Electrodomesticos Taurus S.L v Taurus Legend Pty Ltd
[2024] ATMO 104
•7 June 2024
TRADE MARKS ACT 1995
DECISION OF A DELEGATE OF THE REGISTRAR OF TRADE MARKS WITH REASONS
Re:Opposition by Electrodomesticos Taurus S.L to registration of trade mark application 2114901 (7, 11) – TAURUS LEGEND (Figurative) – in the name of Taurus Legend Pty Ltd
Delegate:
Nicholas Smith
Representation:
Opponent: Phillips Ormonde Fitzpatrick
Applicant: Payne Wu of Hiways Australia Pty Ltd
Decision:
2024 ATMO 104
Trade Marks Act 1995 (Cth) - section 52 opposition: ss 42(b), 44, 58A and 60 considered – s 44 established in respect of a subset of the goods – amendment made deleting the goods for which the s 44 ground has been established – no other grounds established – trade mark to proceed to registration
Background
This decision concerns an opposition brought by Electrodomesticos Taurus S.L (‘Opponent’) to the registration of the trade mark which is the subject of the application detailed below in the name of Taurus Legend Pty Ltd (‘Applicant’):
Application Number:
2114901
Filing Date:[1]
27 August 2020
Goods:
Class 7: tools for machine tools; electric tools; industrial pneumatic tools; mechanical tools; power tools; power operated tools; electric power tools; hydraulic power tools; power operated hand tools; power operated cutting tools; power driven hand tools; pneumatic power tools; discs for cutting for use with power tools; machine tools for greasing motor vehicles; hydraulic jacks; pneumatic jacks; pneumatic jacks for operating machines; tile cutters (electric); vehicle lifts; air compressors; air blowers; none of the foregoing being tools for riveting
Class 11: fridge-freezers(‘Applicant’s Goods’)
Endorsements:
Provisions of subsection 44(4) and/or Reg 4.15A(5) applied.
Trade Mark:
(‘Trade Mark’)
[1] Also known in this decision as the ‘relevant date’.
2. Unless otherwise indicated, any references to sections or regulations in this decision are references to sections or regulations of the Trade Marks Act 1995 (Cth) (‘Act’) or the Trade Marks Regulations 1995 (Cth) (‘Regulations’), respectively.
3. Following the advertisement of the application’s acceptance for possible registration, the Opponent filed a Notice of Intention to Oppose the registration followed by a Statement of Grounds and Particulars (‘SGP’) on 29 April 2021. The SGP raised grounds of opposition under ss 42(b), 44,[2] 58A and 60. The Applicant filed a Notice of Intention to Defend on 2 July 2021.
[2] As the Opponent relied on a protected international trade mark as the basis of this ground of opposition, the technical ground of opposition is under reg 4.15A of the Regulations rather than s 44 of the Act. However, as the terms are substantively identical for all relevant purposes and for ease of reading, I have retained the reference to s 44 in this decision. References to s 44 as considered in the present decision should be taken to read reg 4.15A and the Opponent’s Trade Mark (as defined later in the decision) should be recognised as a protected international trade mark.
Evidence
The parties filed the following evidence in this matter:
Declarant and Position
Date
Annexures or Exhibits
Evidence in support
Raul Ubric, CEO of the Opponent (‘Ubric declaration’)
18 October 2021
RU-1 to RU-15
Alexis Keating, associate with Phillips Ormonde Fitzpatrick, the Opponent’s representatives (‘Keating declaration’)
20 October 2021
AK-1
Evidence in answer
Ziwen Han, Director of the Applicant (‘Han declaration’)
26 January 2022
T-1 to T-8
Evidence in reply
None filed
5. Once the time allowed for filing evidence had ended (and after a cooling off period had been entered into and had expired without the parties reaching settlement) the parties were given an opportunity to request a hearing in this matter or a decision without hearing. On 27 March 2023 the Applicant requested an oral hearing. The matter was set down for a hearing on 12 March 2024 and the matter was allocated to me. In line with usual practice, a notice was sent to the parties on 16 January 2024 which contained a schedule for the provision of written summaries of submissions to be filed prior to the hearing. Neither party filed written submissions before the hearing. At the hearing Payne Wu of Hiways Australia Pty Ltd represented the Applicant, appearing by video conference. Also attending was Ziwen Han, the director of the Applicant. The Opponent did not attend.
