Cool Dynamics Refrigeration Pty Ltd v Joshua Jay North

[2024] ATMO 113

TRADE MARKS ACT 1995

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

Re:Opposition by Cool Dynamics Refrigeration Pty Ltd to registration of trade mark application number 2211439 (11) – CTS THERMFRESH - in the name of Joshua Jay North

Delegate:

Louise Tuohy

Representation:

Opponent: Macpherson Kelley Lawyers

Applicant: self-represented

Decision:

2024 ATMO 113

Trade Marks Act 1995 (Cth) – opposition under section 52 – sections 42(b), 44, 58A, 60 and 62A – s44 established – trade mark rejected

Background

1.     This matter concerns an opposition by Cool Dynamics Refrigeration Pty Ltd (‘Opponent’) under s 52 of the Trade Marks Act 1995 (Cth)[1] to the registration of the following trade mark application (‘Application’) in the name of Joshua Jay North (‘Applicant’):

[1] Unless otherwise stated, each reference to a section or regulation is a reference to a section of the Trade Marks Act 1995 (Cth) (‘Act’) or regulation of the Trade Marks Regulations 1995 (Cth) (‘Regulations’), respectively.  

Trade mark number:              2211439

Trade mark:  CTS THERMFRESH (‘Trade Mark’)

Filing date:  16 September 2021

Specification:  Class 11: Refrigeration systems and apparatus and parts and accessories therefor (‘Goods’)

Endorsement:   Provisions of paragraph 44(3)(a) and/or Reg 4.15A(3)(a) applied.

2.     The Application was examined as required by s 31 and advertised for possible registration on 17 March 2022.

3.     On 17 May 2022 the Opponent filed a Notice of Intention to Oppose the registration followed by its Statement of Grounds and Particulars (‘SGP’) on 16 June 2022. The Applicant filed a Notice of Intention to Defend on 25 July 2022.

4. Thereafter the parties filed evidence in accordance with the Regulations. The Opponent filed the following evidence in support:

·Statutory declaration of Phillip Edward Dodds, Director of the Opponent, made on 27 October 2022 with Exhibits PD-1 to PD-4 (‘Dodds 1’).

5.     The Applicant filed the following evidence in answer:

·Declaration of Joshua Jay North, the Applicant, with Annexures 1 to 3 (‘North’).

·Supplementary declaration of Joshua Jay North, dated 7 February 2023. The supplementary declaration confirms that the North declaration was signed on 1 February 2023.

6.     The Opponent filed the following evidence in reply:

·Statutory declaration of Phillip Edward Dodds, dated 14 March 2023, with Exhibits PD-1 to PD-6. (‘Dodds 2’).

7.     Once time for filing evidence had ended both parties were given the opportunity to either request an oral hearing or a hearing by way of written submissions. Both parties requested to be heard by way of written submissions. On 2 April 2024 the Opponent filed its written submissions by Macpherson Kelley Lawyers. The Applicant did not file any written submissions. As a delegate of the Registrar of Trade Marks I will decide this matter based on the SGP, evidence and written submissions.

Grounds of Opposition, Relevant Date and Onus

8. In the SGP the Opponent nominated grounds of opposition under ss 42(b), 44, 58, 58A, 60 and 62A. As will become apparent, the Opponent has successfully established the ground of opposition under s 44. Should the decision be appealed, it would remain open to the Opponent to plead any ground available to it under the Act in proceedings before the Court.

9.     The date at which the rights of the parties are to be determined is the filing date of 16 September 2021 (‘Relevant Date’) which is also the priority date for the purposes of ss 44 and 60.

10.     The Opponent bears the onus of establishing at least one of the grounds of opposition.[2] The standard of proof is the ordinary civil standard of the balance of probabilities.[3]

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

[3] Telstra Corporation Ltd v Phone Directories Co Pty Ltd [2015] FCAFC 156, [132] (Besanko, Jagot and Edelman JJ).

Discussion

Section 44

11.     Section 44 relatively provides:

44  Identical etc. trade marks

(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.

…

(3) If the Registrar in either case is satisfied:

(a) that there has been honest concurrent use of the 2 trade marks; or

(b) that, because of other circumstances, it is proper to do so;

the Registrar may accept the application for the registration of the applicant’s trade mark subject to any conditions or limitations that the Registrar thinks fit to impose. If the applicant’s trade mark has been used only in a particular area, the limitations may include that the use of the trade mark is to be restricted to that particular area.

