EJOT GmbH & Co. Kg v Eastcoast Fasteners Pty Limited

[2017] ATMO 45

TRADE MARKS ACT 1995

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

Re:Opposition by EJOT GmbH & Co. KG to registration of trade mark application 1442886 (6) - PT - filed in the name of Eastcoast Fasteners Pty Limited.

Delegate:	Heath Wilson
Representation:	Opponent: Daniel Wilson of Spruson & Ferguson. Applicant: Peter Dummer of Wallington & Dummer.
Decision:	2017 ATMO 45 Opposition to registration under section 52 of the Trade Marks Act 1995 – sections 44, 58 and 60 pressed – section 44(1) established - trade mark registration refused.

Background

1. This is an opposition under section 52 of the Trade Marks Act 1995 (‘the Act’) filed by EJOT GmbH (‘the Opponent’) to the registration of a trade mark filed in the name of Eastcoast Fasteners Pty Limited (‘the Applicant’). The current details of the opposed trade mark application are as follows:

   Trade Mark No. 1442886

   Trade Mark: PT (‘the Trade Mark’)

   Priority Date: 16 August 2011

   Specification of Goods:

   Class 6: Industrial fasteners; screws of metal
   
   Endorsements:

   Provisions of subsection s44(4) and/or Reg 4.15A(5) applied.

   Provisions of paragraph s44(3)(a) and/or Reg 4.15A(3)(a) applied.

2. The Trade Mark was examined under section 31 of the Act and subsequently accepted under section 44(4)[1] and relevantly for this matter, section 44(3)(a) of the Act, having demonstrated honest concurrent use to a number of other trade marks, including trade mark registration no. 780630 owned by the Opponent.

   [1] In relation to other cited trade marks identified by the examiner (but not relevant to this opposition).

3. The advertisement of that acceptance appeared in the Australian Official Journal of Trade Marks on 7 May 2015.

4. On 6 July 2015, the Opponent filed a notice of intention to oppose the registration of the Trade Mark. The Statement of Grounds and Particulars (‘SGP’) filed later by the Opponent set out grounds of opposition under sections 42(b), 44, 58, 60, 62A of the Act. After the Applicant filed its Notice of Intention to Defend, the evidence stages of the opposition proceedings commenced.

Evidence

1. The Evidence in Support filed by the Opponent comprised:

   ØDeclaration of Christian Kocherscheidt (Chief Executive Officer of the Opponent) made 27 November 2016 with exhibits 1 to 9 (‘Kocherscheidt’).

2. Evidence in Answer was filed consisting of:

   ØDeclaration of Paul Neal (Director of the Applicant) made 9 March 2016 with exhibits PN-1 to PN-20 (‘Neal’).

3. Evidence in reply was not filed.

4. The hearing of the opposition was scheduled for 3 March 2017 and I heard the matter on that date in my capacity as a delegate of the Registrar of Trade Marks. Daniel Wilson of Spruson & Ferguson made submissions on behalf of the Opponent and Peter Dummer of Wallington & Dummer made submissions on the behalf of the Applicant.

5. While a written summary of argument had been provided by both parties prior to the hearing and oral submissions were made on the day of the hearing, on 8 March 2017 Mr Dummer provided what he described as corrections/clarifications to his oral submissions under section 44. Despite my view that these clarifications contained new submissions, I nevertheless intended to consider those arguments, and allowed Mr Wilson a further week to provide his own response. Mr Wilson did so, and by 21 March 2017, I considered the time for making submissions on the opposition concluded.

Grounds and Onus

1. The Opponent bears the onus of establishing at least one of the grounds of opposition on the civil standard of the balance of probabilities.[2] The rights of the parties are to be determined as at the date of the application[3] which is generally, but not always, the filing date.[4] The relevant date in this opposition is 16 August 2011. Of the grounds particularised in the SGP, the Opponent had elected to pursue only the grounds of opposition under sections 44, 58 and 60 of the Act.

Discussion

[2] Telstra Corporation Limited v Phone Directories Company Pty Ltd [2015] FCAFC 156, [133] affirming the approach of Gyles J in Pfizer Products Inc. v Karam [2006] FCA 1663, [26].

[3] Southern Cross Refrigerating Co v Toowoomba Foundry Pty Ltd [1954] HCA 82; (1954) 91 CLR 592, [595].

[4] See sections 6, 12, and 72 of the Act.

Section 44

1. Section 44 of the Act relevantly provides:

44Identical 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.

(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.

