Control Technology Inc v Complete Technology Integrations Pty Ltd

TRADE MARKS ACT 1995

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

Re:Oppositions by Control Technology Inc. to registration of trade mark applications 1148518 & 1148521(35, 42) - CTI AND CTI AUSTRALIA - filed in the name of Complete Technology Integrations Pty Ltd.

Delegate:

Nicole Worth

Representation:

Opponent: Andrew Fox of Counsel, instructed by Aparna Watal of Griffith Hack, Patent & Trade Mark Attorneys.

Applicant: Ben Fitzpatrick of Counsel, instructed by Daniel Lo of Actuate IP, Patent & Trade Mark Attorneys.

Decision:

2012 ATMO 23

Section 52 Opposition – Section 58 pressed – ground not established – applications to proceed to registration – costs awarded against opponent.

Background

On 23 November 2006 (‘the priority date’) Complete Technology Integrations Pty Ltd (‘the Applicant’) filed applications for the registration of two trade marks, current details of which are:

Trade Mark No. 1148518

CTI

Trade Mark No. 1148521

CTI AUSTRALIA

Class: 35 Retailing and wholesaling services including retailing and wholesaling of electrical, communication, security and automation systems; provision of information, advisory and consulting services in relation to the aforementioned services

Class: 42 Design of consumer products; design of lighting and security systems; scientific research and development; energy management, consulting and reporting services; information technology services including the provision of design, support and management of IT systems and networks; information technology consulting services; IT security services; provision of information, advisory and consulting services in relation to the aforementioned services; none of the aforementioned services being in relation to telephones or communications devices

The applications were examined and after the initial grounds for rejection which had been raised under sections 41 and 44 of the Trade Marks Act 1995 (‘the Act’) were withdrawn, they were accepted for possible registration. The acceptances were advertised in the Australian Official Journal of Trade Marks on 25 September 2008.
On 24 December 2008 Control Technology Inc. (‘the Opponent’) filed Notices of Opposition objecting to the registration of the trade marks, nominating most of the grounds of opposition available under the Act.
The parties duly served and filed evidence and subsequently requested to be heard. The matter came before me, as a delegate of the Registrar of Trade Marks, in Canberra on 23 November 2011. The Opponent was represented by Andrew Fox of Counsel, instructed by Aparna Watal of Griffith Hack, Patent & Trade Mark Attorneys, who attended by video conference. The Applicant was represented by Ben Fitzpatrick of Counsel, instructed by Daniel Lo of Actuate IP, Patent & Trade Mark Attorneys, who attended by telephone.

The evidence

The following is a description of the evidence provided by the parties during the evidentiary stages of the opposition.

Evidence in support

The evidence in support comprises a statutory declaration made on 26 October 2009 by Albert Terry, a Partner at Griffith Hack Patent and Trade Mark Attorneys, with exhibit AT-1. Exhibit AT-1 is a statutory declaration of Robert Peck, Senior Vice President of the Opponent, with exhibits RP-1 to RP-18 dated 19 October 2009, which was filed in support of the opposition to the Opponent’s trade mark application numbered 1218520.
Mr. Peck’s declaration provides a history of the Opponent’s business and trade mark. The Opponent’s principal place of business is Knoxville, USA. Its website describes its business as “CTI designs and manufactures advanced control, communications and I/O products for process control” beneath the banner “Products for industrial process automation”, and in particular “[CTI] manufactures the CTI 2500 Series^tm Programmable Controller System – a compatible replacement for the Simatic® 505”.
The exact nature of either the CTI 2500 Series or the Simatic 505 products (or indeed any of the ‘products for industrial process automation’) is not clear. There are no examples of them in use or being applied to processes which could assist in determining what they are used for (other than the relatively vague notion of ‘process control’). The website goes on to state “Products in the family include controllers, power supplies, bases, remote base controllers, analog and digital I/O, Ethernet TCP/IP, Modbus, DeviceNet networking modules and specialty I/O modules. CTI 2500 Series^TM products are installed in the plants of major industrial companies throughout the world”. As such, there is an indication that the process control product(s) in question are comprised of several electronic components and are used in industrial plants (although not necessarily exclusively). This perhaps implies that the Opponent’s goods are used to control factory machinery, but I am unable to satisfactorily determine this to be the case.
The Opponent first began using a logo in 1980 in the USA, similar to that shown below[1], which it declares is comprised of the first letter of each word of the name Control Technology Inc.