(4) If the Registrar in either case is satisfied that the applicant, or the applicant and the predecessor in title of the applicant, have continuously used the applicant’s trade mark for a period:

(a) beginning before the priority date for the registration of the other trade mark in respect of:

(i) the similar goods or closely related services; or

(ii) the similar services or closely related goods; and

(b) ending on the priority date for the registration of the applicant’s trade mark;

the Registrar may not reject the application because of the existence of the other trade mark.

12.     In the SGP the Opponent particularises the s 44 ground of opposition as follows:

1. The Opposed Trade Mark is deceptively similar to Australian Registered Trade Mark number 350902 in the name of the Opponent (Opponent’s Mark), which has an earlier priority date. Details of the Opponent’s Marks are provided in the table below:

Trade Mark	Trade Mark Number	Classes	Status
THERMFRESH	350902	Class 11: Refrigeration systems and apparatus	Registered from 15 September 1980

2. The Opponent’s Mark has a priority date of 15 September 1980, which predates the lodgement date of the Opposed Trade Mark, being 16 September 2021.
3. There is a high degree of aural and visual similarity between the Opposed Trade Mark and the Opponent’s Mark. Given that the dominant component of both marks is the word “THERMFRESH”, it is highly likely that a consumer will infer that the businesses of the Applicant and Opponent are related.
4. The goods claimed in class 11 of the Opposed Trade Mark, being refrigeration systems and apparatus and parts and accessories, directly overlaps with the refrigeration systems and apparatus covered under class 11 of the Opponent’s Mark.
5. In light of the Opponent’s Mark, the registration and use by the Applicant of the Opposed Trade Mark is likely to deceive and/or cause consumer confusion in the Australian marketplace.

13.     To satisfy the s 44 ground of opposition the Opponent must establish that the Trade Mark is substantially identical with, or deceptively similar to, another trade mark with an earlier priority date, in the name of a person other than the Applicant, and in respect of similar goods or services which are closely related to the Applicant’s Goods.

14.     In the event that each of these requirements is satisfied, it may still be possible for me to accept the application (or allow it to proceed to registration) if the Registrar is satisfied, pursuant to ss 44(3) and 44(4), that there has been honest concurrent use of the Trade Mark, other circumstances which would make registration of the Trade Mark proper, or that the Applicant has continuously used the Trade Mark beginning before the priority date of the Opponent’s relied upon trade mark.

15.     From the information set out in the SGP, verified on the Register of Trade Marks, the Opponent’s trade mark 350902 (‘Opponent’s trade mark’) has a priority date earlier than the Relevant Date.  

16.     The comparison of goods is straight forward. The Trade Mark claims Refrigeration systems and apparatus and parts and accessories therefor in class 11 which are clearly similar goods to the Refrigeration systems and apparatus covered by the Opponent’s trade mark in class 11.

17.     I now turn to the question of whether the respective trade marks are substantially identical or deceptively similar.

Substantially identical

18.     The test for substantial identity requires that the trade marks are considered side by side while having regard to the essential features of the trade marks.[4] Where a total impression of resemblance emerges from the comparison, the trade marks will be considered substantially identical. For the purposes of comparison, I have reproduced the respective trade marks below:

[4] The Shell Company Australia Ltd v Esso Standard Oil (Australia) Limited (1963) 109 CLR 407, 414 (Windeyer J).

Opponent’s trade mark	Trade Mark
THERMFRESH	CTS THERMFRESH

19.     On a side by side comparison there are clear differences between the trade marks. The Opponent’s trade mark is for the word THERMFRESH solus. In comparison the Opponent’s trade mark contains the acronym CTS and the word THERMFRESH. For these reasons, I find that the Opponent’s trade mark is not substantially identical to the Trade Mark. The total impression emerging from a side by side comparison is not one of resemblance.

20.     I have found that the respective trade marks are not substantially identical. The remaining question is whether the Trade Mark is deceptively similar to the Opponent’s trade mark.

Deceptively similar

21.     The expression ‘deceptively similar’ is defined by s 10:

10  Definition of deceptively similar

For the purposes of this Act, 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.

