Contract Resources Pty Ltd v CQMS Pty Ltd

[2023] ATMO 2

TRADE MARKS ACT 1995

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

Re:Oppositions by Contract Resources Pty Ltd to registration of trade mark application numbers 2074455 (classes 6, 7, 9, 19, 37, 42) – CR (figurative), 2074456 (classes 6, 7, 9, 19, 37, 42) – CR MINING (figurative) and 2074458 (classes 9, 42) – CR DIGITAL (figurative) – held in the name of CQMS Pty Ltd

Delegate:	Nicholas Butson
Representation:	Opponent: Piper Alderman Applicant: James & Wells
Decision:	2023 ATMO 2 Trade Marks Act 1995 (Cth) – opposition under s 52 - ss 44 and 60 grounds considered – no grounds established – trade marks to proceed to registration

Background

1. This decision is in respect of oppositions under s 52 of the Trade Marks Act 1995 (Cth) (‘Act’)[1] by Contract Resources Pty Ltd (‘Opponent’) to the registration of each of the following trade marks (‘Applicant’s Trade Marks’), in the name of CQMS Pty Ltd (‘Applicant’):

   [1] Unless otherwise stated, each reference to a regulation below is a reference to a regulation in the Trade Marks Regulations 1995 (Cth) and each reference to a section is a reference to a section of the Trade Marks Act 1995 (Cth).

   Trade mark number:   2074455

   Trade mark:                

   Filing Date:                9 March 2020

   Specification:            Classes 6, 7, 9, 19, 37, 42 (see Annexure A for full details)

   Trade mark number:   2074456

   Trade mark:                

   Filing Date:                9 March 2020

   Specification:            Classes 6, 7, 9, 19, 37, 42 (see Annexure A for full details)

   Trade mark number:   2074458

   Trade mark:                

   Filing Date:                9 March 2020

   Specification:            Classes 9, 42 (see Annexure A for full details)

2. The applications for 2074455 and 2074456 were accepted for possible registration on 17 June 2020 and the application for 2074458 on 18 June 2020. Acceptance of all the Applicant’s Trade Marks was advertised on 10 August 2020.

3. A Notice of Intention to Oppose each of the Applicant’s Trade Marks was filed by the Opponent on 27 August 2020, followed by a Statement of Grounds and Particulars (‘SGP’) on 21 September 2020. A Notice of Intention to Defend was filed by the Applicant on 16 December 2020 in respect of each of the Applicant’s Trade Marks.

4. The Opponent filed Evidence in Support on 17 March 2021. Evidence in Answer was filed by the Applicant on 17 September 2021. The Opponent filed Evidence in Reply on 22 November 2021.

5. Following the evidence stages, the parties requested to be heard. Both parties filed an outline of submissions prior to the hearing. As a delegate of the Registrar of Trade Marks, I heard the matter by video conference on 19 October 2022. The Opponent was represented by Warwick Rothnie of Counsel, instructed by Tim Clark and Jamin Li of Piper Alderman. Adriana Hartcher of the Opponent observed the hearing. The Applicant was represented by Benjamin Gardiner of Counsel, instructed by Gus Hazel, Alexia Mayer, and George Jackson from James & Wells.

6. I have decided this matter in my role as delegate of the Registrar of Trade Marks.

   Grounds of Opposition, Onus and Relevant Date

7. The grounds of opposition nominated in the SGP were ss 44 and 60. The Opponent bears the onus of establishing one or more of the grounds of opposition.[2] The required standard of proof is on the balance of probabilities.[3] For both grounds, the Opponent is relying upon the following registered trade marks for which they are the registered owner (‘Opponent’s Trade Marks’):

   [2] Food Channel Network Pty Ltd v Television Food Network GP [2010] FCAFC 58, [32] (Keane CJ, Stone and Jagot JJ).

   [3] Telstra Corporation Limited v Phone Directories Company Pty Ltd [2015] FCAFC 156, [133] (Besanko, Jagot and Edelman JJ).

