Combined Group of Companies Pty Ltd v Reln Pty Ltd

[2017] ATMO 85

TRADE MARKS ACT 1995

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

Re:Opposition by Combined Group of Companies Pty Ltd to registration of trade mark application no. 1401705 – RAIN MATE - in the name of Reln Pty Ltd.

DELEGATE:

Bianca Irgang

REPRESENTATION:

Opponent: Written submissions by way of its legal representatives Fraser Old & Sohn

Applicant: Russel Waters of Phillips Ormonde Fitzpatrick

DECISION:

2017 ATMO 85

Section 52 opposition: sections 44, 58, 59 and 60 pressed – no ground of opposition established – trade mark to proceed to registration.

Background

1. Reln Pty Ltd (‘the applicant’), filed trade mark application number 140170 on 22 December 2010 in classes 6 and 19 of the International Classification of Goods and Services. Current details of the application are set out below.

1. Acceptance of the application for possible registration was published in the Australian Official Journal of Trade Marks on 15 May 2014. Subsequently Combined Group of Companies Pty Ltd (‘the opponent’) filed a Notice of Intention to Oppose registration followed by its Statement of Grounds and Particulars1.

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

3. I heard the opposition in Canberra as a delegate of the Registrar of Trade Marks on 18 April 2017. The applicant was represented by Russell Waters of Phillips Ormonde Fitzpatrick. The opponent was not present at the hearing but did provide written submissions for consideration by way of its legal representatives, Fraser Old & Sohn.

Grounds of Opposition

1. The Notice nominated four grounds of opposition under the Trade Marks Act 1995 (‘the Act’). Those grounds, namely, sections 44, 58, 59 and 60 were pursued at the hearing. The onus is upon the opponent to establish one or more of its grounds of opposition. The Full Bench in Telstra Corporation Limited v Phone Directories Company Pty Ltd2affirming the approach of Gyles J in Pfizer Products Inc. v Karam3where Justice Gyles J has referred to the standard of proof required in these matters in terms of a ‘balance of probabilities’. Should the opponent establish one ground of opposition in relation to all of the applicant’s goods, there is no requirement for me to consider the other grounds of opposition.

Evidence

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

Evidence in Support

·Declaration of Shaun Leslie Griffin ( ‘Griffin 1’) dated 9 December 2014 with Exhibits SLG-1 to SLG-19

·Declaration of Jamie Slater (‘Slater’) dated 1 December 2014 accompanied by Exhibit JS1

1 which together constitute ‘the Notice’

2 [2015] FCAFC 156, [133]

3 [2006] FCA 1663, [26]

Evidence in Answer

·Declaration of Owen Edward Luke (‘Luke’) dated 17 April 2015 with Exhibits OEL-1 to OEG-22

·Declaration of Frank Villeneuve Nicholson (‘Nicholson’) dated 10 April 2015

·Declaration of Grahame Barker (‘Barker’) dated 10 April 2015 with Exhibits GB-1 to GB-4

Evidence in Reply

·Declaration of Shaun Leslie Griffin ( ‘Griffin 2’) dated 3 August 2015 with Annexures A to F2

Discussion

Section 44 –Substantially identical or deceptively similar

1. Section 44 of the Act relevantly provides:

44       Identical etc. trade marks

(1)Subject to subsections (3) and (4), and 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)…; 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.

1. To establish its opposition under 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 applicant, and in relation to which the applicant’s 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 goods of the same description; and

   ·the priority date of the trade mark(s) of the other person is (must be) earlier than the priority date of the application.

2. The opponent cited one trade mark registration in support of the section 44 ground of opposition which is as follows:

1. The opponent is the registered owner of the above trade mark which has an earlier priority date than that of the Trade Mark. The next issue I will decide is whether the Trade Mark is either substantially identical or deceptively similar to the opponent’s trade mark. The respective trade marks can be seen below:

Opponent’s trade mark	Applicant’s Trade mark
Rainmate	RAIN MATE

1. It is obvious that the Trade Mark is substantially identical with the opponent’s 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.4 Both trade marks consist of the words ‘rain mate’ in plain script. The fact that the opponent’s trade mark does not contain a space between the words is not sufficient to preclude the trade marks from being substantially identical.

2. The final consideration, and the one which is of main contention between the parties, is whether the goods covered by the opponent’s trade mark are similar goods or goods of the same description as the goods claimed by the Trade Mark. The term similar goods is defined in subsection 14(1) of the Act which states :

   (1)   For the purposes of this Act, goods are similar to other goods:

   (a)   If they are the same as the other goods; or

   (b)   If they are of the same description as that of the other goods.