[1] I note that the Opponent has used the logo with minor variations including dark lettering on a pale background, pale lettering on a dark background or a simple outline. For the purpose of this decision I do not consider such variations to substantially affect the identity of the trade mark.

The majority of the Opponent’s trade mark use appears to be of the logo. There are occasional instances of the Opponent’s use of the plain letters CTI, such as upon brochures and newsletters (exhibit RP-3, although there is no indication that they were ever distributed in Australia), upon product catalogues (such as “CTI 505 Solutions 2005 Product Catalogue”) and as part of the product references/numbers including CTI 2573-MOD and CTI_2500_40F (listed in invoices).
In 1992 the Opponent began to sell its goods to Niplex Pty Ltd (‘Niplex’), a company located in Queensland, for distribution in Australia. Niplex sells products for industrial communications. Sales to Niplex are evidenced by invoices dating from 1992 to 2005, although I note that only those from 20 December 1995 onwards display the Opponent’s trade mark (in logo form). Niplex ceased to be a distributor for the Opponent in 2005. There is no direct evidence of sales and distribution in Australia from Niplex.
From 2003 the Opponent also distributed its goods via Napa International France (‘Napa’). Napa is the master international distributor of the Opponent and contracts with an entity named CT Oceania, of Brisbane, QLD, through which the Opponent’s goods are distributed in Australia.
It is also declared that CT Oceania provides services and support on behalf of the Opponent. I note that whilst the Opponent’s trade mark is displayed on CT Oceania’s website, which also provides descriptions of the Opponent’s ‘CTI 2500 Series’ product, there is no mention of services in connection with or on behalf of the Opponent. Rather, under the heading “Services” it is stated “CT Oceania offers standard and custom service packages” (emphasis added).
Invoices from Napa show sales of products to CT Oceania for the years 2003 to 2008. The only indication that those sales relate to the goods of the Opponent is that a limited range of invoices, issued in 2008, display the letters CTI as part of the product reference, such as ‘CTI_2500_40F’. Some evidence of sales from CT Oceania to Australian customers is provided in the evidence in reply.
Exhibit RP-16 is marked ‘highly confidential’ and relates to the Opponent’s customer profile. In order to preserve the confidentiality of the exhibit I will not go into detail, other than to note that the major users of the Opponent’s ‘2500 Series^tm’ product include several high profile companies across a wide range of business sectors, some of those companies being located in Australia.
The Opponent estimates its world wide market share of the ‘Programmable Logic Controller Process Control Market’ to be approximately 1%.

Evidence in answer

The evidence in answer comprises two statutory declarations made by Scott Warren, Director of the Applicant, on 20 August 2010, with exhibits SW-1 to SW-12. One declaration makes reference to the trade mark CTI and the other makes reference to the trade mark CTI AUSTRALIA. Aside from those references to the trade marks, the contents of the declarations are essentially identical, as are the exhibits.
The Applicant is an Australian company, originally based in NSW and now with offices also in Melbourne, Brisbane, Perth and Canberra. It was incorporated on 7 August 2001 and began to conduct business shortly after.
The Applicant’s website material, both current and archived, indicates that the Applicant creates automation systems for businesses, hotels and homes, such as automated lighting systems, automated security systems and automated systems to manage energy consumption. Examples of its systems are provided, such as ‘Smart Home’ which enables the lighting, media systems, heating etc in a home to be integrated into an automated program for switching on and off, a ‘Room Management System’ for hotels which allows the hotel to manage energy, monitor and report upon guestroom occupancy, and centrally control electronic locking (amongst other functions), and ‘Building Automation’ which allows the integration of controls for lighting, irrigation, security, ventilation, and water features etc. The Applicant does not appear to manufacture goods itself, but rather utilises and sells electronic componentry manufactured by third parties, such as Clipsal and INNCOM International Inc., as part of the systems it designs.
First use of the trade marks CTI and CTI AUSTRALIA is declared to have occurred around August 2001 and the website displaying the trade marks to have been operating since 9 August 2001. Internet Archive[2] material shows a web page from 5 December 2001 displaying the trade mark in the form of CTI in large font beneath which is the word AUSTRALIA in smaller font. The letters CTI are an initialism of the Applicant’s full name.
[2] The Internet Archive is a non-profit organisation based in San Francisco, USA, which aims to build an Internet library by capturing and storing digital materials, including web pages appearing on the internet.
It appears from the Internet Archive material that the trade mark was first used in the form depicted on the left, below, and then at some point between January and July 2008 it was used in the form on the right, below:

The Applicant estimates it has a 30% market share in the Australian building automation industry, as at the time of the declaration. It illustrates its sales by exhibiting invoices for the years 2001 to 2010, all of which display either the plain letters CTI or either of the trade marks depicted above. The earliest invoice is dated 28 September 2001.
The Applicant declares it was not aware of the Opponent’s trade mark until the commencement of the current opposition proceedings.
There is further information, beyond that presented here, in Mr. Warren’s declarations. However as it is more relevant to establishing reputation in the market place, it is not pertinent to the ground pursued (see the section titled ‘Grounds and Onus’) and I will not expand upon it here.