1. The Opponent must therefore establish the existence of an earlier filed trade mark owned by another person that is not only substantially identical with, or deceptively similar to the Trade Mark, but also is in respect of similar goods or closely related services. The details of the Opponent’s trade mark are:

   Trade Mark No: 780630

   Trade Mark: PT

   Priority Date: 9 December 1998

   Specification of Goods: Class 6: Metal screws for use with plastics

   Endorsement: Provisions of sub-section 41(5) applied.

2. My first observation in the consideration of this matter is that during the examination stage, the Trade Mark was accepted despite the existence of the above registered trade mark under the provisions of section 44(3)(a) of the Act (‘honest, concurrent use’). In other words, the Applicant produced evidence to satisfy the examiner that it was appropriate to apply those provisions and accept the Trade Mark. While I may have regard to that decision, I am in no way bound to follow it and the evidence before me may in fact differ from that provided in examination.

3. Firstly, I find that the Trade Mark is not only substantially identical[5] to the Opponent’s trade mark, but identical to it. Secondly, the Opponent’s trade mark clearly has an earlier priority date. I will now turn to whether the respective goods in the specifications are similar.[6]

   [5] Shell Co (Aust) Ltd v Esso Standard Oil (Aust) Ltd (1961) 109 CLR 407, (414-415).

   [6] ‘similar goods’ are defined as the same or of the same description as the other goods (see section 14 of the Act).

4. The respective goods as they currently stand are ‘Industrial fasteners; screws of metal’ and ‘metal screws for use with plastics’ in class 6. On the day of the hearing, the Applicant’s representative proposed to offer the following amendment to the specification of goods:

   Class 6: Self drilling industrial fasteners for the building and construction industries not for use with plastics; Self drilling screws of metal for the building and construction industries not for use with plastics

5. The amendment was not officially requested, but offered with a view to resolving the opposition in terms of the similarity of goods or alternatively whether the Trade Mark may be accepted under the provisions of section 44(3) of the Act. For current purposes, I accept the submissions made by the Opponent’s representative, namely that the proposed amendment makes little difference to the inherent similarity of the goods.

6. The specification of goods for the Opponent’s trade mark includes metal screws and there is no indication whether they are intended to include self-drilling screws or not. Similarly, the Opponent’s screws are for use with plastics, but such screws may well be used in the building and construction industries. It seems that the Applicant is attempting to differentiate its specification depending on the Opponent’s particular use to date of its trade mark. However, since there is no exclusion or restriction, I must consider the entirety of the scope of the specifications. Mason J observed in the case of Berlei Hestia Industries Ltd v Bali Co Inc. that:

   …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.[7]

   [7] (1973) 129 CLR 353 at 362; 1 ALR 443, (450).

7. From a notional consideration, this must include all metal screws for use with plastics, whether self-drilling, for use in the building industries or not. The effect of the proposed restriction ‘not for use with plastics’ may provide some differentiation in terms of the possible uses of the goods, but it does not avoid the clear similarities in the nature of the goods (they are still metal screws/fasteners) and the relevant trade channels (all the goods are likely to be sold next to each other on a hardware store shelf or in the same category on a website).  As a result, even if the specification were restricted, the goods would still be of the same description.

8. It should also be noted that the goods themselves are not highly priced items that would result in the relevant consumers paying close attention to the respective trade marks. However, even if that close inspection were to occur, deception or confusion would remain as consumers would find no difference between the identical trade marks. The relevant consumer would reasonably assume a trade connection between the two types of metal screw bearing the same trade mark. I therefore find that the goods in the respective specifications are similar and a real, tangible danger[8] of deception or confusion exists between the trade marks.

   [8] Southern Cross Refrigerating Co v Toowoomba Foundry Pty Ltd [1954] HCA 82; (1954) 91 CLR 592.

9. The ground of opposition under section 44(1) of the Act is subject to the subsection 44(3). The Applicant did not produce evidence of prior continuous use such that the Trade Mark could be registered under section 44(4). Mr Dummer initially argued that the Applicant had established honest, concurrent use under s44(3)(a), but later amended his submissions to additionally include the consideration of other circumstances under s44(3)(b). As necessary, I will address the exceptions to section 44 below.

Section 44(3): Honest Concurrent Use

1. Mr Dummer made submissions regarding the relevant standard of proof and pointed out that while the onus was on the Opponent to establish the prima facie case under section 44(1) on the balance of probabilities, section 44(3) only required the Registrar to be ‘satisfied’ of the factors in order to apply the provision. The implication was that it was a lesser standard of proof. However, I do not believe there is any distinction here. As Branson J in Blount Inc. v Registrar of Trade Marks[9] explained what is required for the Registrar to be ‘satisfied’ of a matter: 

   Where the Act requires the Registrar to be "satisfied" of any matter, it is to be understood as requiring that he or she be persuaded of the matter according to the balance of probabilities (Rejfeck v McElroy [1965] HCA 46; (1965) 112 CLR 517 at 521). That is, that the Registrar be persuaded, having given proper consideration to those factors and circumstances that the Act requires him or her to give consideration to, that such matter is more probable than not.

