DEKS Industries Pty Ltd v Technologies Integration Group Pty Ltd

[2022] ATMO 52

TRADE MARKS ACT 1995

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

Re:Opposition by DEKS Industries Pty Ltd to registration of trade mark application number 2062028 (class 19) – RAPID FLASH SUPERBOOT - in the name of Technologies Integration Group Pty Ltd

Delegate:

Tracey Berger

Representation:

Opponent: Dentons Australia Limited

Applicant: Andrew Petale, Y Intellectual Property

Decision:

2022 ATMO 52

Trade Marks Act 1995 (Cth) – opposition under section 52 – grounds of opposition under ss 42(b), 44, 58, 58A, 60, 62(b) and 62A considered- no grounds established - trade mark to proceed to registration

Background

1.    This is a decision on the opposition by DEKS Industries Pty Ltd (‘Opponent’) to registration of trade mark 2062028 filed by Technologies Integration Group Pty Ltd (‘Applicant’) for the following:

Trade Mark:      RAPID FLASH SUPERBOOT    (‘Applicant’s Trade Mark’)

Filing Date:         9 January 2020 (‘Relevant  Date’)

Goods: Class 19: Flashing, not of metal, for building; Non-metallic clamping devices for use with roof flashings; Non-metallic flashing holders; Non-metallic flashings for waterproofing buildings; Non-metallic materials for repairing roof flashing; Roof flashing, not of metal; Rubber flashings for buildings; Rubber flashings for roofs

(‘Applicant’s Goods’)

Endorsement:   Provisions of subsection 44(4) and/or Reg. 4.15A(5) applied.

2.    As required by the Trade Marks Act 1995 (Cth)[1], the Trade Mark was examined and an objection was raised based on prior Australian registration 1923270 RAPID FLASH in classes 17 and 19 in the name of the Opponent.  Following the filing of evidence by the Applicant, the Applicant’s Trade Mark was accepted for possible registration under s 44(4) and advertised for opposition purposes on 10 June 2020. The Opponent filed a Notice of its Intention to Oppose registration of the Trade Mark on 10 August 2020 and a Statement of Grounds and Particulars (‘SGP’) on 10 December 2020. The Applicant filed Notice of its Intention to Defend the Trade Mark from opposition on 8 January 2021.

[1] Each reference to a section in these reasons is a reference to a section of the Trade Marks Act 1995 (Cth) (‘Act’).

3.    The parties then filed evidence in accordance with the timetable set out in the Trade Marks Regulations 1995 (Cth)[2], concluding with the Opponent’s evidence in reply on 19 July 2021. 

[2] Each reference to a regulation in these reasons is a reference to a regulation in the Trade Marks Regulations 1995 (Cth) (‘Regulations’).

4.    The parties were given the opportunity to request a hearing.  Both parties elected to only file written submissions.  The Opponent filed written submissions on 28 February 2022 and the Applicant’s written submissions were filed on 8 March 2022.  This matter was allocated to me to determine in my capacity as a delegate of the Registrar of Trade Marks based on the material filed during the proceedings as outlined above.

Grounds and Onus

5. The SGP nominated grounds of opposition under ss 42(b), 43, 44, 58, 58A, 59, 60, 62(b) and 62A of the Act. The Opponent pursued all of the grounds of opposition except those under s 43 and s 59.

6.    The Opponent bears the onus of establishing one or more of the grounds of opposition[3] on the balance of probabilities[4].   The rights of the parties are assessed as at the Relevant Date, being the filing date of 9 January 2020.

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

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

Evidence

7.    The following evidence was filed:

Evidence in Support (‘EIS’)

Declaration of Asrit Devalla, Business Improvement and Innovation Manager of the Opponent, made on 13 April 2021 with Exhibits AD-1 to AD-9 (‘First Devalla Declaration’).  This declaration exhibits a redacted version of the Declaration of Michael Carew, director of the Applicant, made on 22 January 2020 (‘Carew Prior Use Declaration’) filed during examination of the Applicant’s Trade Mark.

