Complete Technology Integrations Pty Ltd v Smart Home Solutions Pty Ltd

Link copied
Case Copied 38 min read

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 registration of trade mark application 955049(37) - SMART HOME SOLUTIONS - filed in the name of Smart Home Solutions Pty Ltd.

Delegate:

Ian Thompson

Representation:

Opponent

David Kell, Counsel, instructed by Marilyn Gauci of James Tuite & Associates

Applicant

James Maxwell of Peter Maxwell & Associates

Decision:

2008 ATMO 39

Section 52 opposition:

Section 41 – in light of the evidence the words SMART HOME SOLUTIONS lack any inherent adaption to distinguish; the trade mark considered as a whole lacks any inherent adaption to distinguish. Subsection 41(6) – no evidence of factual distinctiveness at the relevant date. Opposition established.

Registration refused.

Costs

Awarded against applicant.

Background

  1. Smart Home Solutions Pty Ltd (‘the applicant’), of O'Riordan Street, Alexandria, NSW, filed application to register a trade mark, details of which currently are:

    Appn No:  955049

    Priority date:  21 May 2003 (‘the relevant date’)

    Goods/Services:             Class 37:             Installation, repair, maintenance and construction services in relation to electrical and electronic apparatus and equipment including control equipment and apparatus for controlling domestic lighting installations, lighting, lighting systems, lighting apparatus, lighting equipment, data equipment and systems, video and DVD equipment and systems, audio and audio-visual equipment and systems, climate control equipment and systems, security equipment and systems, home automation systems (‘the opposed services’)

    Trade Mark:   (‘the opposed trade mark’)

  2. The application was accepted for registration under the provisions of subparagraph 44(3)(a) and subsection 41(5) of the Trade Marks Act 1995 (‘the Act’) and advertised in the Australian Official Journal of Trade Marks on 19 May 2005.

  3. On 19 August 2005, Complete Technology Integrations Pty Ltd, (‘the opponent’) of Cathedral Street, Woolloomooloo, NSW, filed Notice of Opposition, (‘the Notice’) to the registration of the trade mark. The Notice cites six grounds of opposition, of which two were relied upon at the hearing of the matter – those being under sections 41 and 59 of the Act. For the sake of completeness, I note now that the opponent has not established those other grounds of opposition.

  4. The parties duly served their evidence in support, evidence in answer, evidence in reply, and further evidence and the matter came before me as a delegate of the Registrar of Trade Marks on 7 April 2008 in Sydney.  David Kell, Counsel, instructed by Marilyn Gauci of James Tuite & Associates (‘the solicitors’) represented the opponent.  James Maxwell of Peter Maxwell & Associates (‘the attorneys’) represented the applicant.  At the hearing I reserved my decision and now give my decision and written reasons.

    The Evidence

  5. The evidence from both parties is quite comprehensive and comprises the following declarations:

Item Declarant Date Made Exhibits
Evidence in Support

1

Scott Warren
Director, Opponent

17 February 2006

SW-1 to SW-29

2

Tove Anna Maria Henningson
Solicitor, opponent

17 February 2006

TH-1 to TH-58
3 David Neville Symons 1 March 2006
4 David James Anderson 14 March 2006
5 Scott Jones 28 March…
CaseChat AU logo

Keep reading for free

Create a free CaseChat account to read Complete Technology Integrations Pty Ltd v Smart Home Soluti... and more:

  • Read every judgment in full
  • Ask AI and get answers linked to paragraphs
  • See how each paragraph was cited in later cases
  • Download judgments as PDF or Word
Continue with Google

One click creates your free account or signs you in.

By continuing you agree to the Terms and Privacy Policy.

Details
Case
[2008] ATMO 39
Decision Date

CaseChat Overview and Summary

Complete Technology Integrations Pty Ltd (the applicant) sought to register the trade mark "Smart Home Solutions". Smart Home Solutions Pty Ltd (the opponent) opposed this application. The hearing officer, Ian Thompson, was tasked with determining whether the trade mark should be registered.