   [9] (1998) 40 IPR 498, (504).

2. The factors for the application of honest concurrent use under 44(3)(a) may include:

   Øthe honesty of the concurrent use;

   Øthe extent of the use in terms of time, geographic area and volume of sales;

   Øthe degree of confusion likely to ensue between the marks in question;

   Øwhether any instances of confusion have been proved; and

   Øthe relevant inconvenience that would ensue to the parties if registration were to be permitted.[10]

   [10] McCormick & Company Inc. v McCormick [2000] FCA 1335, [30].

3. The relevant date for assessing evidence of honest, concurrent use is the priority date[11], which is 16 August 2011. However, evidence of events after that date may be admitted solely for the purpose of illuminating the likelihood of confusion existing at the priority date.[12]

   [11] Hills Industries Limited v Bitek Pty Ltd (2011) FCA 94, (163).

   [12] Tivo Inc. v Vivo International Corporation Pty Ltd [2012] FCA 252, [245].

4. Before turning to the specifics of the Applicant’s evidence, I find that it is appropriate to first mention the degree of confusion likely to ensue between the marks in question. The Opponent alleges that this is a case of ‘triple identity’ which the Trade Marks Office Manual of Practice and Procedure (‘the Manual’) defines as those cases involving ‘trade marks which are identical or substantially identical, and used for the same goods/services in the same geographical area’. I agree. In such a case, the Manual requires that the evidence of honest, concurrent use produced by the Applicant should be substantial in terms of volume, duration and area of use.

5. Neal provides that the first use of the Trade Mark in Australia occurred around June 2003. If this date is accurate, it means that there has been approximately eight years of use before the priority date. However, there is little solid evidence of use this far back, apart from Mr Neal’s bald assertion to that use and an email from one of the customers stating that they have been a customer of the Applicant since 2003.

6. There is evidence in Neal that from 2003 the Applicant has been purchasing goods from a supplier in Taiwan, namely, Sunny Beam Industrial Co., Ltd. This evidence simply indicates that the Applicant purchased goods, but does not demonstrate use of the Trade Mark on those goods within the course of trade in Australia. 

7. The Applicant’s purported use of the Trade Mark from 2003 coincides with the incorporation of importing/wholesaling entity Profast Trading Pty Ltd which continued to sell fasteners under the Trade Mark as authorized by the Applicant. The Applicant supplies its products to traders within the roofing, fencing and flooring industries in Australia (e.g. Spantec Systems Pty Ltd).

8. In terms of the honesty of the adoption of the Trade Mark, I note that Neal describes the Trade Mark as an abbreviation of the abovementioned company Profast Trading Pty Ltd. Also, at paragraph 40, Mr Neal attests to the honest adoption, use and continuous use of the Trade Mark. I am satisfied on the face of it (and in the absence of evidence to the contrary) that the honesty element of section 44(3)(a) has been made out.

9. The majority of the exhibits to Neal are dated around 2015, which is four years after the priority date. As mentioned earlier, evidence of this sort is of limited assistance in demonstrating honest concurrent use at the priority date.

10. Turning to the Applicant’s annual turnover figures, I find that the information in the declaration is quite vague in nature and does not detail figures for the sale of goods under the Trade Mark in Australia. Also notably absent are any figures relating to advertising expenditure for the Trade Mark. It is open to me to infer that any advertising expenditure for targeting the Australian market has been insignificant before the priority date.

11. From the advertising material that has been produced, there are exhibited a number of annual catalogues from the Applicant. From the 2007 catalogue at exhibit PN-11, the Trade Mark does not appear in the description for the many different fasteners that the Applicant offers for sale. Having said that, the Trade Mark does appear (within a device) at the top of the brochure following the much more visually prominent name ‘Profast Trading Pty Ltd’.

12. In the other exhibited catalogues (dated after the priority date), I find it difficult to locate the Trade Mark at all. If the Trade Mark is present somewhere in those catalogues it is seemingly not promoted in the fashion one would expect of a badge of origin. I also note that in a later example of the Applicant’s self-drilling screw itself (once again dated after the priority date) the Trade Mark is shown stamped on the head. These particular products are unlikely to be sold in such a way that the head stamping would be immediately visible to the consumer. I find that the lack of visibility of the Trade Mark in its advertising material for the Australian consumer may go some way to explaining the lack of evidence of consumer confusion in the current proceedings.