Evidence in Answer (‘EIA’)

Declaration of Michael Carew made on 18 May 2021 with Annexures MC-1 to MC-4 (‘Carew Declaration’)

Evidence in Reply (‘EIR’)

Second declaration of Asrit Devalla made on 19 July 2021 (‘Second Devalla Declaration’)

The Applicant

8.     The Applicant was incorporated in July 1997 and is involved in the production and manufacture of flashing products.  Mr Carew declares that he first used the name RAPID FLASH in around 1997 for a roof flashing product that he developed.  In 1999, he improved this flashing product and secured patent protection before manufacturing and selling the product under the Applicant’s Trade Mark.  Mr Carew avers that the Applicant’s Trade Mark has been continuously used since November 1999 for the Applicant’s Goods.  The Applicant’s Goods have been promoted under the Applicant’s Trade Mark on his websites at and (‘Applicant’s Websites’) since at least 17 October 2008.

9.     It is declared that the Applicant has sold over one million units under the Applicant’s Trade Mark primarily through Reece stores (‘Reece’) with annual sales revenue averaging in excess of $500,000.

The Opponent

10.   The Opponent claims to be a pioneer and leader in the development and manufacture of innovative products for the construction, industrial and mining industries, including flashing products.

11.   The Opponent is the owner of Australian registration 1923270 RAPID FLASH (‘Opponent’s Mark’), having a priority date of 30 April 2018, in classes 17 & 19 covering, amongst other goods, “Building products and materials, namely flashing…roof flashing, not of metal; rubber flashings for roofs; rubber flashings for buildings; non-metallic flashing for windows, frames and holders; non-metallic flashings for waterproofing buildings…parts and fittings for all the aforesaid goods” (‘Opponent’s Goods’).  

12.   The Opponent has used the Opponent’s Mark for the Opponent’s Goods since April 2018.  The Opponent has sold almost 100,000 units of the Opponent’s Goods which are available for purchase through its website and leading hardware, plumbing, roofing and electrical wholesalers, distributors and retailers, including Reece, Bunnings, MMEM Electrical Group and Plumbing Plus Group (1450 stores in total nationally). 

13.   The Opponent has provided details of its advertising expenditure for the Opponent’s Goods which are promoted on its website, the websites of Bunnings and Reece, social media posts by influencers, print ads, in-store point of sale displays and product brochures.  

Discussion

Section 44

14.   The relevant provisions are reproduced below:

Section 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)it 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.

Note 1: For deceptively similar see section 10.

Note 2: For similar goods see subsection 14(1).

(2)…

(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. 

Note:  For limitations see section 6.

(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.

Note 1: An authorised use of the trade mark by a person is taken to be a use of the trade mark by the owner of the trade mark (see subsection 7(3)).

Note 2: For predecessor in title see section 6.

Note 3: For priority date see section 12.

15. To successfully oppose the application pursuant to s 44 the Opponent must establish that a trade mark registered by a person other than the Applicant:

·     has a priority date which is earlier than that of the Applicant’s Trade Mark (‘the first requirement’);

·     is substantially identical with or deceptively similar to the Applicant’s Trade Mark (‘the second requirement’); and

·     is in respect of similar goods, and/or services which are closely related to, the Applicant’s Goods (‘the third requirement’).

16. In the event that each of these requirements is satisfied by the Opponent it may still be possible for the Registrar 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 Applicant’s Trade Mark, other circumstances which would make registration of the Applicant’s Trade Mark proper, or that the Applicant has continuously used the Applicant’s Trade Mark beginning before the priority date of the Opponent’s relied upon mark.

17. In support of the s 44 ground, the Opponent relies on its Australian registration 1923270 RAPID FLASH having a priority date of 30 April 2018, in classes 17 & 19 covering the Opponent’s Goods, amongst others. This mark satisfies the first requirement of this ground.

18.   The Applicant concedes that the Applicant’s Trade Mark is deceptively similar to the Opponent’s Mark and that Applicant’s Goods and the Opponent’s Goods are the same, both being flashings for buildings.  I agree with this assessment and hence the second and third requirements are satisfied.

19. Having found that the three requirements of s 44(1) are met, I must now consider whether the Applicant has established prior continuous use under s 44(4) as it contends.