   Trade mark number:   870580

   Trade mark:                

   Priority Date:             27 March 2001

   Specification:            Class 37 (see Annexure B for full details)

   Trade mark number:   1413041

   Trade mark:                

   Priority Date:             8 March 2011

   Specification:            Classes 37, 40 (see Annexure B for full details)

   Trade mark number:   2007006

   Trade mark:                

   Priority Date:             2 May 2019

   Specification:            Classes 37, 39, 40, 41, 42 (see Annexure B for full details)

   Trade mark number:   2007007

   Trade mark:                

   Priority Date:             2 May 2019

   Specification:            Class 41 (see Annexure B for full details)

8. The date at which the rights of the parties are to be determined is 9 March 2020 (‘Relevant Date’) being both the filing and priority date of the Applicant’s Trade Marks.

   Preliminary Matter

9. The majority of the submissions, evidence and grounds relate to a consideration of the following CR Devices (‘CR Devices’), present in each parties’ trade marks respectively:

   The Opponent’s CR Device:

   (‘Opponent’s CR Device’)

   The Applicant’s CR Device:

   (‘Applicant’s CR Device’)

   Evidence

10. The following evidence was filed in respect of each opposition.

    Evidence in Support

11. The Evidence in Support is comprised of:

    ·Declaration by Michael Charles (General Manager of Contract Resources Group of which the Opponent is stated as a company within the group structure), made on 16 March 2021 with Annexures MRC-1 to MRC-43, as well as Annexures CONFIDENTIAL MRC-1 to CONFIDENTIAL MRC-3 (‘First Charles Declaration’).

12. The First Charles Declaration details the history of the Opponent, founded in 1989 as a provider of specialist industrial and mechanical services. It provides some detail on a variety of industrial and mechanical services the Opponent provides. The declaration states that the Opponent’s Trade Marks have been used in some form since 1989. The declaration includes a variety of exhibits demonstrating evidence of use of the Opponent’s Trade Marks in relation to mining and industrial services. Information and exhibits are also included demonstrating substantial sales, promotion and marketing relating to use of the Opponent’s Trade Marks.

13. Mr Charles states he was unaware of any use of the Applicant’s Trade Marks by the Applicant, prior to May 2020. To this point an article is provided from 18 May 2020, stated as being from the Applicant’s website, announcing a change from the name ‘CQMS Razer’ to ‘CR’.

    Evidence in Answer

14. The Evidence in Answer comprises of:

    ·Declaration by Douglas Wallis (Director of the Applicant), made on 16 September 2021 with Exhibits DLW-1, and DLW-04 to DLW-21, as well as Confidential Exhibits DLW-02 and DLW-03 (‘Wallis Declaration’).

15. The Wallis Declaration provides information about the Applicant, stating that the Applicant’s corporate group is a leader in engineering innovation and manufacturing of mining equipment. It provides details on the mining goods that the Applicant’s group manufacture and sell, as well as related supporting goods/services.

16. Mr Wallis declares that the Applicant’s group originally used the trade mark CQMS before switching to trade marks featuring CR from around 2008. The Wallis Declaration further provides information on the clients and worksites which the Applicant’s group supplies to, as well as some recent financial turnover figures.

17. The Applicant’s CR Device present in the Applicant’s Trade Marks is declared by Mr Wallis as being based on this original use of the letters CR as a trade mark. Evidence is provided showing examples of use of the letters CR in various forms, attached to a variety of industrial goods and in marketing or advertising materials.

18. Mr Wallis states that to the best of his knowledge, the Applicant was not aware of the Opponent or its use of the Opponent’s Trade Marks before this matter arose.  Mr Wallis further states that in his view, the parties operate in different fields and to his knowledge, there has been no actual confusion stemming from the use of each parties’ trade marks.

    Evidence in Reply

19. The Evidence in Reply is comprised of:

    ·Declaration by Michael Charles made 19 November 2021 with Annexure MRC-44 and Annexure CONFIDENTIAL MRC-4 (‘Second Charles Declaration’).

20. The Second Charles Declaration asserts that there is an overlap between the Applicant and Opponent’s businesses, including specifically in the mining industry. Mr Charles provides a list of clients of both parties which are declared as being the same company or belonging to the same group of companies. The Second Charles Declaration also provides further detail on the Opponent’s operations in the oil, gas, ammonia, and mining industries, as well as information on a variety of its mining sites or regions it has operated in.

    Additional evidence

    The Opponent’s additional evidence is comprised of:

    ·Declaration by Michael Charles made 2 October 2022 with Annexures MRC-45 to MRC-49 (‘Third Charles Declaration’).