Evidence in reply

The evidence in reply comprises a further two declarations made by Robert Peck, Senior Vice President of the Opponent. They differ only in that one is stated to be in relation to application 1148518 and the other in relation to 1148521.
Generally Mr. Peck further substantiates the Opponent’s use of its trade mark in Australia by way of exhibiting invoices between the Opponent and Niplex, between Napa and CT Oceania, and invoices issued by CT Oceania to customers in Australia. With the exception of the invoices issued by the Opponent itself, I note that the only use of the trade mark is as part of the product number, for example ‘1 x CTI-2589 Universal AC/DC Digital input...’, ‘CTI-2572-A’ or ‘CTI_2500_40F’. It is possible that the goods shipped by the Opponent which correspond with these numbers bore the Opponent’s trade mark, as indicated by undated photographs of unnamed goods in RP-3 of the Opponent’s evidence in support. However the evidence is insufficient for me to make a positive determination that that is the case.
An email exchange between a Mark Campbell, with an email address at Siemens in Australia, and Robert Peck is exhibited as evidence of the Opponent’s support services. In that exchange Mr. Campbell reports problems experienced by three Australian companies who use the ‘Simatic 505’, and requests replacement firmware at no charge. The email was apparently was forwarded to Robert Peck for response. Mr. Peck responds that the Australian distributor will contact Mr. Campbell, and if stock is available will provide it at no charge. In addition Mr. Peck provides some preliminary diagnostic information and assures Mr. Campbell that he will continue to work on a solution. Mr. Campbell’s original email is dated 22 October 2001 and Mr. Peck’s response is dated 23 October 2001.

Grounds and onus

The only ground pursued by the Opponent is that under section 58 of the Act. As a formality, and for completeness of my decision, I decide that none of the other grounds in the Notice of Opposition has been established.
The onus is upon the opponent to establish its ground of opposition. With regard to the standard of proof required, the Opponent submits that the prevailing view is that an opponent must show that an opposed mark should clearly not be registered. Whilst the matter has been considered in the Federal Court with different conclusions, at present there is no binding Full Court authority to suggest that a higher standard of proof than the balance of probabilities applies. The Registrar’s current practice is to follow the approach of Gyles J in Pfizer Products Inc v Karam[3]. I will proceed on this basis, mindful of the fact that if the Opponent cannot establish its case on the balance of probabilities then it by default it will not satisfy the higher standard.
[3] Pfizer Products Inc v Karam (2006) 70 IPR 599; [2006] FCA 1663. 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] and NV Sumatra Tobacco Trading Company v British American Tobacco Services Limited [2011] FCA 1051 (9 September 2011) per Greenwood J at [16] to [32].
The time at which the ground of opposition must be established is the priority date of the applications[4], being 23 November 2006.
[4] Southern Cross Refrigerating Co v Toowoomba Foundry Pty Ltd (1953) 91 CLR 592; Winton Shire Council v Lomas (2002) 56 IPR 243; Lomas v Winton Shire Council [2003] AIPC 91-839.

Section 58

Section 58 of the Act provides

Applicant not owner of trade mark

58. The registration of a trade mark may be opposed on the ground that the applicant is not the owner of the trade mark.
Note: For applicant see section 6.

To establish its ground under section 58, the Opponent must establish that it used an identical or substantially identical trade mark[5] to that of the Applicant in relation to goods which are the ‘same kind of thing’[6] before the application date of the opposed application or the first use of the opposed trade mark, whichever is the earlier[7]. I note also that where a trade mark is as yet unused in respect of goods or services, then the first person to adopt it as a trade mark or demonstrate a fixed intention to use it[8] is its owner.
[5] Carnival Cruise Lines Inc. v Sitmar Cruises Ltd (1994) 20 ALR 495.
[6] Re Hicks’ Trade Mark (1897) 22 VLR 636; 3 ALR 75.
[7] Settef SpA v Riv-Oland Marble Co (Vic) Pty Ltd 10 IPR 402.
[8] Buying Systems (Aust) Pty Ltd v Studio SrL (1995) 30 IPR 517 (FC).

