Doric Management Pty Ltd v Loukat Holdings Pty Ltd

[2014] ATMO 99

TRADE MARKS ACT 1995

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

Re:Opposition by Doric Management Pty Ltd to registration of trade mark application 1484316(19, 37, 40) - DORIC MARBLE AND DEVICE - in the name of Loukat Holdings  Pty Ltd.

Delegate:

Jock McDonagh

Representation:

Opponent: David Stewart and Laura Tatchell of Wrays Lawyers

Applicant: Shaun Creighton agent for RUN Legal

Decision:

2014 ATMO 99

Section 52 opposition to registration – 41, 42, 43, 44, 58, 58A and 60 grounds pressed - s 60 ground of opposition established – registration refused

Background

1. This matter is an opposition under section 52 of the Trade Marks Act 1995 (‘the Act’) to the registration of the trade mark filed by Loukat Holdings Pty Ltd (‘the Applicant’). Relevant details of the application are set out below.

Trade mark:  

Trade mark application:              1484316

Filing Date:  4 April 2012

Specification:  Class 19: Stone benchtops and counters including benchtops and counters made from marble, granite, limestone and reconstituted stone

Class 37: Installing stone benchtops, floor and wall panelling, fireplaces, reception counters and other fittings; stonemasonry

Class 40: Processing natural marble, limestone, granite and reconstituted stone

Endorsements:   Provisions of paragraph s44(3)(a) and/or Reg 4.15A(3)(a) applied. Provisions of subsection s44(4) and/or Reg 4.15A(5) applied.  

1. The application was examined in compliance with section 31 of the Act and was advertised as accepted for possible registration in the Australian Official Journal of Trade Marks on 1 November 2012. Doric Management Group Pty Ltd (‘the Opponent’) filed a Notice of Opposition (‘the Notice’) to the registration of the application on 29 January 2013. Thereafter the Opponent and Applicant served and filed evidence as provided by the Trade Mark Regulations 1995 (‘the Regulations’).

2. I heard the matter in Canberra on 19 March 2014 as a delegate of the Registrar of Trade Marks. David Stewart and Laura Tatchell of Wrays Lawyers represented the Opponent. The Applicant was represented by Shaun Creighton as agent for RUN Legal.

Grounds of Opposition

1. The Notice nominated grounds of opposition under sections 41, 42, 43, 44, 58, 58A and 60 the Act. The onus is upon the Opponent to establish one or more of its grounds of opposition on the ‘balance of probabilities’.[1]

   [1] See Pfizer Products Inc v Karam [2006] FCA 1663; (2006) 70 IPR 599 Chocolaterie Guylian NV v Registrar of Trade Marks [2009] FCA 891, para 22-27 (2009) 82 IPR 13. See also Sports Warehouse Inc v Fry Consulting [2010] FCA 664; (2010) 87 IPR 300 at [36] to [39]; NV Sumatra Tobacco Trading Company v British American Tobacco Services Limited [2011] FCA 1051 (9 September 2011) at [16] to [32]

2. The time at which the grounds of opposition must be established is the date of filing of the application for registration[2].

   [2] See Southern Cross Refrigerating v Toowoomba Foundry Pty Ltd (1953) 91 CLR 592 at 595

Evidence

1. The evidence consists of the following declarations:

Declarant	Position	Date Made	Exhibits
Evidence in Support
Charilaos Andrea Xydas (“Xydas”)	Director of Opponent	21.10.13	CAX-1 to CAX-66
Evidence in Answer
Jim Katsaridis (“Katsaridis”)	Managing Director of Applicant	29.01.14	JK-1 to JK-6
Scott Charles William Buchanan (“Buchanan”)	Solicitor and attorney for Applicant	29.01.14	SB-1 and SB-2

Discussion

1. The Opponent nominated the following trade mark registrations in support of its ground of opposition under section 44 and their reputation as underpinning the section 60 ground:

Trade Mark:

779960

”Doric 1”

Filing Date:

3 December 1998

Specifications:

Class 36: Provision of real estate services, including property development services

Class 37: Building and building maintenance in the construction industry

Class 42: Architectural and engineering services

Endorsements: Provisions of paragraph 44(3)(a) applied.