21. The Third Charles Declaration was not filed in accordance with the timeframes set out in the regulations. The provisions in reg 21.19 allow me to consider such information filed outside of these timeframes when there is a compelling reason to do so. The Third Charles Declaration primarily relates to the Opponent’s corporate restructuring and information relating to its standing in this matter. This restructuring appears to have occurred after the evidence timeframes and therefore could not have been provided within them. Regardless, nothing turns on the consideration of this evidence, especially as there is no standing requirement for oppositions under s 52, including those made in relation to ss 44 or 60 grounds. I am not satisfied that the Opponent has made a compelling case for the information to be considered. As such, I will not have regard to the Third Charles Declaration in deciding the oppositions.

    Discussion and Reasons

    Section 44

22. The Opponent submits that under s 44, the Applicant’s Trade Marks are substantially identical with, or deceptively similar to, one or more of the Opponent’s Trade Marks and that the specified goods or services of the Applicant’s Trade Marks are identical, similar, or closely related to the services for which the Opponent’s Trade Marks are registered.

23. Sections 44(1) and 44(2) relevantly provide:

    (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.

    (2)  Subject to subsections (3) and (4), an application for the registration of a trade mark (applicant’s trade mark) in respect of services (applicant’s services) must be rejected if:

    (a)  it is substantially identical with, or deceptively similar to:

    (i)  a trade mark registered by another person in respect of similar services or closely related goods; or

    (ii)  a trade mark whose registration in respect of similar services or closely related goods 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 services is not earlier than the priority date for the registration of the other trade mark in respect of the similar services or closely related goods.

24. To establish the s 44 ground of opposition the other trade mark must:

    ·be held in the name of another person and have an earlier priority date than the Applicant’s Trade Marks; and

    ·be substantially identical with, or deceptively similar to, the Applicant’s Trade Marks; and

    ·be in relation to services that are similar or closely related to the specified goods or services of the Applicant’s Trade Marks.

    The exceptions in s 44(3) and (4) only need to be considered if all the above elements are satisfied.

25. Each of the Opponent’s Trade Marks has an earlier priority date than the Relevant Date and are held in a name other than that of the Applicant. My next consideration is whether any of the Opponent’s Trade Marks are substantially identical with, or deceptively similar to, the Applicant’s Trade Marks.

    Substantially identical

26. The Opponent has asserted that the Opponent’s Trade Marks are substantially identical to the Applicant’s Trade Marks. The test for whether trade marks are substantially identical is set out in Shell Co (Aust) Ltd v Esso Standard Oil (Aust) Ltd:

    In considering whether marks are substantially identical they should, I think, be compared side by side, their similarities and differences noted and the importance of these assessed having regard to the essential features of the registered mark and the total impression of resemblance or dissimilarity that emerges from the comparison.[4]

    [4] (1963) 109 CLR 407, 415 (Windeyer J).

27. The Opponent’s CR Device includes a semicircular element reminiscent of the letter C, combined or merged horizontally into what some consumers may see as the front cut-off half of a capital letter R. In my opinion, the Opponent’s CR Device is highly stylised and forms a unique shape. The Applicant’s CR Device features a device which appears to be the letter C linking or flowing from its bottom corner down onto a separate vertical line into the letter R. When comparing the trade marks side by side, I find these visual differences are likely to create an overall impression of dissimilarity, rather than a total impression of resemblance. For the sake of completeness, I note that some of each parties’ trade marks also feature additional elements which are likely to further differentiate them. I therefore find that none of the Opponent’s Trade Marks are substantially identical to any of the Applicant’s Trade Marks.

    Deceptively similar

28. Section 10 relevantly sets out:

    [A] trade mark is taken to be deceptively similar to another trade mark if it so nearly resembles that other trade mark that it is likely to deceive or cause confusion.

29. What is meant by ‘likely to deceive or cause confusion’ has been discussed in various decisions. To ‘deceive’ requires the creation of false belief that the goods/services are provided by the same trader. Whereas to ‘cause confusion’ only needs to go so far as to cause a consumer to wonder whether they may come from the same trader.[5] Under these tests, if something is deceptive, it is also almost certainly confusing. But something that is confusing may not also be deceptive. Since confusion presents the lower bar, this aspect of the test is my focus below.

    [5] Pioneer Hi-Bred Corn Co v Hy-line Chicks Pty Ltd [1978] RPC 410, 423 (Richardson J).