Prior Continuous Use

20.   To successfully defend the opposition on this ground, the Applicant needs to establish (i) that the Applicant’s Trade Mark has been used by the Applicant in Australia; (ii) that use of the Applicant’s Trade Mark commenced before the priority date of the Opponent’s Mark, being 30 April 2018; and (iii) that use has been continuous up to the Relevant Date.

21.   The following documentary evidence supports the Applicant’s contentions that it has made prior continuous use of the Applicant’s Trade Mark:

·     A letter dated 13 August 1999 signed by Mr Carew and Neal Cam of Reece Pty Ltd confirming the first order of the Applicant’s Goods under the Applicant’s Trade Mark (‘First Order’).

·     Extracts from the Applicant’s website at between 17 October 2008 to 18 May 2019[5] using the Wayback Machine featuring the phrase INTRODUCING RAPID FLASH SUPERBOOT! followed by the products SUPERBOOT and DURA SUPERBOOT with an option to download a brochure on each product:

·     A photograph of the Applicant’s Goods with the Applicant’s Trade Mark embossed on the product which embossing the Applicant avers has appeared on the products since 2006 and a copy of the artwork proof for this embossing sent by fax dated November 1999.  This embossing can also be seen in Exhibit AD-9 of the First Devalla Declaration being a photograph of a sample of the Applicant’s Goods purchased in April 2021.

·     A copy of the Applicant’s RAPID FLASH SUPERBOOT brochure which has been available for downloading from the Applicant’s Websites since 2008.

[5] Annexure MC-6 Carew Prior Use Declaration, pages

22.   The Opponent contends that the Applicant has not established prior continuous use of the Applicant’s Trade Mark because the Applicant only sells its products to Reece which sells the goods to the end consumer under the mark DURA SUPERBOOT.   The Carew Declaration declares that the Applicant’s Goods are sold to Reece under the Applicant’s Trade Mark and then resold to end consumers as part of Reece’s DURA range.  The Applicant’s Goods which are sold by Reece are embossed with the Applicant’s Trade Mark. 

23.   The Opponent contacted the Applicant by telephone in April 2021 and enquired about purchasing the RAPID FLASH SUPERBOOT product and was directed to purchase the goods at Reece.  There is a dispute between the parties as to whether the Applicant’s instructions included advice to ask for DURA SUPERBOOT or not.  In any event, the Opponent enquired about the RAPID FLASH SUPERBOOT and was told where the goods could be bought.  Further, when the Opponent purchased the Applicant’s Goods from a Reece store, the product was invoiced as DURA SUPERBOOT but was provided without any external packaging and with the trade mark RAPID FLASH SUPERBOOT embossed on the product.  I accept the Applicant’s evidence that the Trade Mark is used for the wholesale of the Applicant’s Goods as supported by the First Order and embossing of RAPID FLASH SUPERBOOT on the product itself.   In my opinion, this amounts to use of the Applicant’s Trade Mark as a badge of origin.

24.   In addition, the Opponent contends that the Applicant has not used the Applicant’s Trade Mark on the basis that RAPID FLASH and SUPERBOOT are used as separate marks.  The Opponent points to the embossing of the Applicant’s Trade Mark on the Applicant’s Goods which appears as Rapidflash^TM SUPERBOOT. Registration of the Applicant’s Trade Mark in ordinary font entitles the Applicant to use the mark in other standard fonts.  I do not consider that the use of italics, combining of the words RAPID and FLASH or use of the ^TM symbol are additions or alterations substantially affecting the identity of the Applicant’s Trade Mark[6].  In my opinion, Rapidflash^TM SUPERBOOT is substantially identical to RAPID FLASH SUPERBOOT and use of the mark Rapidflash^TM SUPERBOOT constitutes use of the Applicant’s Trade Mark.  The essential elements are the same and there is a total impression of similarity.[7]

[6] See Morny Ltd’s Trade Mark (1951) RPC 55; Re Morny Ltd's Trade Marks (1951) 68 RPC 131 at 149 – 150 (CA UK).

