Complete Technology Integrations Pty Ltd v Control Technology Inc

[2013] ATMO 16

TRADE MARKS ACT 1995

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

Re:Opposition by Complete Technology Integrations Pty Ltd to protection of international registration designating Australia 1218520(9, 42) (IR 947309) - CTI and DEVICE - filed in the name of Control Technology Inc.

Delegate:

Jock McDonagh

Representation:

Opponent: Ben Fitzpatrick of counsel instructed by Actuate IP Patent & Trade Mark Attorneys

Applicant: Andrew Fox of Counsel instructed by Griffith Hack Patent & Trade Mark Attorneys

Decision:

16 ATMO 2013

Reg. 17A.29 opposition – Ground pursued under section 60 established – IRDA refused protection.

Background

1. Application 1218520 is an international registration designating Australia (“IRDA”).  It was filed in the name of Control Technology Inc. (“the Holder”) under the Madrid Protocol on 30 November 2007. 

2. Details of the IRDA are as follows:

Trade mark:       

Trade mark application:

International Registration:

1218520

947309

Filing Date:

30 November 2007

Specification:

Class: 9 Computers and controls for computer peripherals

Class: 42 Design, development and testing for electronic devices, namely computer hardware and software

1. Following its examination, the IRDA was provisions refused under section 44 of the Trade Marks Act 1995 (“the Act”). However, following evidence of use filed by the Holder, the provisions of subsection 44(4) and/or Reg 4.15A(5) of the Trade Mark Regulations 1995 (‘the Regulations’) were applied. IP Australia advertised its intention to extend protection to Australia in the Australian Official Journal of Trade Marks on 26 November 2009.

2. On 19 February 2010 Complete Technology Integrations Pty Ltd (‘the Opponent’) filed a Notice of Opposition (‘the Notice’) to extension of protection of the IRDA to Australia pursuant to Reg 17A.29 of the Regulations.

3. Thereafter the parties served and filed evidence as allowed by the provisions of the Regulations.

4. I heard the matter in Canberra as a delegate of the Registrar of Trade Marks on 30 November 2012. Ben Fitzpatrick of counsel instructed by Actuate IP, Patent & Trade Mark Attorneys, represented the Opponent. Andrew Fox of Counsel instructed by Griffith Hack, Patent & Trade Mark Attorneys, appeared by telephone link for the Holder.

Grounds of Opposition

1. The Notice nominated nine grounds of opposition available under the Trade Marks Act 1995 (“the Act”). At the hearing, Mr Fitzpatrick advised me that the following four grounds were pressed by the Opponent:

• Contrary to law (Section 42(b))
• Prior substantially identical or deceptively similar trade mark (Section 44)
• Opponent’s earlier use of similar trade mark (Section 58A)
• Reputation (Section 60)

1. To succeed in its opposition the Opponent bears the onus of establishing at least one of these four grounds. As will become apparent, I have only found it necessary to address the section 60 ground in this decision and this is discussed below. Of course, should the decision be appealed, it is open to the Opponent to plead any ground it considers relevant in proceedings before the Court.

2. None of the evidence served and filed by the Opponent appears to go to the grounds in the Notice that were not pressed and for the sake of completeness I find that these grounds have not been established.

3. Counsel for the Holder submitted that the Holder does not press extension of protection of the IRDA in respect of services within Class 42. The Holder only presses protection within Class 9 (Computers and controls for computer peripherals).

4. While I note counsel’s submissions and accept that they follow his client’s instructions, in the absence of a formal request from the Holder, I intend to proceed on the basis that it is still for the Opponent to establish its opposition in both Classes.

Standard of Proof

1. The relevant standard of proof required of the Opponent is the ordinary civil standard based on the balance of probabilities.[1]

   [1] Following Gyles J in Pfizer Products Inc v Karam (2006) 70 IPR 599 at [6] to [26]. See also Chocolaterie Guylian N.V. v Registrar of Trade Marks (2009) 82 IPR 13 per Sundberg J at [22] to [27], Sports Warehouse Inc v Fry Consulting Pty Ltd (2010) 87 IPR 300 per Kenny J at [30] to [40], NV Sumatra Tobacco Trading Company v British American Tobacco Services Limited [2011] FCA 1051 (9 September 2011) per Greenwood J at [16] to [32], Allergan, Inc v Di Giacomo (2011) 94 IPR 541 per Stone J at [11] to [12], Nexans S.A. v. Nex 1 Technologies Co. Ltd [2012] FCA 180 (2 March 2011) per Murphy J at [9], Tricarico v Dunn Bay Holdings Pty Ltd [2012] FCA 271 (23 March 2012) per McKerracher J at [9] to [10] and Fry Consulting Pty Ltd v Sports Warehouse Inc (2012) 94 IPR 551 per Dodds-Streeton J at [13].