30. The test for deceptive similarity requires there to be a real or tangible danger of confusion occurring.[6] Unlike substantial identity, this is not a side by side comparison. It involves a consideration as to the impression or recollection that a person of ordinary intelligence and memory would have of the trade marks,[7] in their entirety,[8] informed by the look, sound and ideas they convey.[9]

    [6] Southern Cross Refrigerating v Toowoomba Foundry Pty Ltd (1954) 91 CLR 592, 595 (Kitto J); Registrar of Trade Marks v Woolworths Ltd [1999] FCAFC 1020, [50] (French J).

    [7] Australian Woollen Mills v FS Walton & Co Ltd (1937) 58 CLR 641, 658 (Dixon and McTiernan J).

    [8] Clark v Sharp (1898) 15 RPC 141, 146 (Byrne J).

    [9] Re Pianotist Co Ltd’s Application (1906) 23 RPC 774, 777 (Parker J).

31. The primary question this specific consideration turns on is whether the consumer would be caused to wonder whether the goods or services come from a related trade source due to the CR Devices present in each parties’ trade marks.

32. The distinctiveness of a shared element is often a critical factor in the consideration of the likelihood of confusion. Generally a highly distinctive shared element will increase the likelihood of consumer confusion, the opposite being true when the shared element is common or descriptive.[10] As the Applicant submits, it is well established that trade marks which feature single or small amounts of letters often have little inherent capacity to distinguish.[11] Further to this point, as discussed by the Full Court in Australian Meat Group Pty Ltd v JBS Australia Pty Ltd, trade marks featuring small amounts of letters like acronyms are common in the Australian marketplace and consumers are used to distinguishing between such trade marks or their trade sources based on small variations and differences.[12]

    [10] Havana Club Holding SA v Pac-Rim Management Services Ltd (1998) 43 IPR 177 (Hearing Officer Zars); Re Broadhead’s Application (1950) 67 RPC 209, 215 (Evershed MR).

    [11] Registrar of Trade Marks v W & G du Cros Ltd (1913) 30 RPC 660, 672 (Lord Parker).

    [12] [2018] FCAFC 207, [83] (Allsop CJ, Besanko and Yates JJ).

33. When considering the trade marks as a whole, I find that the impression created by each parties’ trade marks is distinct from one another due to their variations and differences. In my opinion, the Opponent’s CR Device in particular, features a highly stylised and distinctive device, which many consumers may not view as a CR at all. The Applicant’s CR Device on the other hand, features a flowing shaped device sharing the curve of the C and R, conjoined in opposing corners and placed on different vertical lines.

34. Regardless as to whether consumers would read the Opponent’s CR Device as the letters CR, in my view, the distinctiveness and impression in the Opponent’s CR Device resides heavily in the stylisation, rather than the simply the letters. Even when considering the doctrine of imperfect recollection,[13] I would think these rather significant visual differences between each parties’ CR Devices, would be sufficiently recalled in the mind of the relevant consumer rather than just the letters CR. For the sake of completeness, I note that some of each parties’ trade marks also feature additional elements which are likely to further differentiate them.

    [13] Re Rysta Ltd’s Application (1943) 60 RPC 87, 108 (Luxmoore LJ).

35. Furthermore, the industrial and mining services which the Opponent has submitted as being the same, similar or closely related to the goods and services in the Applicant’s Trade Marks specifications are specialised. The relevant consumer of such goods or services would make careful considerations relating to the trade source they were purchasing from and therefore be less likely confused by any similarities between the marks.[14]

    [14] Re GE Trade Mark [1973] RPC 297, 321 (Lord Diplock).

36. In all the circumstances, I am satisfied that there is no real tangible danger of confusion between each of the Opponent’s Trade Marks and each of the Applicant’s Trade Marks.

    Section 60

37. Section 60 sets out:

    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.

38. In the SGP and submissions the Opponent’s Trade Marks were nominated as the basis for this ground of opposition. To establish this ground of opposition, the Opponent must demonstrate:

    • The existence of a reputation in one or more of the Opponent’s Trade Marks, in Australia at the Relevant Date; and
    • That the use of the Applicant’s Trade Marks would be likely to deceive or cause confusion because of the reputation in one or more of the Opponent’s Trade Marks.