Substantially identical

The determination of substantial identity involves a side by side comparison, as set out by Windeyer J in Shell Company of Australia Ltd v Esso Standard Oil (Australia) Ltd[9]:
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 feature of the registered mark and the total impression of resemblance or dissimilarity that emerges from the comparison.
[9] Shell Co of Australia Ltd v Esso Standard Oil (Australia) Ltd (1963) 109 CLR 407.
In applying the above test, the Opponent contends that its logo is substantially identical to both of the applied for trade marks. For ease of reference I reproduce the Opponent’s and the Applicant’s trade marks below:
CTI CTI AUSTRALIA
I am not convinced that the logo is substantially identical to the Applicant’s trade marks. I note the words of Jenkins LJ in Morny Ltd’s Trade Mark[10]:
[T]he registration of a word in block capitals must cover use of that word in any clearly legible form of lettering and not be confined to its representation in block capitals. Otherwise the registration of a mark consisting of a name in block capitals would give virtually no protection at all, for anyone could use the same word in some other form of type or lettering in imitation handwriting or some other form of that kind; and it would obviously be impossible for anyone seeking to register a particular word, such as "Morny", to cover in his application or applications every conceivable form of lettering in which it might be represented.
[10] Morny Ltd's Trade Mark (1951) 68 RPC 55.
In this instance however I do not consider that the Opponent’s logo is a “clearly legible form” of the letters CTI. In the context of appearing near the words Control Technology Inc., the logo is likely to be interpreted as the letters ‘C’, ‘T’ and ‘i’. Outside of that context it is not immediately apparent that those are the letters of which the logo is comprised. Although perhaps less likely, the logo could be interpreted as lower case letters ‘a’, ‘r’ and ‘i’.
The Opponent contends that its use of the plain text letters CTI as part of the product numbers/references in the various invoices and product manuals is use of the plain letters as a trade mark. I am not entirely convinced that this is the case. However in order to best assess the applicant’s claim to first use of the trade mark upon the same kind of thing as the applicant, I will proceed on the tentative basis that the letters CTI incorporated into the product numbers/references is use as a trade mark, and that the trade mark is substantially identical to the Applicant’s[11]. This places the Opponent’s case for ownership at its highest, and I will revisit the issue if necessary following the discussion of whether the Opponent’s trade mark has been used upon the same kind of thing as the Applicant’s services.
[11] I do not consider the addition of the word ‘Australia’ in the Applicant’s mark would detract from a finding of substantial identity, see PB Foods Ltd v Malanda Dairy Foods Ltd (1999) AIPC 91-531, [1999] FCA 1602.

‘Same kind of thing’

The prevailing view before the Registrar and the courts is that goods or services which are ‘the same kind of thing’ do not equate to goods or services which are ‘of the same description’. It is a narrower test that applies in the context of a claim to ownership; a claim to ownership of a trade mark will not be supported if used upon different goods, even though those goods may be of the same description[12]. For example, in concurring with the primary judge that backpacks and handbags were not goods of the same kind, Allsop J observed in Colorado Group Limited v Strandbags Group Pty Limited[13]:
The aim of the enquiry is not to find some broad genus in which some common functional or aesthetic purpose can be identified. Nor is it an enquiry about the type of trade in which concurrent use might cause confusion. Rather, it is identifying, in a practical, common sense way, the true equivalent kind of thing or article. For example, use of a mark on hatchets or small axes, created proprietorship in relation to axes: Jackson v Napper [1886] 35 Ch D 160. This approach recognises ownership or proprietorship in a mark beyond the very goods on which the mark is used, to goods "though not identical... yet substantially the same" (Hemming HB, Sebastian’s Law of Trade Marks (4th Ed) p 91) or "goods essentially the same... though they pass under a different name owing to slight variations in shape and size" (Kerly DM and Underhay FG, Kerly on Trade Marks (3rd Ed) p 206). This approach is conformable with the terms of the 1995 Act.
That backpacks are a type or style of bag does not answer the question as to whether they should be viewed as essentially the same goods as any bag or receptacle. The backpack is a bag with straps to be worn on the back. It is not essentially the same or the same kind of thing as other bags, handbags, purses or wallets. The task is not to identify the genus into which the goods upon which the mark was used fall, but to identify the goods.
[12] Krone AG v Brook (t/as Cannon Watch Co) (1996) 34 IPR 340; [1996] ATMO 16.
[13] Colorado Group Limited v Strandbags Group Pty Limited [2007] FCAFC 184 at [89]-[90].