22.     In the case of Australian Woollen Mills v F. S. Walton and Company Ltd, Dixon and McTiernan JJ provided the relevant test for comparison:

[T]he marks ought not…be compared side by side. An attempt should be made to estimate the effect or impression produced on the mind of potential customers by the mark or device for which the protection of an injunction is sought. The impression or recollection which is carried away and retained is necessarily the basis of any mistaken belief that the challenged mark or device is the same…The usual manner in which ordinary people behave must be the test of what confusion or deception may be expected. Potential buyers of goods are not to be credited with any high perception or habitual caution. On the other hand, exceptional carelessness or stupidity may be disregarded.[5]

[5] [1937] HCA 51; (1937) 58 CLR 641, [658].

1. In the recent High Court case of Self Care IP Holdings Pty Ltd v Allergan Australia Pty Ltd, the Court noted the following[6]:

   In considering the likelihood of confusion or deception, "the court is not looking to the totality of the conduct of the defendant in the same way as in a passing off suit"[7]. In addition to the degree of similarity between the marks, the assessment takes account of the effect of that similarity considered in relation to the alleged infringer's actual use of the mark[8], as well as the circumstances of the goods, the character of the likely customers, and the market covered by the monopoly attached to the registered trade mark[9]. Consideration of the context of those surrounding circumstances does not "open the door" for examination of the actual use of the registered mark, or, as will be explained, any consideration of the reputation associated with the mark[10]

   [6] Self Care IP Holdings Pty Ltd v Allergan Australia Pty Ltd [2023] HCA 8, [33] (Kiefel CJ, Gageler, Gordon, Edelman and Gleeson JJ).

   [7] New South Wales Dairy Corporation v Murray-Goulburn Co‑operative Co Ltd [1989] FCA 124; (1989) 86 ALR 549 at 589 (emphasis added), approved in Henschke (2000) 52 IPR 42 at 62 [44], Hashtag Burgers [2020] FCAFC 235; (2020) 385 ALR 514 at 532 [64], Combe International Ltd v Dr August Wolff GmbH & Co KG Arzneimittel [2021] FCAFC 8; (2021) 157 IPR 230 at 238 [27], PDP Capital Pty Ltd v Grasshopper Ventures Pty Ltd (2021) 285 FCR 598 at 622 [97] (see also 626 [111]) and Swancom (2022) 168 IPR 42 at 56 [73].

   [8] Act, s 68.

   [9] New South Wales Dairy [1989] FCA 124; (1989) 86 ALR 549 at 589.

   [10] Swancom (2022) 168 IPR 42 at 59 [89]. See also Henschke (2000) 52 IPR 42 at 62 [44].

   24.     In the present case, the Opponent submits that the trade marks are deceptively similar and that an ordinary consumer is likely to identify the word THERMFRESH as the essential feature of the Trade Mark, and recall this component rather than the letters CTS. The Opponent submits that there is a real tangible danger of deception or confusion if the Trade Mark is registered.

   25.     In North, Mr North disagrees that the Trade Mark is deceptively similar to the Opponent’s trade mark. Mr North does not consider that the word THERMFRESH is the essential distinguishing and memorable feature of both the Trade Mark and the Opponent’s trade mark. Mr North states that the dominant and memorable cue of the Trade Mark are the letters CTS, which appear at the beginning of the Trade Mark, and given this placement, is the component that consumers will recall.

   26.     On balance I agree with the Opponent that the common element in the respective trade marks is the word THERMFRESH which is distinctive in relation to refrigeration goods. I do not dispute that the Trade Mark includes the letter CTS, however what is important is the impression recalled by the average buyer of the refrigeration goods. They are far more likely to notice and remember the word THERMFRESH because it is distinctive for refrigeration goods and the letters CTS have little distinguishing value. As consumers are more likely to recollect and focus on the common element they are likely to be confused as to the trade source. As such I find that the trade marks are deceptively similar.

   27.     The Opponent has in principle established its ground of opposition based on s 44(1) in respect of the Applicant’s Goods. However, this is not the end of the matter as the Applicant is seeking to rely on the provisions of s 44(3)(a).