39. The reputation for this ground requires the Opponent to demonstrate that one or more of the Opponent’s Trade Marks are recognised by a significant or substantial number of the relevant purchasing public of such goods/services.[15] This can be demonstrated by a variety of means, including advertisements, news and media.[16]

    [15] McCormick &Company Inc v McCormick [2000] FCA 1335, [81] (Kenny J).

    [16] ConAgra Inc v McCain Foods (Aust) Pty Ltd [1992] FCA 176, [34] (Lockhart J).

1. The Opponent has provided a variety of submissions and evidence to demonstrate one or more of the Opponent’s Trade Marks have gained a reputation in Australia amongst the relevant buying public of industrial and mechanical related services. This evidence includes:

   • The Opponent’s continuous use of trade mark numbers 870580 and 1413041 or a substantially identical device since as early as 1989, in connection with industrial and mechanical services.
   • The significant sales and promotion of services featuring trade mark numbers 870580, 1413041 and 2007006 in the Australian marketplace, including specifically in relation to the mining industry.
   • The extensive use of trade mark numbers 870580, 1413041 and 2007006 in a variety of print and digital media, as well as on staff and company gear, vehicles and equipment used in the provision of the Opponent’s industrial and mechanical services.
   • The large list of national and multinational clients to whom the Opponent provides services to, while using trade mark numbers 870580, 1413041 and 2007006.
   • Awards and recognition the services of the Opponent have received, provided in conjunction with trade mark numbers 870580, 1413041 and 2007006.

2. The Opponent’s evidence and submissions do not always clearly differentiate between each of the Opponent’s Trade Marks, which is problematic as the reputation in each trade mark is treated separately for the purposes of s 60.[17] Regardless, I am satisfied that the evidence sufficiently demonstrates a reputation in trade mark number 2007006 which has the most significant use, as well as trade mark numbers 870580 and 1413041 to a lesser extent (‘Opponent’s CR Trade Marks’), in relation to industrial and mechanical related services in Australia.

   [17] Qantas Airways Limited v Edwards [2016] FCA 729, [160] (Yates J).

3. While trade mark number 2007007 does appear occasionally in the evidence, I am not satisfied the amount of use demonstrates that it has acquired a sufficient level of reputation in Australia.

4. I briefly note that the Opponent in its submissions also appears to make some comments as to the existence of reputation in a common law, plain word trade mark of ‘CR’, which was not nominated for this ground in the SGP. Regardless and for the sake of completeness, I note that I am not satisfied the evidence which primarily demonstrates use of the trade marks featuring the heavily stylised Opponent’s CR Device, supports or establishes a significant reputation in such a plain word trade mark.

5. I therefore turn to consider whether the reputation in each of the Opponent’s CR Trade Marks means that the use of the Applicant’s Trade Marks is likely to deceive or cause confusion. Relevant considerations for this assessment under s 60 include the strength of the reputation in each of the Opponent’s CR Trade Marks, the level of similarity between the trade marks,[18] and the nexus between the services for which the Opponent’s CR Trade Marks have a reputation and the specified goods/services of the Applicant’s Trade Marks.

   [18] Radio Systems Corp v Sustainable Agriculture & Food Enterprises Pty Ltd [2014] ATMO 12, [26] (Hearing Officer Irgang).

6. The Opponent’s CR Trade Marks have gained a reputation in relation to a variety of industrial and mechanical services which includes the installation, operation, and maintenance of related goods. These are similar to a number of claims in the Applicant’s Trade Marks specifications, particularly those in class 37. As services which provide for the installation, operation, maintenance or repair of goods generally share, or are likely to be seen to share a similar trade source to those goods themselves.[19] I would think a number of the mining or industrial goods claims in the Applicant’s Trade Marks specifications in classes 6, 7 and 19 also share a close nexus to the industrial and mechanical services which the Opponent’s CR Trade Marks have gained a reputation in. In my opinion there is therefore a close nexus between at least some of the goods and services.

   [19] Registrar of Trade Marks v Woolworths Ltd [1999] FCA 1020, [38] (French J).

7. In respect of the similarity of the trade marks, I note that s 60 does not require the trade marks to be deceptively similar, however 'there must always remain a level of similarity between the marks’.[20] I have already discussed the similarities and differences between the trade marks above and in my opinion under this test, the parties’ trade marks are still rather dissimilar due to their visual differences.