3. When determining whether the goods are ‘goods of the same description’ it is not simply a matter of finding a description common to the goods in question, for a product may be

4 (1963) 109 CLR 407 at 414

susceptible to several descriptions of differing generality.5 I take guidance from Southern Cross Refrigerating Co v Toowoomba Foundry Pty Ltd 6where in assessing if the goods are the same or of the same description consideration needs to be given to :

a.The nature and characteristics of the goods;

b.The purpose and origin of the goods;

c.Whether the goods are produced by the same manufacturer or distributed through the same trade channels;

d.Whether the goods are sold in the same shops during the same seasons to the same class of customer; and

e.Whether the goods are considered as belonging to the same trader by those engaged in their manufacture and distribution.

1. Broadly speaking the above may be summarized as needing to consider the nature of the goods, the uses of the goods and the trade channels through which the goods are bought and sold.7 In the case before me I am faced with comparing plastic water tanks with the goods of the Trade Mark. The opponent has asserted that the goods of both parties are used for the same purpose of handling water and ordinarily found in the same shops for both trade customers and retail customers

2. However, I cannot agree with the opponent. While there are some very broad similarities between the purposes of the goods in that they both are used for handling water and that they store water, the essential nature and characteristics of the goods are quite different in practice. These are very diverging uses for water and while pipes and various other fittings may be used with plastic water tanks it appears from the evidence that the differences between the goods are just too great. An end consumer is highly unlikely to request a plastic water tank from a store and then purchase a septic tank or storm water pit instead and vice versa. Even if the goods are manufactured by the same manufacturer the end use is just too different regardless of the view that both sets of goods are used to handle water. I am not satisfied that the goods of the respective trade marks are similar. The opponent has, therefore, not established the section 44 ground of opposition.

Section 58 - Ownership

1. Section 58 of the Act provides:

5 Re Daiquiri Rum Trade Mark (1969) RPC 600

6 (1954) 91 CLR 592

7 Jellinek’s Application (1946) 63 RPC 59

Applicant not the owner of the trade mark

The registration of a trade mark may be opposed on the ground that the applicant is not the owner of the trade mark.

1. Ownership of a trade mark may arise in two different ways – at statute by the filing of an application to register that trade mark8 on particular goods or services9, or at common-law by the use of that trade mark (or one substantially identical to it) on goods and services which are the same kind of thing. The owner of the trade mark is the person who first uses it in good faith, or first files the trade mark application, whichever is the earlier. For the purposes of demonstrating ownership the first use need only be a small amount10 as long as it is not seen as inconsequential use.

2. The section 58 ground of opposition fails for the same reasons that the opponent was unable to establish the section 44 ground opposition, namely, that the goods in question are not the ‘same kind of thing’.

Section 59 – No intention to use.

1. Section 59 of the Act provides:

The registration of a trade mark may be opposed on the ground that the applicant does not intend:

(a)   to use, or authorise the use of, the trade mark in Australia; or

(b)   to assign the trade mark to a body corporate for use by the body corporate in Australia;

in relation to the goods and/or services specified in the application.

1. The opponent has argued that:

“…the applicant of the opposed trade mark did not have a bona fide intention to use the opposed trade mark on at least one or more of the Class19 goods and that the application for registration is “merely” defensive or speculative.

Particularly, the opponent asserts that the applicant had no intention to use the trade mark in respect of at least one or more of metallic pipes, channels and channel drains, stormwater catchment pits, field gully traps, floor wastes, water feed tubes and water troughs. The applicant has, after the priority date, only used the trade mark in respect

8 Identical or substantially identical trade marks: Settef SpA v Riv-Oland Marble Co (Vic) Pty Ltd 10 IPR 402; 413

9 ‘the same kind of thing’ Re Hicks’ Trade Mark (1897) 22 VLR 636, 3 ALR 75; 639-40

10  Thunderbird Products Corporation v Thunderbird Marine Products Pty Ltd (1974) 131 CLR 592, 600 (Jacobs J).

of plastic channel for water drainage and accessories therefor and uses other trade marks such as StormMasta and Uni-Pit with which to sell such metallic products.”

1. The opponent points to paragraph 12 of the Owen declaration which evidences use of the opposed mark only on metallic grates, such goods not forming part of the specification of the Trade Mark. I am not persuaded by the opponent’s argument. The opponent’s investigations may indeed have shown that the applicant has not yet commenced use of the Trade Mark in Australia in relation to the all the goods specified in its application. However, the opponent has fallen short of making a persuasive case for the applicant’s lack of an intention to use the Trade Mark on the goods at the time of filing.

1. I am satisfied that there may be any number of reasons why the applicant would not have used its trade mark on all the goods claimed in its specification None of these situations are conclusive. I am not prepared to accept that such inconclusive research substantiates the opponent’s claim that the applicant has no intention of using its Trade Mark on all its claimed goods in Australia. I do not accept that this evidence has been sufficient to shift the onus onto the applicant.