Trade Mark:

779961

”Doric 2”

Filing Date:

3 December 1998

Specifications:

Class 37: Building and building maintenance in the construction industry

Endorsements: Provisions of paragraph 44(3)(a) applied.

1. It should be noted that the above trade mark registrations were cited against the Applicant’s trade mark (“Doric Marble” during the course of examination. The Applicant’s mark was considered to be substantially identical with, or deceptively similar to those registrations under section 44 of the Act. Those citations and another were overcome by the provisions of sections 44(3)(a) and 44(4), as indicated in the endorsement.

2. The evidence provided by the Applicant to overcome the citation was, relevantly, the same as that provided in Evidence in Answer (Katsaridis) in these proceedings. In his submissions, Mr Stewart points out that Katsaridis establishes the use of the following versions of Doric Marble for the periods of time shown:

2005 to 2007 2005 to 2009 From 2009

Section 60: Trade mark similar to trade mark that has acquired a reputation in Australia

1. Section 60 of the Act provides:

   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.

2. It is not necessary to show under section 60 that the respective trade marks are deceptively similar although such a finding can be relevant in determining the likelihood of deception or confusion. As I stated above, Doric Marble was considered in examination to be substantially identical with or deceptively similar to the two trade marks Doric 1 and Doric 2. It is apparent that there is a palpable degree of similarity between Doric Marble and Doric 1.

3. Reputation is to be assessed according to the test set out in McCormick & Company Inc v McCormick (2000) 51 IPR 102, by Kenny J at [81] – [82]:

   What is intended by the word “reputation” in s 60? The word is defined in The Macquarie Dictionary as follows:

   reputation ... 1. the estimation in which a person or thing is held, esp. by the community or the public generally; repute ... 2. favourable repute; good name ... 3. A favourable and publicly recognised name or standing for merit, achievement, etc. ... 4. The estimation or name of being, having done, etc, something specified.

   Cf. The Oxford English Dictionary. In s 60, the word is, I think, apt to refer to “the recognition of the McCormick & Co marks by the public generally”.

   Does the evidence establish that in Australia before 9 March 1992 the McCormick & Co marks were recognised by the public generally and, because of that, the use by Mary McCormick of her marks would be likely to cause the public confusion, as for example, by the public’s mistakenly attributing a business connection between the two or attributing her product to the company?

4. Further, at [86] , Kenny J said:

   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.

5. The Opponent’s evidence establishes that it operates a group of companies that have been trading in the construction industry in Australia for more than 24 years. The companies have undertaken design, construction and property development activities throughout all sectors of the general contracting industry. This includes the resources, defence, infrastructure and commercial sectors.

6. Xydas detailed a number of high profile projects undertaken by the Opponent’s companies, including projects that featured marble installation (see Xydas paragraphs 23 and 24, and annexure CAX-7).

7. The Opponent’s evidence demonstrates that it has been using Doric 1 and Doric 2 in relation to these activities and projects since 2001 and its business has been steadily expanding. It is demonstrably Australia-wide and is said to hold approximately 30% of the Australian market, with an annual turnover of approximately $10 million for the financial year ending 30 June 2010.

8. As well as statutory protection of trade mark registrations for Doric 1 and Doric 2 from 3 December 1998, Xydas paragraph 26 declares the use of Doric 2 continuously from 1989.