   [20] Rogers Seller & Myhill Pty Ltd v Reece Pty Ltd [2010] ATMO 5, [39] (Hearing Officer Lyons).

8. Weighing all these considerations together, while the nexus of the goods and services is close, I do not think the reputation in any of the marks is so significant as to establish a likelihood of confusion considering the apparent differences. As such, I am not satisfied that there is a likelihood of deception or confusion occurring between each of the Opponent’s CR Trade Marks and each of the Applicant’s Trade Marks.

9. The s 60 ground has not been established.

   Decision and Costs

10. Section 55(1) relevantly provides:

    (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.

11. The Opponent has not established a ground of opposition. Accordingly, the Applicant’s Trade Marks may proceed to registration one month from the date of this decision.

12. Should the Registrar be served with a notice of appeal before then, registration shall not occur until the appeal has been decided or discontinued. Any disposition of the application should of course be in accordance with the court’s orders or direction.

13. Both parties have sought costs. Costs usually follow the event and I see no reason to depart from that principle. Accordingly, in respect of trade mark application number 2074455, I award costs against the Opponent under s 221, in accordance with the amounts detailed in sch 8 of the Trade Marks Regulations 1995 (Cth).

14. In respect of trade mark application numbers 2074456 and 2074458, I award reduced costs against the Opponent in the same manner as indicated in Hume Industries (Malaysia) Berhad v James Hardie & Coy Pty Ltd.[21]

    [21] [2001] ATMO 78 (Hearing Officer Williams).

    Nicholas Butson
    Hearing Officer
    Delegate of the Registrar of Trade Marks
    10 January 2023

    Annexure A – Details of Applicant’s Trade Marks

    Trade mark number:   2074455

    Specification:             Class 6: Metallic liners for protecting mining chutes; Metallic liners for protecting conveyer chutes; metallic liners for protecting trays used in mining equipment and mining vehicles; metallic plates for protection against surface wear for use in mining applications.

    Class 7: Conveyors for use in the mining industry; scrapers for use in the mining industry; crushing machines for use in the mining industry; draglines and dragline rigging for use in the mining industry; stonedusters for use in the mining industry; components for conveyors, draglines, dragline rigging, scrapers, crushing machines, and stonedusters used in the mining industry; buckets for draglines; blades for graders; teeth, jaws and wear components for use in machines used in the earth moving, mining, mineral processing and crushing industries; ground engaging tools for use with machinery used in the mining industry; cast metallic lips for use with mining machinery and equipment; locking components for use with mining machinery and equipment; components for front end loaders; electric rope shovels; hydraulic mining shovels.

    Class 9: Computer software for improving mining productivity, including software for payload monitors, machinery stress and strain monitors, wear sensors, and coal depth identifiers; computer hardware for improving mining productivity, including payload monitors, machinery stress and strain monitors, and coal depth identifiers; sensors for condition monitoring of mining equipment and protective plates used in the mining industry; data analysis software for use in the mining industry; monitoring software for use in the mining industry.

    Class 19: Non-metallic liners for protecting mining chutes; Non-metallic liners for protecting conveyer chutes; non-metallic liners for protecting trays used in mining equipment and mining vehicles; non-metallic plates for protection against surface wear for use in mining applications.

    Class 37: Maintenance and repair services in relation to mining equipment and machinery; installation services in relation to mining equipment and machinery.

    Class 42: Software as a service for improving mining productivity, including software for payload monitors, machinery stress and strain monitors, wear sensors, and coal depth identifiers; data analysis software as a service for use in the mining industry; monitoring software as a service for use in the mining industry; engineering consultancy to the mining industry; machine equipment and condition monitoring for the mining industry.

    Trade mark number:   2074456

    Specification:             Class 6: Metallic liners for protecting mining chutes; Metallic liners for protecting conveyer chutes; metallic liners for protecting trays used in mining equipment and mining vehicles; metallic plates for protection against surface wear for use in mining applications.

    Class 7: Conveyors for use in the mining industry; scrapers for use in the mining industry; crushing machines for use in the mining industry; draglines and dragline rigging for use in the mining industry; stonedusters for use in the mining industry; components for conveyors, draglines, dragline rigging, scrapers, crushing machines, and stonedusters used in the mining industry; buckets for draglines; blades for graders; teeth, jaws and wear components for use in machines used in the earth moving, mining, mineral processing and crushing industries; ground engaging tools for use with machinery used in the mining industry; cast metallic lips for use with mining machinery and equipment; locking components for use with mining machinery and equipment; components for front end loaders; electric rope shovels; hydraulic mining shovels.

