Downer EDI Limited v EDI Exploration Drilling International GmbH

[2010] ATMO 39

TRADE MARKS ACT 1995

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

Re:Opposition by Downer EDI Limited to protection of International Registrations Designating Australia 1160092, 1160093, 1162625(1, 7, 36, 37 & 42) – International Registration Nos 910538, 910539, 912232 - EDIPOWER, EDI & DEVICE, EDI - filed in the name of EDI Exploration Drilling International GmbH.

Delegate:

Jock McDonagh

Representation:

Opponent: written submissions only

Applicant: no appearance, no submissions

Decision:

2010 ATMO 39

Reg. 17A.29 opposition – Ground under section 60 established – trade marks similar to trade marks that have acquired a reputation in Australia – protection refused. Costs awarded against holder.

Background

1. EDI Exploration Drilling International GmbH, a company based in Germany (“the holder”) requested protection in Australia for the following international registrations designating Australia (“IRDA”):

Application number:	1160092 IRDA 910538	1160093 IRDA 910539	1162625 IRDA 912232
Priority date: (Convention)	15.11. 2006	15.11. 2006	15.11. 2006
Advertised accepted:	22 March 2007	22 March 2007	22 March 2007
Goods/Services:	Class: 1 Drilling fluids and additives to drilling fluids, included in this class Class: 7 Machines for detecting, tapping, extracting, processing and purifying raw materials and resources from the earth Class: 36 Leasing of machines for detecting, tapping, extracting, processing and purifying resources and raw materials from the earth, such as water, ores and/or minerals or mineral resources of this type Class: 37 Mining; installation and maintenance of pipelines and boreholes for water; shaft or well drilling Class: 42 Technical consultancy in the field of detecting, tapping, extracting, processing and purifying raw materials and resources from the earth, such as water, ores and/or minerals or mineral resources of this type; services of a physicist; services of a technical measurement and testing laboratory; services of a chemical laboratory; engineering services; chemical analysis; technical tests and checks; technical measurements; scientific investigations; research analysis for water exploration and extraction; providing computer animations; expert research and consultancy for water deposits; providing technical and scientific expert opinions on detecting, tapping, extracting, processing and purifying raw materials and resources from the earth such as water, ores and/or minerals or mineral resources of this type; geological research, geological surveys; geological prospecting; granting of licences on intellectual property; physics research; technical consultancy; testing of water wells
Trade mark:	EDIPOWER	EDI

1. Section 189A of the Trade Marks Act 1995 (“the Act”) governs the consideration of IRDAs.  This section makes provisions for the regulations to “provide for such matters as are necessary to enable the performance of the obligations of Australia, or to obtain for Australia any advantage or benefit, under the Madrid Protocol.”

2. Notice of opposition to the protection of an IRDA is governed by the provisions of regulation 17A.29 of the Trade Marks Regulations 1995 (“the regulations”). Regulation 17A.31(3) applies the grounds of opposition under sections 58 to 61 and section 62A of the Act to oppositions to IRDA.

3. On 22 June 2007, Downer EDI, an Australian company (“the opponent”), filed  Notices of Opposition (“the notices”).  The opponent filed its evidence in support of the oppositions, comprising two declarations by Bruce John Crane dated 14 October 2008 and 23 February 2009, with numerous exhibits.

4. No evidence has been filed or served by the holder.

5. The matter was set down before me, as a delegate of the Registrar of Trade Marks, for hearing in Canberra on 19 February 2010.  The opponent did not appear but relied on written submissions. The holder did not appear and did not provide submissions.

The Opponent’s case

1. The opponent relies upon sections 42, 43, 58 and 60 of the Act. It also relies upon the following trade marks:

• EDI

• Edi

• DOWNER EDI

1. None of these marks are registered; however, the opponent’s evidence and the Register of Trade Marks satisfy me that the first two word marks had been used since the 1960s and registered since 1970 but were removed for non payment of fees in May 2006. The device mark was used over a similar period and registered in 1989, and likewise removed in 2006. I am satisfied that these marks were in use as at the priority date of the holder’s IRDAs, indeed were still in use as at the date of the filing of evidence.

2. The opponent submitted that because the holder’s marks were accepted after 23 October 2006, the amended grounds of opposition introduced by the 2006 amendments to the Act were available, which is particularly relevant to the section 60 ground.

3. I disagree with that submission. By virtue of section 8 of the Acts Interpretation Act 1901 (“AIA”), as discussed by Hearing Officer Debrett Lyons in Apple Computers Inc v Todaytech Group Ltd [2007] ATMO 40, especially at paragraph 47, the holder is to have its IRDA dealt with by the law as it stood at the time the IRDA was filed. The dates of the IRDA are each before 23 October 2006.

4. As my decision does not change as a result of the different statutory provisions, I shall discuss the section 60 ground first.

5. Section 60, in its unamended form and as it stood at the filing date of the application stated

   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) it is substantially identical with, or deceptively similar to, a trade mark that, before the priority date for the registration of the first-mentioned trade mark in respect of those goods or services, had 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.

6. It is for the opponent to point to a trade mark, whether registered or in common law use, which:

• is either substantially identical with, or deceptively similar to, the trade mark in the application;

• before the priority date, had acquired a reputation in Australia such that;

• use of the applicant’s trade mark would lead to deception or confusion.