9. Xydas provides examples evidencing reputation of its business under its Doric trade marks since 1989, including the following:

• Prestigious accolades and awards between 1991 and 2013 (paragraphs 58 and 59, CAX-57)

• Consolidated annual revenue attributable to business conducted under its Doric trade marks between 1990 and 2013 being between $2.4 million and $179 million (paragraph 30)

• Substantial payments for advertising, marketing, promotional signs, print media, and awards presentations in Western Australia and South Australia (paragraph 34, Confidential CAX-9)

• The Opponent’s companies were featured in a piece on the “100 most entrepreneurial firms more widely known as the fastest growing firms in Australia” in a book entitled Reputation Building: Website Disclosure and the Case of the Intellectual Capital by Indra Abeysekera (paragraph 36(a), annexure CAX-10)

• The Opponent’s companies have advertised numerous building tenders in print media, including the West Australian and the Adelaide Advertiser (paragraph 37, annexures CAX-11 to CAX-13)

• The Opponent’s companies have, since 1990, erected signage depicting Doric 1 on every construction site at which it is working in Australia (paragraphs 43 to 47, annexures Confidential CAX-6 and CAX-44 to CAX-46)

• The Opponent’s companies have participated in trade shows and given presentations in Western Australia, gaining significant exposure for its trade marks (paragraphs 48 to 49)

• Doric 1 is prominently featured on stationery, uniforms and equipment (paragraph 62)

1. The likelihood of deception or confusion must be finite and not trivial[3], and there must be a “real tangible danger of its occurring”[4]. The test is whether a substantial number of people, judged in light of the size and nature of the market involved, will be deceived or confused.[5]

   [3] Registrar of Trade Marks v Woolworths Ltd (1999) 45 IPR 411, at 428

   [4] Southern Cross Refrigerating Co v Toowoomba Foundry Pty Ltd (1954) 91 CLR 592, at 597

   [5] Australian Woollen Mills Ltd v FS Walton & Co Ltd (1937) 58 CLR 641

2. Confusion in the minds of the public might not always eventuate in mistaken purchase; however, as noted by the Full Federal Court in Nettlefold Advertising Pty Ltd v Nettlefold Signs Pty Ltd[6]:

   A probability of confusion, if it is real, is sufficient even though the confusion may be unlikely to persist up to the point of, and be a factor in, inducing actual sales: Southern Cross at 495. There may be confusion or deception in the minds of persons to whom the mark is addressed, even if actual purchasers will not ultimately be deceived: Re Hack's Application (1940) 58 RPC 9 at 103-104.

   [6] [1998] FCA 1704, citing Heerey J in Nettlefold Advertising Pty Ltd v Nettlefold Signs Pty Ltd (1997) 38 IPR 495, at 501

3. Each of the Opponent’s and Applicant’s trade marks reference the Doric order of ancient Greek architecture. Each display a device in the manner of a Doric column, and the word “Doric” is used. Marble was extensively used in ancient Greek architecture, and is prevalent in many modern buildings.

4. Given the degree of similarity between Doric Marble and Doric 1, the opponent’s reputation in both Doric 1 and Doric 2, and the similarity in the respective services and closely related goods, I consider that a significant number of Australian consumers would at the very least speculate as to some sort of connection between that well-known trade mark and the applicant’s trade mark. Particularly since the trade marks are very similar, the degree of speculation would, in my assessment, amount to, at the very least, the reasonable doubt required to trigger section 60.

5. I note that Kenny J in McCormick & Company Inc v McCormick, supra, at [93] - [96], expresses the view that section 44(3) does not provide an exception to section 60, and I conclude that the same reasoning suggests that section 44(4) likewise does not provide an exception to section 60 of the Act.

6. Therefore, the opponent has established a ground of opposition under the provisions of section 60. Having found in favour of the opponent in terms of section 60 there is no need for me to discuss the other grounds set out in the Notice although this ground or any others in the Act may also be relied on in the event of an appeal from this decision.

Decision

1. Section 55(1) of the Act applicable to this matter provides:

   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.

2. I have found the opposition to be successful on the ground raised pursuant to section 60 of the Act. I accordingly refuse to register trade mark application number 1484316.

Costs

1. In the event that the Opponent prevailed, Mr Stewart sought an award of costs in the Opponent’s favour.  As the successful party, the Opponent is entitled to its costs and I accordingly award costs against the Applicant in accordance with Schedule 8 of the Regulations.

Jock McDonagh

Hearings Officer

Trade Marks Hearings

4 September 2014