As described in the section of this decision entitled ‘The Evidence’, the Opponent manufactures goods for use in ‘process control’ and sells those goods to distributors who then on-sell the products in different regions. The Opponent declares also that those distributors provide services on its behalf.
In determining whether the Opponent’s use has been upon the same kind of thing as the Applicant, I consider that the relevant enquiries are:
Are the goods in connection with which the Opponent’s trade mark is used so closely related to the Applicant’s services that they can be considered to be ‘the same kind of thing’?
Alternatively, if sales by the Opponent’s distributors can be considered to be services conducted on behalf of the Opponent, are those services of the same kind as those listed in both classes 35 and 42 of the application?
What, if any, evidence is there to demonstrate use of the trade mark in Australia in connection with services other than the sales conducted by the distributors on behalf of the Opponent?
With regard to the first enquiry I note that some services may be considered to be closely related to goods[14]. The authors of Shanahan’s Australian Law of Trade Marks and Passing Off[15] state that the relationship may, and perhaps in most cases will, be defined by the function of the service with respect to the goods. It is necessary to consider here not only whether the Opponent’s goods are closely related to the Applicant’s services, but also whether the association is one that is so close that the higher standard of ‘the same kind of thing’ is satisfied.
[14] See for example comments by French J in Registrar of Trade Marks v Woolworths Ltd 45 IPR 411, [1999] FCA 1020 at [38]; or Lockhart J in Caterpillar Loader Hire (Holdings) Pty Ltd v Caterpillar Tractor Co (1983) 1 IPR 265; [1983] FCA 145, at 522.
[15] Shanahan’s Australian Law of Trade Marks and Passing Off online, © 2012, Thomson Reuters (Professional) Australia Limited, at [31.1505].
I have already noted my difficulty in determining the exact nature of the Opponent’s goods. With reference to the discussion in Colorado I consider the ‘genus’ of goods upon which the Opponent has used the mark is perhaps electronic or computerized ‘process control systems’ and their parts or components, and they are used (although not necessarily exclusively) in industrial plants[16]. I find that I am unable to go further in explaining either what those process control systems are applied to, or whether their purpose is in any practical way similar to the sale of the Applicant’s electrical, communication, security and automation systems.
[16] The Opponent’s written submissions state that they are typically used in the control of industrial and manufacturing processes, which to my mind would indicate they are typically used in a different context to the Applicant’s services. However I cannot be definitive because a ‘typical’ use of a product does not limit the product to only that use.
Here then lies the difficulty in determining the relationship between the Opponent’s goods and the Applicant’s services. I acknowledge that notionally the use of the respective trade marks upon the respective goods and services of the parties can be considered to be likely to lead to deception or confusion amongst the purchasing public. However I am unable to determine the nature of the Opponent’s goods beyond a general categorization or ‘genus’. Therefore I am not satisfied that use upon a relatively undefined set of goods substantiates the Opponent’s claim to be the owner of the trade mark in respect of the services claimed by the Applicant.
With regard to the second enquiry, it is well established that ownership of a trade mark in respect of goods remains with an overseas manufacturer where such goods are sold in Australia by agents or distributors[17]. However whether the sales of the Opponent’s goods by Niplex and CT Oceania represent the provision of services by the Opponent is a different enquiry. The Registrar’s delegate in Flexsteel Industries Inc v Flexsteel Australia Pty Limited[18] considered whether retailing and wholesaling of furniture provided by an Australian applicant was the ‘same kind of thing’ as the furniture goods of an overseas opponent:
[17] Estex Clothing Manufacturers Pty Ltd v Ellis and Goldstein Ltd (1967) 1a IPR 491 at 503, and confirmed more recently in E & J Gallo Winery v Lion Nathan Australia Pty Ltd [2010] HCA 15, 86 IPR 224.
[18] Flexsteel Industries Inc v Flexsteel Australia Pty Limited [2010] ATMO 28.
The question is whether the first use in Australia in 1992 of the opposed trade mark in relation to the nominated services was use by the applicant or the opponent – and hence who is the owner of the trade mark.
If the specification of goods or services of the opposed application nominated the goods ‘furniture’, the decision facing me would be straightforward – the applicant states that [it] imported furniture from the opponent: the opponent states that this furniture bore swing tags and labels bearing its FLEXSTEEL trade mark. The situation would be similar to that in Thunderbird Products Corporation v Thunderbird Marine Products Pty Ltd [1974] HCA 51; (1974) 131 CLR 592 or Re Riv-Oland Marble Company (Vic) Pty Ltd v Settef SPA [1988] FCA 344 and the opponent would be the owner of the trade mark.
