Climate Technologies Pty Ltd v Carrier Air Conditioning Pty Ltd

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

1. 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

1. The application was assigned to Brivis Climate Systems Pty Ltd (‘the applicant’) on 10 June 2010.

2. 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.

3. 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.

4. 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.

5. 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

1. The evidence in this matter comprises statutory declarations:

2. 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”)

3. In answer:

   Steven John Bensted - 9 April 2010 (“Bensted 2”)

4. In reply:

   Margaret Mary Ryan…