The primary legal issue before the hearing officer was whether the applicant's proposed trade mark was distinctive or merely descriptive of the goods and services it sought to cover. This involved assessing whether the term "Smart Home Solutions" was a common descriptor within the relevant industry, such that no single entity should have exclusive rights to its use. The hearing officer also considered evidence from trade competitors and industry participants regarding the common usage of the term.

The hearing officer reasoned that the term "smart home" and its variations, including "smart home solutions," were widely used and understood within the home automation industry. Evidence from electrical contractors and trade competitors indicated that these terms were routinely employed as descriptive phrases and sales pitches, rather than as indicators of a specific trade source. The hearing officer found that the opponent's evidence, particularly from individuals with a business connection to the applicant, was less persuasive due to the similarity between the opponent's magazine title and the opposed trade mark. Applying the principle that descriptive terms should not be monopolised by a single entity, the hearing officer concluded that the trade mark was not distinctive.

Consequently, the hearing officer refused to register the trade mark application and awarded costs against the applicant.

Orders

Orders of the court

Full text does not contain this section.

Background

Background to the litigation

Full text does not contain this section.

Evidence

Evidence Before The Court

Excepting the Warren, Henningson, Billington, and Gauci declarations, the declarations are what might broadly be called ‘trade declarations’ which I will discuss under that heading, below.The Evidence in support The Warren declaration is, as indicated above, by a director of the opponent. Mr Warren states that he a director of the opponent and has been working in the field of home automation for about nine years and exhibits to his declaration a copy of his curriculum vitae. Mr Warren avers that the opponent provides a variety of services through a business unit called ‘CTI SmartHome’ including structured cabling systems, security, camera systems, telephone systems, home theatre and multi-room audio and has done so since at least 2001. Mr Warren exhibits NSW, Victoria and Queensland business name registrations for ‘CTI SmartHome’ to his declaration. Mr Warren attests as to what his understanding of a ‘smart home’ is:The precise features of any particular "smart home" will vary depending upon the desires of the client and cost considerations. By way of example, a "smart home" may feature matters such as:Integrated entryUpon arriving home you press your remote key chain button to open the Garage door. The smart home then starts to make decisions; firstly it turns the security alarm off and activates the "welcome home mode".Welcome homeThe "Welcome Home" activates when you arrive home, room lighting adjusts automatically, blinds and louvers may open depending on the time of day or night and air conditioning turns on automatically.Because the smart home is aware of the dark conditions it will automatically turn on lighting throughout your home for easy and safe entry. You can rest assured and feel secure that there is no more fumbling with light switches in a dark room as you carry the shopping into the house.GoodnightAs you enter your bedroom you simply press the "Goodnight" button and while your bedroom and ensuite lights remain on as you prepare for bed, the house has automatically begun to shut down ready for your peaceful sleep or for you to read in bed.You no longer have to check the lights around the house to make sure everything has been turned of. The smart home has taken care of things for you.SecurityWhen you hear a "Bump in the night" you immediately press the Panic Button located on either side of your bed and your smart home automatically turns on external lights and selected lighting in your home, scaring off would be intruders or allowing for investigation without fumbling for switches.When you discover it was the cat next door, you simply return to your bedroom and activate the "goodnight" mode and retire back to bed.Leaving homeWhen you leave your home, you simply press your remote as you exit and your smart home begins to shut down.Lighting turns off throughout the house, air conditioning systems shutdown saving your energy costs, louvres and blinds (if fitted) close.Your home waits patiently until your arrival later that evening. EntertainingAs you prepare for that special dinner party you simply activate the "Entertaining" mode and your smart home takes care of the turning on lights throughout the house to just the right level.The Front and Back garden lighting turns on to show off your intelligent home. HolidaysAs you prepare and depart for your holidays you begin to relax knowing that your smart home will take of itself.Under Floor Heating, Heated Towel Rails, Air Conditioning and other items turn off until your return.As you are away on your holidays, your home turns on and off your lighting giving that lived in appearance. Sure to fool that would be intruder thinking someone is home.