But, Mr Ziehlke, for the applicant, submits that this application is in respect of, inter alia, the services or retailing and wholesaling furniture and the services are not the same kind of thing as the goods in question.
I note, however, the parties agree that in 1991 [the applicant]:
·     Visited the opponent’s stand at the High Point Furniture Market in the USA;
·     Spoke with the opponent’s representatives on the stand;
·     Consequently ordered a container load of furniture bearing the FLEXSTEEL trade mark;
·     Attended the opponent’s offices at Riverside, California for a sales presentation by an employee of the opponent;
·     Subsequently “emulated” that presentation in a similar sales presentation to Australian retailers.
On one level, it is apparent that the opponent is the owner of the trade mark in relation to the retail and wholesale services in Australia since it is the opponent’s services under the trade mark which [the applicant] emulated in relation to goods brought into Australia bearing the trade mark . On another level, it would (as [the opponent] observed at the hearing) be unusual if Australian traders might, under similar circumstances, become registered owners in relation to wholesale and retail services performed in relation to the goods of interest under the questionable trade marks but not in relation to the goods themselves. It seems, on the face of it, that retail and wholesale services performed in relation to such imported goods should be taken to be retail or wholesale services performed on behalf of the person who is the true owner of the trade mark in relation to the goods or else to be the ‘same kind of thing’ as the goods. However, there is no reason for me to closely consider those propositions since because the American opponent’s services have been emulated in Australia by [the applicant] in relation to the opponent’s goods sold under the trade mark, the opponent is obviously the owner in relation to those services
Whilst there are similarities with the above case I do not consider that the same rationale can be extended to the circumstances at hand. Firstly, as discussed in the previous enquiry, I am unable to say what the exact nature of the Opponent’s goods is. Even assuming that the Australian distributors provide retail and wholesale services on behalf of the Opponent, it is not clear that they are provided in respect of essentially the same goods that the Applicant sells. In respect of services in class 35, I consider in this instance that they would need to be in order to be considered services that are ‘the same kind of thing’. Secondly, there is no evidence to suggest that the Australian distributors emulated any other services which may be offered by the Opponent. There is no mention of such services on either Niplex’s or CT Oceania’s web sites and none of the invoices issued by CT Oceania relate to provision of services.
The final enquiry is whether the Opponent’s evidence demonstrates use of the trade mark in Australia in connection with services other than the sales conducted by the distributors allegedly on behalf of the Opponent. The only evidence that I consider goes to this leg of investigation is the email exchange between Mr. Campbell and Mr. Peck. That email exchange is dated after the first use by the Applicant and at best indicates only ‘support of IT systems and networks’. I do not consider it to be sufficient to upset the Applicant’s prima facie claim to ownership in respect of the specified services.
In summary, whilst acknowledging that I have some doubt as to whether the use of the letters CTI as part of product references/numbers is use as a trade mark, I am not satisfied on the balance of probabilities that the parties are providing goods/services that are of the same kind. Therefore I find that the Opponent has not satisfied the conditions of section 58 of the Act, and the opposition fails.

Decision

Section 55 of the Act provides:
(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.
The Opponent has not established its opposition to the registration of trade mark applications 1148518 and 1148521. Accordingly, the applications may proceed to registration one month from the date of this decision. If the Registrar has been served with a notice of appeal before that time, I direct that the registration of those trade marks shall not occur until the appeal has been decided or discontinued and that the disposition of the applications be in accordance with the Court’s order or direction.

Costs

The Applicant is entitled to its costs which I award against the Opponent as per Schedule 8 of the Trade Mark Regulations 1995, with costs for the second opposition to be assessed as set out in the table attached to the Hearing Officer’s decision in James Hardie & Co Pty Ltd v Hume Industries (Malaysia) Berhad [2001] ATMO 78; (2001) 53 IPR 591.

Nicole Worth

Hearing Officer

Trade Marks Hearings

15 February 2012

[2012] ATMO 23

15 February 2012

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