Evidence

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

Declarant	Position	Date Made	Exhibits
Evidence in Support
Scott Warren (“Warren 1”)	Director of Opponent	20.08.10	SW-1 to SW-12
Evidence in Answer
Robert Peck (“Peck”)	Senior Vice President of Holder	25.05.11	RP-1A to RP-12A
Pascal Papaziani (“Papaziani”)	President, Napa International France	6.07.11	PP-1 to PP-2
Evidence in Reply
Scott Warren (“Warren 2”)	As above	10.03.12

1. I note from Warren 1 that the Opponent is the owner of the following Australian trade mark registrations:

Registration	Trade Mark	Classification  goods/services	Priority Date
1148518	CTI	35, 42	23.11.06
1148521	CTI AUSTRALIA	35, 42	23.11.06
1148523	CTI ENERGY MANAGEMENT	35, 42	23.11.06
1148527	CTI BUILDING AUTOMATION	35, 42	23.11.06
1162008	CTI	37	20.02.07
1162009	CTI AUSTRALIA	37	20.02.07
1162010	CTI ENERGY MANAGEMENT	37	20.02.07
1162011	CTI BUILDING AUTOMATION	37	20.02.07

1. The first four of the Opponent’s trade marks shown above comprised the basis of the ground for rejection raised in examination, as discussed in paragraph 3 above.

Section 60 Trade mark similar to trade mark that has acquired a reputation in Australia:

1. Section 60 of the Act provides:

   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.

2. It is not necessary to show under section 60 that the respective trade marks are deceptively similar although such a finding can be relevant in determining the likelihood of deception or confusion. As I stated above, the Holder’s trade mark has been found to be deceptively similar to the first four trade marks listed in paragraph 14.

3. Reputation is to be assessed according to the test set out in McCormick & Company Inc v McCormick (2000) 51 IPR 102 by Kenny J at paragraph 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”.

   Does the evidence establish that in Australia before 9 March 1992 the McCormick & Co marks were recognised by the public generally and, because of that, the use by Mary McCormick of her marks would be likely to cause the public confusion, as for example, by the public’s mistakenly attributing a business connection between the two or attributing her product to the company?

4. Further, at 127, Kenny J said:

   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.

5. The Opponent’s evidence establishes that it is a company that provides comprehensive electrical, communications and automation system integration services to its customers. Its customers include those in commercial, residential, retail, health, defence, education and hospitality markets.

6. The Opponent’s evidence demonstrates that it has been using its trade marks since 2001 and its business has been steadily expanding. It is demonstrably Australia-wide and is said to hold approximately 30% of the Australian market, with an annual turnover of approximately $10 million for the financial year ending 30 June 2010.

7. In submissions, counsel for the Holder accepted that the Opponent has established a sufficient reputation in Australia to support the fist limb of the ground of opposition. I concur and so find.

8. Counsel for the Holder pointed out that the evidence does not disclose any actual instances of confusion in the period of time that the parties’ trade marks have co-existed in the Australian marketplace. Further, the Holder submits that the evidence does not disclose any tangible prospect of confusion amongst the differing consumers of each party’s business.

9. Counsel for the Holder pointed to the evidence in both Warren 1 and Peck that the Holder manufactures a specific product referred to as the CTI 2500 series programmable control system which is a substitutional component for a part known as the Simantic 505 produced by Siemens AG or the Texas Instruments TI505. Peck states that these products are programmable logic controllers.

10. The Opponent submitted that members of the Australian public are likely to associate “CTI” when used in relation to building automation system services with the Opponent. The Opponent submitted further that those persons, having imperfect recollections, are likely to view the Holder’s trade mark and conclude (mistakenly) that the mark that the goods or services originated from the Opponent.

11. Further, the Opponent submitted that the danger of confusion was even more palpable when taking into account the Holder’s claimed goods and services. The Opponent provides building automation design and implementation services. Such services necessarily encompass the installation of computer and controller related hardware for integration into the systems the Opponent provides to customers.

12. The opponent also submitted that it provides design, development and testing services for electronic devices, namely computer hardware and software, required in providing its building automation system design services.

13. It seems that the Holder currently only seems to produce a single product under its trade mark – a programmable control system – that has not been shown to cause actual confusion in the Australian marketplace. However, in the event that protection is extended to the use of its trade mark for the goods and services claimed, the Holder would be entitled to provide any goods and services covered by its claimed classifications, in which case there is likely to be a real and tangible danger deception or confusion.

14. I note that, following McCormick & Company Inc v McCormick, supra, that it has been long established that the section 60 ground is not subject to findings of use under section 44 of the Act.

15. I am satisfied that the Opponent has established this ground of opposition for all the goods and services claimed by the Holder. 

Decision

1. Regulation 17A.34 provides:

   17A.34   Decision on opposition

   (1)Unless the opposition proceedings are discontinued or dismissed, the Registrar must decide:

   (a)to refuse protection in respect of all of the goods or services listed in the IRDA; or

   (b)to extend protection in respect of some or all of the goods or services listed in the IRDA (with or without conditions or limitations);

   having regard to the extent (if any) to which any ground on which the IRDA was opposed has been established.

   (2)         The Registrar must tell the International Bureau of his or her decision.

2. In order for the Opponent to be successful, it is only necessary for one of the available grounds of opposition to be established by it. In this instance, I find that the Section 60 ground has been made out and I refuse to extend protection to the IRDA. That being so, I do not need to consider any of the remaining grounds of opposition, and I make no formal determination or finding in relation to those grounds.

Costs

1. The Opponent sought its costs.  As the successful party, the Opponent is entitled to its costs and I accordingly award costs against the Holder as per Schedule 8 of the Regulations.

Jock McDonagh

Hearings Officer

Trade Marks Hearings

1 March 2013