[7] Optical 88 Ltd v Optical 88 Pty Ltd (No 2) [2010] FCA 1380, [256].

25. I am satisfied that the Applicant has established prior use of the Applicant’s Trade Mark for the Applicant’s Goods, which are the same or similar to the Opponent’s Goods, since before the priority date of the Opponent’s Mark and that use has been continuous. Accordingly, the s 44 ground of opposition fails.

Section 58A

26.   This section provides:

58A  Opponent’s earlier use of similar trade mark

(1)  This section applies to a trade mark (section 44 trade mark) the application for registration of which has been accepted because of:

(a)  subsection 44(4); or

(b)  a similar provision of the regulations made for the purposes of Part 17A.

Note:          Subsection 44(4) prevents rejection of an application for registration of a trade mark that is substantially identical with, or deceptively similar to, a registered trade mark or a trade mark whose registration is being sought where the first‑mentioned trade mark has been continuously used since before the priority date of the other trade mark.

(2) The registration of the section 44 trade mark may be opposed on the ground that the owner of the substantially identical or deceptively similar trade mark (similar trade mark) or the predecessor in title:

(a)  first used the similar trade mark in respect of:

(i)  similar goods or closely related services; or

(ii)  similar services or closely related goods;

before the owner of the section 44 trade mark or the predecessor in title in relation to the section 44 trade mark first used the section 44 trade mark; and

(b)  has continuously used the similar trade mark in respect of those goods or services since that first use.

Note:          For predecessor in title see section 6.

27.   This ground of opposition is intended to enable the owner of a trade mark that is substantially identical or deceptively similar to another mark to oppose its registration on the basis of first use.[8]

[8] Explanatory Memorandum to the Trade Marks Amendment Bill 2006 (Cth) at [4.9.2].

28.   As I have found that the Applicant has used the Applicant’s Trade Mark for the Applicant’s Goods since before April 2018 when the Opponent commenced use of the Opponent’s Mark, the Opponent fails on this ground of opposition.

Section 58

29. Section 58 allows for opposition to a trade mark on the grounds that the applicant is not the owner of the trade mark.

30.   The Opponent has particularised this ground in its SGP by stating:

The opponent has continuously used the trademark RAPID FLASH in relation to the same or closely related goods since early 2018, a date which is earlier than the filing date of the Opposed Application.

31.   The owner of a trade mark in Australia is the first to use the mark or apply for registration, whichever is the earlier.  Having found that the Applicant has established prior continuous use of its mark since before April 2018, being earlier than the Opponent’s use or filing of an application for the Opponent’s Mark, this ground fails.

Section 60

32. Section 60 provides:

60  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.

Note:          For priority date see section 12.

33.   To establish this ground, the Opponent must establish a reputation in a trade mark existing in Australia at the Relevant Date. If reputation is established, the Opponent must then prove that because of the reputation in the mark relied on by the Opponent, use of the Trade Mark is likely to deceive or cause confusion.

34.   The reputation in the other trade mark must be amongst a ‘significant’ or ‘substantial’ number of Australian consumers[9] but this is tempered by the nature of the relevant market. The reputation must also be established as a matter of fact by the Opponent.[10]

[9] See Renaud Cointreau & Cie v Cordon Bleu International Ltee [2001] FCA 1170; ConAgra Inc v McCain Foods (Aust) Pty Ltd [1992] FCA 159, [118].

[10] ConAgra Inc v McCain Foods (Aust) Pty Ltd [1992] FCA 159, [77].

35.   In the SGP, the Opponent relies on its use of the Opponent’s Mark in Australia since early 2018 and alleges that the Opponent has developed a substantial reputation in that mark such that use of the Applicant’s Trade Mark is likely to deceive or cause confusion.

36.   As Kenny J noted in McCormick & Co Inc v McCormick[11]:

In practice, it is commonplace to infer reputation from a high volume of sales, together with substantial advertising expenditures and other promotions, without any direct evidence of consumer appreciation of the mark, as opposed to the product.

[11] [2000] FCA 1335, [86].

