners would infringe the [opponent’s] registration.” Obviously, at least some of the use of the trade mark by the applicant falls into that category.
Whilst this is the case, the applicant has not established to my satisfaction the honest concurrent use of the opposed trade mark with the opponent’s trade mark.
It is worthy of note that the applicant followed the advice of its attorney in the adoption and use of the opposed trade mark. The advice had obvious inherent dangers within it which the applicant was unlikely to appreciate: thus the adoption of the trade mark by the applicant was honest. However, is the applicant’s mode of use of the opposed trade mark which is a problem.
The ground under subsection 44(1) has been established by the opponent and the applicant has not established its case under subsection 44(3)(a).
Decision
Section 55 of the Act provides:
Decision
55. 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.
I refuse to register application 1223523.
Costs
The opponent is entitled to its costs which I award at the official scale against the opponent.
Iain Thompson
Hearing Officer
Trade Marks Hearings
16 June 2011
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