   28.     Section 44(3)(a) concerns ‘honest concurrent use’. In McCormick & Co Inc v McCormick¹⁵ Kenny J stated: 

   Section 44(3) gives the Registrar a discretion to accept an application that would otherwise be rejected under s 44(1) in the case of honest concurrent use or other circumstances making it proper to do so. The authorities establish that the principal criteria for determining whether registration should be permitted pursuant to s 44(3) include:  

   (1) the honesty of the concurrent use;  
   (2) the extent of the use in terms of time, geographic area and volume of sales;  
   (3) the degree of confusion likely to ensue between the marks in question;  
   (4) whether any instances of confusion have been proved; and  
   (5) the relevant inconvenience that would ensue to the parties if registration were to be permitted.  

   See In Re Alex Pirie & Sons Ltd’s Application (1932) 49 RPC 195; (1933) 50 RPC 147 at 159-160; In Re John Fitton & Co Ltd’s Application (1949) 66 RPC 110 at 112; and Stingray Surf Co Pty Ltd v Lister [1997] ATMO 3; (1997) 37 IPR 306 at 310-311. These factors are not necessarily exhaustive of the matters to be considered, but they are a useful guide: see In Re Electrix Ltd’s Application [1957] RPC 369 at 379.

   29.     Mr North states that the Trade Mark was adopted because it represents the first letters of the words CO-ORDINATED THERMAL SYSTEMS together with the word THERMFRESH which is a trade mark which the Applicant holds in the United States of America.[11]

   [11] Verified on the United States Register of Trade Marks, Mr Joshua Jay North is the owner of trade mark registration 4798245 for the word THERMFRESH. GSN Holdings Pty Ltd filed for the trade mark on 27 August 2014, the trade mark was registered on 25 August 2015 and assigned to the Applicant on 7 June 2016.

   30.     Mr North states that the earliest date of first use of the Trade Mark in Australia was 2008 and that the Trade Mark has been continuously used in Australia ever since. Mr North states that he is the director of the company CTS Thermfresh Group Pty Ltd (‘CTS Group’) which designs and manufactures humidity systems. Mr North states that he has licensed the use of the Trade Mark to CTS Group since 2008.

   31.     Mr North provides confidential annual sales revenue in Australia for the Goods bearing the Trade Mark for the years 2010 to 2021. Mr North states that the principal customers for the Goods bearing the Trade Mark are located in each Australian State and Territory.

   32.     Mr North states that the Trade Mark is used on name plates, build plates, on decals on the Goods and on invoices. Annexure 1 to North comprises undated photographs of a blank purchase order, a blank letter head and a product folder. All of these documents feature the  trade mark .

   33.     Mr North states that the Goods bearing the Trade Mark have been advertised in the publication Market Place News and promoted at Trade Expo Events such as the ARBS Melbourne and PMA USA over many years.

   34.     Mr North states that the Trade Mark appears on the websites and Annexure 3 to North comprises screenshots of pages from dated 10 March 2022. The website pages are headed with the trade mark . The refrigeration products displayed in the website pages have the trade mark  applied to the goods. Annexure 3 to North also includes a screenshot of the page ‘CTS Thermfresh info’ which uses the plain words CTS Thermfresh in the text as a reference to the Applicant’s company and the Goods.

   35.     Mr North states that apart from a letter of demand from the Opponent, at no time has the Opponent objected to any use of the name CTS THERMFRESH on and in relation to the Goods.

   36.     In response the Opponent submits that the Applicant cannot raise a s 44(3)(a) argument because any evidence of honest concurrent use must establish that the Applicant acted honestly. The Opponent submits that if the Applicant conducted basic due diligence when it sought to adopt the mark, it would have come across the Opponent’s trade mark, which was lodged with IP Australia in September 1980.

   37.     In Dodds 2, Mr Dodds states that the Opponent’s trade mark was previously owned by two separate entities and the Applicant’s father Gary North and uncle were directors of those entities.[12] Mr Dodds states that the Applicant cannot deny knowledge of the industry his father operated in, as the Applicant was the incoming director of CTS Sunstate Pty Ltd (‘CTS Sunstate’) following his father’s resignation on 3 March 2016.[13] Mr Dodds states that’s the Opponent’s legal representatives issued a letter of demand to Gary North and CTS Sunstate on 24 June 2016.[14] The letter of demand made claims of trade mark infringement, misleading and deceptive conduct and passing off by CTS Sunstate and Gary North.