1. The fact that, at this time, the applicant has not taken steps to sell all the goods and services listed in its application is not unprecedented. It is not uncommon for business plans involving a trade mark to be put on hold, once an opposition matter is afoot. In Paintmaster Products v Lewis Berger & Sons11, the Registrar observed that an applicant might properly elect to delay use pending the outcome of the application for registration. The adoption of this approach is usually to ensure that trade mark rights are assured before time and money is expended in the promotion of that mark.

1. In Intel Corporation v Magnatex International Pty Ltd12, Hearing Officer Homann said:

“It is not appropriate in opposition proceedings for the registrar to instigate an investigation in detail of the use or intention to use in respect of each and every item which might be covered in the applicant’s specification and the lodgement of the application and the applicant’s statement of use or intention to use must on the principles explained in Aston v Harlee be accepted as prima facie evidence of the relevant use or intention to use. The onus must be on the opponent to lead evidence showing a lack of intention or incapacity to use the mark for the relevant goods.”

11 (1925) 25 AOJP 1915

12 (1998) 41 IPR 406

1. The applicant’s evidence has established that it has been using, and does intend to use its Trade Mark on a number of different goods. Without more conclusive evidence from the opponent, there is no reason to question if the applicant had an intention to use its Trade Mark on the goods claimed in its specification. Therefore, the ground of opposition under section 59 has not been established.

Section 60 - Reputation in Australia

1. Section 60 of the Act provides:

60 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.

1. The opponent has argued by virtue of the decision of the Delegate in Combined Group of Companies Pty Ltd v Reln Pty Ltd13 that the evidence accepted by the Delegate shows that the opponent had used their trade mark before the priority date of the Trade Mark. The opponent asserts that this evidence included advertisements in Gardening Australia Magazine and that these advertisements were continuous over a period May to October 2009.

1. The opponent claims that it was also established in the prior decision that its trade mark was promoted significantly to Australia’s major retailers including John Danks and Sons, Kmart and Mitre 10 amongst others. The opponent claims that this is sufficient to satisfy the requirement under section 60. I note that this evidence is not before me in these proceedings. However, a consideration of the decision of the Delegate, which related to removal for non- use, reveals that the opponent overstates the level of evidence which persuaded the Hearing Officer in that case. In a non-use action, the opponent need only establish use of a trade mark, not (as here) reputation in a trade mark.

13 [2014] ATMO 20

1. The Hearing Officer confirmed that there was a tax invoice showing a sale of two plastic water tanks in the non-use period (20 January 2009 to 20 January 2012) and that advertisements in Gardening Australia provided “corroborative support” to the evidence of the tax invoice. The applicant has pointed out that this constitutes evidence of use, sufficient to satisfy the requirements of genuine use in a non-use action, but hardly evidence showing that the opponent’s trade mark had acquired a reputation in Australia sufficient to satisfy the requirements of section 60.

1. It is now for me to determine if the opponent’s trade mark has acquired a reputation in Australia for its plastic water tanks which is sufficient to establish that use of the Trade Mark would be likely to deceive or cause confusion. This is more than the opponent merely indicating prior use, the opponent’s trade mark needs to be “associated in the minds of the Australian public”14 to such a degree that deception or confusion is likely.

2. In relation to reputation Justice Kenny states in McCormick & Co Inc. v McCormick15at 128:

   In ConAgra Inc v McCain Foods (Aust) Pty Ltd (1992) 33 FCR 302 at 343; 23 IPR 193 at 234, Lockhart J said:

   [R]eputation within the jurisdiction may be proved by a variety of means including advertisements on television or radio, or in magazines and newspapers within the forum.

   At 129 Justice Kenny continues:

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: …

1. In this regard the opponent’s evidence is sadly lacking. The opponent produced in its evidence a number of exhibits which demonstrate that its flat packed water tanks are sold through various retailers and has claimed that this was promoted in Gardening Australia. However, the evidence is not sufficient to demonstrate a reputation such that use of the Trade Mark on the goods would cause deception or confusion.

2. Additionally, there is no evidence before me of actual confusion in the marketplace in relation to the origin of the opponent’s and applicant’s goods provided under the respective trade marks. I am not satisfied that the applicant’s use of its trade mark will result in any

14 Seven Up Co v OT Ltd (1947) 75 CLR 203 at 211

15 51 IPR 102

significant degree of deception on the strength of the opponent’s abovementioned trade mark use. The opponent has not established the section 60 ground of opposition.

Decision

1. 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.

1. The opponent has not established any of the grounds of opposition it has pursued against trade mark application no. 1401705. The trade mark application may therefore proceed to registration one month from the date of this decision. If the Registrar has been served with notice of appeal before that time, I direct that registration of the trade mark shall not occur until the appeal has been discontinued or registration or refusal is ordered by the courts.

Costs

1. 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 11 July 2017