    Class 9: Computer software for improving mining productivity, including software for payload monitors, machinery stress and strain monitors, wear sensors, and coal depth identifiers; computer hardware for improving mining productivity, including payload monitors, machinery stress and strain monitors, and coal depth identifiers; sensors for condition monitoring of mining equipment and protective plates used in the mining industry; data analysis software for use in the mining industry; monitoring software for use in the mining industry.

    Class 19: Non-metallic liners for protecting mining chutes; Non-metallic liners for protecting conveyer chutes; non-metallic liners for protecting trays used in mining equipment and mining vehicles; non-metallic plates for protection against surface wear for use in mining applications.

    Class 37: Maintenance and repair services in relation to mining equipment and machinery; installation services in relation to mining equipment and machinery.

    Class 42: Software as a service for improving mining productivity, including software for payload monitors, machinery stress and strain monitors, wear sensors, and coal depth identifiers; data analysis software as a service for use in the mining industry; monitoring software as a service for use in the mining industry; engineering consultancy to the mining industry; machine equipment and condition monitoring for the mining industry.

    Trade mark number:   2074458

    Specification:             Class 9: Computer software for improving mining productivity, including software for payload monitors, machinery stress and strain monitors, wear sensors, and coal depth identifiers; computer hardware for improving mining productivity, including payload monitors, machinery stress and strain monitors, and coal depth identifiers; sensors for condition monitoring of mining equipment and protective plates used in the mining industry; data analysis software for use in the mining industry; monitoring software for use in the mining industry.

    Class 42: Software as a service for improving mining productivity, including software for payload monitors, machinery stress and strain monitors, wear sensors, and coal depth identifiers; data analysis software as a service for use in the mining industry; monitoring software as a service for use in the mining industry; engineering consultancy to the mining industry; machine equipment and condition monitoring for the mining industry.

    Annexure B – Details of Opponent’s Trade Marks

    Trade mark number:   870580

    Specification:             Class 37: Providing maintenance, installation, cleaning and repair services to oil refineries and the mining industry

    Trade mark number:   1413041

    Specification:             Class 37: Providing maintenance, installation, cleaning and repair services

    Class 40: Waste management services

    Trade mark number:   2007006

    Specification:             Class 37: Provision of installation, cleaning and repair services; maintenance, installation and repair of industrial apparatus and instruments; machinery installation, maintenance and repair; maintenance and repair of cleaning apparatus; maintenance and repair of instruments, electrical apparatus, construction apparatus, drying apparatus, heating apparatus, gas installations and equipment and washing apparatus; industrial cleaning services; mechanical and chemical cleaning services; cleaning of industrial and/or commercial premises; cleaning of machines, property and factories; waste removal (cleaning); rental of cleaning apparatus, equipment and machines; hire of tools, machine tools and machines for use in civil engineering; services for the cleaning of garbage and waste products; building and construction of landfill, waste treatment, industrial and sanitation sites; site preparation and clearance; on site building project management; on-site construction supervision; project preparation relating to demolition, civil engineering or construction engineering; building of industrial properties; civil engineering (construction and maintenance); mechanical engineering services (construction); civil engineering demolition; project preparation relating to demolition; hire of machines for use in civil engineering; information, advisory and consultancy services in relation to the aforementioned services; including the aforementioned services provided electronically including via the internet; including provision of the aforementioned services to the oil, gas, chemical and mining industries

    Class 39: Waste collection; waste removal (transport); waste storage; waste transport; collection (transport) of waste and trash; collection of industrial and/or commercial waste; collection of waste materials; clearance (removal and transportation) of waste; collection centre services for waste; collection of waste skips; disposal (transport) of waste; dumping (transportation) of waste; handling (transport) of waste products; removal of waste; storage and transport of waste and trash; transportation of waste; industrial removal services (transportation); supply and removal of bins for waste material; hire of removal apparatus, storage sites and transport vehicles; including the provision of the aforementioned services in relation to industrial, commercial, oil chemical and hazardous waste and toxic materials; information, advisory and consultancy services in relation to the aforementioned services; including the aforementioned services provided electronically including via the internet; including provision of the aforementioned services to the oil, gas, chemical and mining industries