   [12] Dodd 2, (22) [Exhibit PD-4].

   [13] Dodds 2, (22) [Exhibit PD-6].

   [14] Dodds 1, (31 to 32) [Exhibit PD-2].

   38.     Further, the Opponent submits that the evidence exhibited in the North declaration, does not include any dates, or timestamps, historical website data or any other material that would substantiate the claims made by North.

   39.     The first criterion to assess honest concurrent use concerns the honest of adoption of the Trade Mark. In this case the Applicant stated that the Trade Mark was adopted because it represents the first letters of the words CO-ORDINATED THERMAL SYSTEMS together with the word THERMFRESH. However, CO-ORDINATED THERMAL SYSTEMS is the company name i.e. Co-ordinated Thermal Systems Pty Ltd, of the original owner of the Opponent’s trade mark. This company was registered from May 2004 to May 2014 and its directors included Gary North, the Applicant’s father.[15] Furthermore, the Applicant was involved in an earlier business that was sent a letter of demand from the Opponent regarding unauthorised use of the Trade Mark. In my view, the decision of the Applicant to adopt the Trade Mark was in awareness of the Opponent’s trade mark and reputation.

   [15] Dodds 2, [Exhibit PD-3].

   40.     There are further issues with the evidence concerning honest concurrent use. The Applicant claims to have licensed the Trade Mark to the CTS Group since 2008. However, this arrangement is not supported by any documentation and Exhibit PD-2 to Dodds 2 is an extract from ASIC listing the company CTS Group being registered on 10 December 2018, which is ten years after the Applicant claims to have licensed the Trade Mark to this entity.

   41.     The Applicant’s sales figures are unsubstantiated and while the Applicant has provided a confidential list of customers across Australia, there is no evidence to confirm the sale of goods to any of the businesses listed.

   42.     The Applicant has not provided any advertising expenditure or evidence of its promotional activities. Furthermore, the evidence in the Annexures to North is undated or downloaded after the Relevant Date.[16]

   [16] Section 7(1).

   43.     Overall, the Applicant’s conduct leading up to the adoption and use of the Trade Mark does not sufficiently support a claim of honest concurrent use. For the reasons outlined above the Applicant has demonstrated a blatant disregard for the Opponent’s trade mark. The Applicant was more likely than not aware of the Opponent’s trade mark having being a director of the company which was issued a letter of demand from the Opponent and through knowledge of his father’s involvement in companies which were the predecessors in title to the Opponent’s trade mark. The Applicant chose to persist with use of the Trade Mark, based on the inclusion of CTS in the trade mark and his registration for the word THERMFRESH in the United States of America, which only covers that jurisdiction. Furthermore, the Applicant has failed to provide any evidence of continuous use of the Trade Mark in relation to the Goods in Australia before the Relevant Date. Accordingly, I am not satisfied that the honesty of the concurrent use has been established such that it is appropriate to apply the provision of s 44(3)(a).

   44.     The Applicant does not suggest that I allow registration of the Trade Mark under s 44(3)(b) and there is nothing in the evidence which supports the existence of other circumstances that would make it proper to apply s 44(3)(b). Therefore, I do not find that s 44(3)(b) should be applied in this case. The Applicant does not state that s 44(4) is applicable in this case and for completeness I reach the same conclusion.

   Decision

   45. Section 55 of the Act provides:

   55  Decision

   (1)  Unless subsection (3) applies to the proceedings, the Registrar must, at the end, decide:

   (a)  to refuse to register the trade mark; or

   (b)  to register the trade mark (with or without conditions or limitations) in respect of the goods and/or services then specified in the application;

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

   46.     The Opponent has established a ground of opposition under s 44 in relation to the Goods. Accordingly, I refuse to register trade mark number 2211439. If the Registrar is served with a notice of appeal, I direct that the disposition of the Application should be in accordance with the Court’s order or direction.

   Costs

   47. Both parties sought an award of costs. It is usual for costs to follow the event, and I see no reason to depart from that principle here. I award costs against the Applicant under s 221 in line with Schedule 8 of the Regulations.

   Louise Tuohy

   Hearing Officer

   Delegate of the Registrar of Trade Marks

   24 June 2024