37.   The Opponent commenced use of the Opponent’s Mark in April 2018, less than 2 years before the Relevant Date.  The Opponent has provided the approximate number of total retail sales and advertising expenditure since that time but these figures are relatively modest.  There is no evidence of the traffic to the Opponent’s website, the number of followers of the influencers who promote the Opponent’s Goods or details of the magazines in which the Opponent has advertised.  Given that consumers of the Opponent’s Goods would include tradies, plumbers and possible home owners with DIY experience, which is a market of significant size, I am not satisfied based on the evidence that the Opponent has developed a reputation in the Opponent’s Mark at the Relevant Date amongst a significant number of consumers in the relevant market.

38. Accordingly, the s 60 ground is unsuccessful.

Section 42(b)

39. Section 42(b) provides that an application for registration of a trade mark must be rejected if its use would be contrary to law. The Opponent bears the onus of establishing that use of the Applicant’s Trade Mark would be, rather than could be, contrary to law.[12]

[12] Advantage Rent-A-Car Inc v Advantage Car Renal Pty Ltd (2001) 52 IPR 24, 32 [28] (Madgwick J).

40. The Opponent alleges consumers would likely be misled or deceived by use of the Applicant’s Trade Mark based on the reputation in the Opponent’s Mark and use of the Applicant’s Trade Mark would therefore constitute passing off and a breach of ss 18 and 29 of the Australian Consumer Law (‘ACL’).

41. Several cases confirm that more is required to establish a likelihood of misleading or deceptive conduct under the ACL than is the case with trade marks likely to deceive or cause confusion under s 60.[13] Passing off also requires a reputation in the relevant mark or indicia. I have decided that s 60 has not been established because the Opponent has not demonstrated the requisite reputation. The Opponent therefore cannot establish that use of the Applicant’s Trade Mark would breach ss 18 and 29 of the ACL or constitute passing off.

[13] For example, Parkdale Custom Built Furniture Pty Ltd v Puxu Pty Ltd (1982) 149 CLR 191, 209-10 (Mason J).

Section 62(b)

1. Section 62(b) provides for the opposition to registration of a trade mark because the application was accepted for registration based on evidence or representations that were false in material particulars.

   43.   In the SGP, the Opponent alleges that the Carew Prior Use Declaration was false in that it wrongly alleges that the Applicant had continuously used the Applicant’s Trade Mark since 2008 because the Applicant has not consistently or continuously used the words RAPID FLASH in combination with SUPERBOOT.

   44.   The Applicant’s evidence shows use of RAPID FLASH SUPERBOOT in the First Order, on its website and in product brochures which can be downloaded from the Applicant’s Websites.  Further, I have found that use of Rapidflash^TM SUPERBOOT constitutes use of the Applicant’s Trade Mark.

   45. The s 62(b) ground of opposition is unsuccessful.

   Section 62A

   46.To establish the s 62A ground, the Opponent must establish that the Application was made in bad faith.

   47.In support of this ground, the Opponent alleges in the SGP that the Applicant was aware at the time of filing its application for the Applicant’s Trade Mark of the Opponent’s prior rights in Australia in the Opponent’s Mark.

   48.Awareness of the Opponent and the Opponent’s Trade Mark does not, of itself, amount to bad faith. Particularly when I am satisfied on the evidence that the Applicant adopted and used the Applicant’s Trade Mark many years before the Opponent first used the Opponent’s Mark. Therefore, this ground of opposition is unsuccessful.

   Decision and Costs

   49.   I find that the Opponent has failed to establish any of the grounds of opposition it nominated in the SGP. The Trade Mark may proceed to registration not less than one month from the date of this decision.

   50.   If the Registrar is served with a notice of appeal, I direct that registration shall not occur until either the appeal is withdrawn or discontinued. Otherwise, the disposition of the application should be in accordance with the Court’s order or direction.

   51. Both parties requested an award of costs. As costs generally follow the event, I see no reason to depart from that rule. I award costs against the Opponent under s 221 in the applicable amounts set out in Schedule 8 of the Regulations.

   Tracey Berger

   Hearing Officer

   Delegate of the Registrar of Trade Marks

   5 April 2022