13. In terms of the relative inconvenience, I note that the Opponent’s trade mark ‘PT’ and another trade mark ‘DELTA PT’ have been used to date on screws with a particular commercial function (designed for use in thermoplastics). The Opponent’s trade mark, Mr Kocherscheidt declares, has been used in Australia since 2002. He also attests to their product being sold to manufacturers and distributors in Australia, such as General Motors Holden, Hella Australia Pty Ltd, Robert Bosch (Australia) Pty Ltd and Stanley Engineered Fastening.

14. The evidence contained in Kocherscheidt has some similarities to the evidence in Neal, but Kocherscheidt provides an indication of sales in Australia under the Trade Mark and much clearer instances of use of the Opponent’s trade mark. The Opponent’s advertising material aimed specifically at Australian consumers is not significant, as it appears that the majority of the sales are to manufacturers for use in the manufacture of, amongst other things, electronic appliances and automobiles.

15. Conversely, Neal declares in particular that significant time, money and resources have gone into developing the Applicant’s website in 2013 to 2014. This may be the case, but I am not convinced that the money and resources has gone into promoting the Trade Mark.  Exhibit PN-18 to Neal, provided as support for the changes to the website, is an extract of a page from the Applicant’s website and it does not even feature the Trade Mark. From the evidence before me, the Trade Mark only appears in a reference on the ‘Compliance and Guarantee’ page of the website and on the head of the screw itself.

16. No instances of deception or confusion between the respective trade marks have been placed before me. I accept that such evidence may be difficult to come by but I need not speculate on the reasons for its absence. In the end, I am not satisfied that the extent, nature and duration of the use of the Trade Mark as demonstrated in Australia is sufficient for the provisions of honest concurrent use to applied. This is particularly so in the current circumstance where there is a high likelihood of deception or confusion likely to arise between the trade marks and the Applicant has not convinced me of any great inconvenience in the Trade Mark not becoming registered.

17. I am not satisfied that there has been honest, concurrent use of the two trade marks such that the provisions of section 44(3)(a) of the Act may be applied.

Section 44(3)(b): ‘Other Circumstances’

1. In his submissions provided after the hearing, Mr Dummer argued in the alternative that section 44(3)(b) was applicable. The ‘other circumstances’ he pointed to were the technical aspects of the Applicant’s self-drilling fasteners and screws and the commercial realities of the differences between the Opponent’s and Applicant’s industries. He emphasised that the relevant consumers for the Applicant’s products were specialist in nature.

1. Mr Dummer argued that the proposed restriction of goods[13] intended to reflect the actual use demonstrated by the evidence. However, it is evident from the brochures in Neal that the Applicant sells a wide range of industrial fasteners including bolts and nuts, washers, rivets, masonry screws, chipboard screws, self–tapping screws as well as many different sizes of self-drilling screws. It is only the Classes 3 and 4 self-drilling screws in the brochures that have the head stamped with the Trade Mark. I find that the bulk of the evidence does not support Mr Dummer’s argument regarding specialist consumer groups. It may be that building and construction industries have a particular need for self-drilling screws or metal/self-drilling industrial fasteners, but the application of these products is not limited to that consumer group and there is bound to be overlap with consumers needing screws for use with plastics.

   [13] See paragraph [15].

2. The Opponent also pointed to the relative inconvenience to the Applicant who has been trading continuously for 13 years, with no proof of confusion. I have already addressed the relative inconvenience to the parties in the discussion above, and I am not convinced from the evidence of use placed before me that refusal of the Trade Mark would have a significant impact on the trading activities of the Applicant.

3. The application of the discretion is not limited in the factors that may be taken into account. That said, the factors must be relevant to the acceptance and satisfy the Registrar that it is ‘proper’ to accept the Trade Mark in the face of the Opponent’s trade mark. However, even if I were to accept the restriction to the specification, none of the factors argued satisfy me that it is proper to apply the provisions of section 44(3)(b) and accept the Trade Mark.

4. Accordingly, I find that the ground of opposition under section 44(1) of the Act has been established.

5. A ground of opposition under the Act has been established and there is no requirement for the Registrar to address the remaining grounds of opposition pursued under sections 58 and 60. However, in the event of an appeal from this decision, those grounds (and others under the Act) are available to be pressed by the Opponent.

Decision

1. Section 55 of the Act relevantly provides:

55Decision

(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.

Note:For limitations see section 6.

1. A ground of opposition has been established under the Act. I refuse to register trade mark application no. 1442886.

Costs

1. I award costs against the Applicant under section 221 of the Act in accordance with the relevant amounts under Schedule 8 of the Trade Marks Regulations 1995.

Heath Wilson
Hearing Officer
Oppositions and Hearings
18 May 2017