1. In considering the first limb of the ground I have considered the underlying relevant authorities, including Jafferjee v Scarlett (1937) 57 CLR 115, De Cordova v Vick Chemical Co. (1951) RPC 271, Re Application by Pianotist Co. Ltd. (1906) 23 RPC 774, Shell Co of Australia Limited v Esso Standard Oil (Australia) Limited (1963) 109 CLR 407 and Registrar of Trade Marks v Woolworths Ltd (1999) 45 IPR 411.

2. I am satisfied that applications 1160092 and 1160093 are deceptively similar to the opponent’s cited marks, I am also satisfied that application 1162625 is substantially identical to the opponent’s cited word marks EDI and Edi.

3. The evidence demonstrates that the opponent provides comprehensive engineering and infrastructure services in the energy, resources and infrastructure sectors including oil, gas, geothermal and mineral drilling exploration, contract mining, rail services, infrastructure services, power, telecommunications and engineering projects.

4. The opponent has provided copies of its annual reports for the financial years 2001/02 to 2006/07. The revenue in the oil, gas and mineral mining sector is considerable ranging from the multi millions to billions of Australian dollars per year.

5. The relevant principles as to the assessment of the likelihood of confusion, etc, are set out by French J in Registrar of Trade Marks v  Woolworths [1999] FCA 1020 at paragraph 50:

   In Southern Cross Refrigerating Co v Toowoomba Foundry Pty Ltd [1953] HCA 73; (1954) 91 CLR 592 at 594-5, which concerned the 1905 Act, Kitto J set out a number of propositions which have frequently been quoted and applied to the 1955 Act. The essential elements of those propositions continue to apply to the issue of deceptive similarity under the 1995 Act. Applied also to service marks and absent the imposition of an onus upon the applicant they may be restated as follows:

   (i) To show that a trade mark is deceptively similar to another it is necessary to show a real tangible danger of deception or confusion occurring. A mere possibility is not sufficient.

   (ii) A trade mark is likely to cause confusion if the result of its use will be that a number of persons are caused to wonder whether it might not be the case that the two products or closely related products and services come from the same source. It is enough if the ordinary person entertains a reasonable doubt.

   It may be interpolated that this is another way of expressing the proposition that the trade mark is likely to cause confusion if there is a real likelihood that some people will wonder or be left in doubt about whether the two sets of products or the products and services in question come from the same source.

   (iii) In considering whether there is a likelihood of deception or confusion all surrounding circumstances have to be taken into consideration. These include the circumstances in which the marks will be used, the circumstances in which the goods or services will be bought and sold and the character of the probable acquirers of the goods and services.

   (iv) The rights of the parties are to be determined as at the date of the application.

   (v) The question of deceptive similarity must be considered in respect of all goods or services coming within the specification in the application and in respect of which registration is desired, not only in respect of those goods or services on which it is proposed to immediately use the mark. The question is not limited to whether a particular use will give rise to deception or confusion. It must be based upon what the applicant can do if registration is obtained.

   In respect of the last proposition, Mason J observed in Berlei Hestia Industries Ltd v The Bali Company Inc [1973] HCA 43; (1973) 129 CLR 353 at 362:

   “...the question whether there is a likelihood of confusion is to be answered, not by reference to the manner in which the respondent has used its mark in the past, but by reference to the use to which it can properly put the mark. The issue is whether that use would give rise to a real danger of confusion.”

6. Reputation is to be assessed according to the test set out in McCormick & Company Inc v McCormick [2000] FCA 1335 by Kenny J at paragraph 81:

   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?

7. I have no doubt that the opponent’s goods and services have established a reputation in Australia within the oil, gas and mineral mining sector. The evidence demonstrates particularly strong sales in the relevant marketplace and the participants in the industry are generally well informed about the products available to them.

8. As shown above, the issue of confusion or deception is to be considered within the full scope of the opposed application.  Within the full scope of the applied-for IRDAs are goods and services that are either the same goods and services or goods and services of the same description as the goods and services in respect of which the opponent’s trade mark has established its reputation. 

9. The opponent has established its ground under section 60.

10. 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 Notices of Opposition although these grounds or any others in the Act may also be relied on in the event of an appeal from this decision.

Decision

1. Regulation 17A.34(1) provides:

   17A.34 (1) Unless the opposition proceedings are discontinued or dismissed, the Registrar must decide:

   (a) to refuse protection in respect of all of the goods or services listed in the IRDA; or
   (b) to extend protection in respect of some or all of the goods or services listed in the IRDA (with or without conditions or limitations);

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

2. The opponent having established the ground of opposition under section 60, I refuse to extend protection to Australian trade mark applications 1160092, 1160093 and 1162625 (IRDA Nos 910538, 910539 & 912232) in respect of all goods and services listed in such IRDA. The International Bureau will be notified of this decision as soon as practicable after the appeal period has ended, in accordance with regulation 17A.34 (2).

Costs

1. The opponent sought its costs.  As a general rule, costs follow the event; therefore, I award costs against the holder according to the official scale

Jock McDonagh

Hearing Officer

Trade Marks Hearings

28 May 2010