Decision

Reasons for decision

Section 55 of the Act provides:55Decision(1)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 6.60. I refuse to register application 955049.CostsI award costs at the official scale set out in the regulations against the applicant.Ian ThompsonHearing OfficerTrade Marks Hearings27 May 2008

Ratio Decidendi

Legal Principle Established

I will further discuss the leading declarations of the parties as is necessary under the heading ‘Section 41,’ below.Trade Declarations The trade declarations in support of the opposition are by Messrs David Neville Symons, David James Anderson, Scott Jones, and Antonio Messina. These declarations are from electrical contractors and at least two of them state they are trade competitors of the opponent. There are no great similarities between the declarations which are obviously freely made in the words of the deponents. Mr Symons’ declaration is typical. He avers:I have worked as an electrical contractor for 35 years, and have been involved in providing home automation services (sometimes called services relating to "smart homes") for approximately 12 years. I am 54 years old.I am the proprietor of the business Automated Lifestyles, with operates out of business premises at 256A Annangrove Road, Annangrove, in New South Wales.Automated Lifestyles operates as a direct market competitor of Complete Technology Integrations Pty Limited (`CTI') in the provision of the services I have referred to above.The term 'smart home' is an expression that I am very familiar with. It generally refers to homes that are technologically advanced in some form.A 'smart home' is usually a new building that is specially wired to enable the occupant to remotely control or programme commands within the building, and in response the building itself exhibits an internal intelligence. It uses its 'smarts' to carry out the occupant's commands.As technology advances, homes are constantly becoming 'smarter'. Ten years ago a house with an intercom may have been considered a 'smart home'; today such a home would typically include much more advanced automated features.I regularly use the expression "smart home" during the course of my business - both when dealing with other tradesman and also in dealings with home-owners. I would estimate that I have been using the expression "smart home" (and the equivalent term "smart house") since at least the late 1990s.In my experience the phrase a "smart home solution" is commonly used as a 'sales pitch' by persons in the home automation field. It is not uncommon for the terms `smart home' and 'solutions' to be used jointly when describing the benefits of an automation system, technological or design advancement within the building. I have used the expression myself from time to time and have done on occasions from about the late 1990s.I have also often encountered the terms 'smart home', 'smart house' and occasionally `smart home solutions' being used by other persons and customers in the home automation field since about the late 1990s and certainly more so since 2001.Until recently, I did not know that Integrated Systems Installations Pty Ltd ("ISI") [the predecessor of the applicant] had applied to register "Smart Home Solutions" as a trade mark. I regard the phrase "smart home solutions" and "smart homes" as descriptive terms that persons in the home automation field routinely use from time to time. I do not believe that any one company should have a monopoly right to the words. I do not want to be prevented from using the words in my business in future because of a trade mark registration by ISI.25. By contrast the trade declarations of Messrs Douglas Isaac, Jeffrey John Patchell, Harry Simidis, James Raymond Preece, Bruce Ensor, David Weston, and David Wayne Small served and filed as evidence in answer are by and large in common form and from traders who one might reasonably view as having some business connection with the applicant. Mr Patchell’s declaration is fairly typical. He avers:I am the Managing Director and Publisher for Connection Magazines Pty Ltd and have held this position for 23 years.Connection Magazines Pty Ltd publish various technical and business publications including Connected Home Solutions which is devoted to the home automation/home technology industry. By reason of my position I am familiar with suppliers and distributors of home automation and audio visual technologies throughout Australia and am familiar with the trade mark, brand names and names used by such operators.I identify [the opposed trade mark] with Smart Home Solutions Pty Ltd. When I see the Trade Mark, I associate it solely with the goods and services provided by Smart Home Solutions Pty Ltd. Smart Home Solutions Pty Ltd and the Trade Mark are well known throughout the home automation and home technology industry.I have known the use of the Trade Mark by Smart Home Solutions Pty Ltd for the past 5 years. I am not aware of any other party using a name or trade mark similar to the Trade Mark.26. I notice that the name of the magazine published by Connection Magazines Pty Ltd, Connected Home Solutions, and the opposed trade mark bear a marked similarity. One might reasonably conclude that the declaration did not attract Mr Patchell’s full attention.