    Class 40: Waste management services; waste processing including processing of waste materials; decontamination of waste; decontamination of hazardous materials; destruction of waste and trash; waste destruction including for industrial, chemical and/or hazardous waste; treatment (transformation) of waste; treatment of waste including treatment of industrial, chemical and/or hazardous waste; treatment of hazardous materials and substances; treatment of toxic material; treatment of materials and liquids; waste collection facilities; waste recycling services; recycling of waste and trash; treatment (reclamation and/or recycling) of waste; chemical treatment of waste products; chemical decontamination services; processing of chemicals; chemical processing of liquids; chemical recycling of waste products; recycling of chemicals; waste treatment (transformation); sorting of waste and recyclable material (transformation); reprocessing of waste and scrap materials; waste water treatment services; oil spill treatment; processing and refining of oil; shredding of waste; secure destruction of confidential waste and trash; information, advisory and consultancy services in relation to the aforementioned services; including the aforementioned services provided electronically including via the internet; including provision of the aforementioned services to the oil, gas, chemical and mining industries

    Class 41: Educational and training services; arranging and conducting of seminars, workshops, conventions, conferences, public and in-person educational forums; educational instruction; training workshops and seminars; occupational health and safety services (education and training services); education and training in relation to management, risk management, project management, crisis management, safety, environmental issues and the mitigation of health and safety risks; safety training programs including for contractors; safety induction programs including for contractors; customised training packages, development of tools and training modules; design of educational courses, examinations and qualifications; dissemination of educational material; publication of educational materials and multimedia material online; hire of educational apparatus and materials; providing facilities for educational purposes; providing online electronic publications, not downloadable; publication of magazines and newsletters; information, advisory and consultancy services in relation to the aforementioned services; including the aforementioned services provided electronically including via the internet; including provision of the aforementioned services to the oil, gas, chemical and mining industries

    Class 42: Industrial analysis, testing, design, inspection and/or research; design of industrial machinery and products; development of industrial machinery and processes; services for monitoring industrial processes; industrial engineering design services; industrial research of new products; research relating to industrial machinery; research, engineering and technical consultancy for industry; testing, analysis and evaluation services relating to the application of industry standards; industrial testing; engineering testing; environmental testing; inspection (testing) of apparatus; inspection (testing) of industrial and/or commercial installations; inspection (testing) of plant and machinery; materials evaluation and testing; quality testing including quality control testing; provision of testing facilities; commissioning (testing and inspection) services; benchmarking (technical testing); component testing; design of test apparatus; development of test equipment and testing methods; safety evaluation; safety testing of products; services for assessing the safety of chemicals; rental of scientific equipment and instruments; rental of computers, computer equipment, data processing systems and measuring apparatus; scientific and technological services; scientific research and testing including in relation to chemical products; preparation of scientific reports; provision of surveys (scientific); engineering including industrial and technical engineering; engineering project management services; industrial engineering design services; civil and mechanical engineering services (design); design of facilities and systems for the treatment, processing, management, transportation and/or recycling of waste and toxic materials; project management (design); off site building project management; environmental hazard assessment; environmental monitoring services; environmental surveys; environmental sustainability consultancy services; occupational health and safety services (ergonomics and design services); information, advisory and consultancy services in relation to the aforementioned services; including the aforementioned services provided electronically including via the internet; including provision of the aforementioned services to the oil, gas, chemical and mining industries

    Trade mark number:   2007007

    Specification:             Class 41: Educational and training services; arranging and conducting of seminars, workshops, conventions, conferences, public and in-person educational forums; educational instruction; training workshops and seminars; occupational health and safety services (education and training services); education and training in relation to management, risk management, project management, crisis management, safety, environmental issues and the mitigation of health and safety risks; safety training programs including for contractors; safety induction programs including for contractors; customised training packages, development of tools and training modules; design of educational courses, examinations and qualifications; dissemination of educational material; publication of educational materials and multimedia material online; hire of educational apparatus and materials; providing facilities for educational purposes; providing online electronic publications, not downloadable; publication of magazines and newsletters; information, advisory and consultancy services in relation to the aforementioned services; including the aforementioned services provided electronically including via the internet; including provision of the aforementioned services to the oil, gas, chemical and mining industries