I am a delegate of the Registrar of Trade Marks and I am to decide the opposition as required by s 55 which provides that, unless the proceedings are discontinued, dismissed, or have lapsed under s 54A 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.
In doing so I take account of the written record comprised of the materials mentioned in the preceding paragraphs and any oral submissions made by the parties.
The Opponent
The Opponent is a Spanish company that manufactures and supplies electrical appliances for the home, sold under the TAURUS or TAURUS PROFESSIONAL brands. This includes a small range of electrical kitchen appliances. It is part of a broader range of companies including the power tools company Casals.
The Opponent is the owner of the trade mark listed below (‘Opponent’s Trade Mark’). The goods for which the Opponent’s Trade Mark is registered are collectively referred to as the ‘Opponent’s Goods’.
Number
Trade Mark
Priority Date
Goods
2024127
(IR 1218863)
TAURUS
9 May 2019
Class 7: Electric can openers; sharpening machines; electromechanical apparatus for preparing food; kneading machines; suction machines for industrial use; garbage disposals; electric mixers; electric coffee mixers; electric mixers [machines]; electric whisks for household use; coffee grinders, other than hand-operated; calenders; shears, electric; electric kitchen machines; cutting machines; Root cutting machines; binding machines; wringing machines for clothing; shearers for animals (machines); pumps, compressors and fans; electric fruit presses for household use; washing apparatus; washing machines for clothing; dish washing machines; mixing machines; mills for household use, other than hand-operated; bread cutting machines; pepper mills other than hand-operated; electric food processors; spin driers [not heated]; electric drilling machines; electric scissors; shredders; dishwashers; steam engines; machines for cleaning of floors; dry cleaning machines [laundry]; vacuum cleaning machines; steam cleaners for household use; ironing machines; ironing presses; dust exhausting installations for cleaning purposes; machines for straightening; machines and apparatus for processing and preparing food and beverages; calenders (presses for ironing clothing); carding machines; wire stitching machines; polishing tools (electric) other than for household use; punching machines; grating machines for vegetables; shredders for industrial purposes; suction machines for industrial use; garbage disposals; mixers [machines]; electric coffee grinders; electric kitchen machines; wringing machines for clothing; washing apparatus; washing machines for clothing; electric machines for washing clothing; dishwashers; machines for sweeping, cleaning, washing and laundering; automatic distribution machines; agricultural instruments, other than hand-operated; meat choppers [machines]; electric grinders/crushers for household use; cleaning (electric machines and apparatus therefor).
Class 8: Electric steam irons; flat irons; electric flat irons; electric hair straighteners; electric hair curling irons; hairdressing utensils; utensils for cutting hair and for depilation; shears; root cutters [knives]; root cutters [hand-operated hand tools]; scissors (non-electric) for wallpaper; electric flat irons; engraving needles; hand-operated hand tools and instruments with the exception of riveting tools and instruments and apparatus for placing screws and bolts; cutlery, forks and spoons.
Class 11: Steam generating apparatus; cooking units; refrigerating rooms; drying apparatus; ventilation apparatus; sanitary installations, equipment for sanitation and for the provision of water; burners, boilers and heaters; apparatus for cooking, heating, cooling and for food and beverage processing; heating apparatus; cooking (apparatus and installations for -); Electric coffee machines; freezing and refrigeration equipment; whirlpool-jet apparatus; installations for spa baths; apparatus for whirlpools; hydromassage showers; whirlpools; filters for spa baths; water pumps for spa baths; covers especially designed for spa baths; saunas, steam baths and spa baths (installations).
The Keating declaration consists almost entirely of a print-out of pending and registered trade marks on the Australian Register of Trade Marks containing the word ‘taurus’ which have a filing date before the relevant date. For the benefit of the Opponent’s representatives in subsequent cases that they may act for a party before the Registrar, a delegate of the Registrar can have regard to the state of the Register in making their decision. It is not necessary for a party to place the Register or some part of it in evidence; reference to the Register can be made in submissions without a declaration.
The relevant claims/statements in the Ubric declaration can be summarised as follows:
· The Opponent has sold electrical appliances under the Opponent’s Trade Mark for almost 60 years and has sold these goods in Australia since 2011. This includes kitchen appliances such as food processors, sous vide machines and coffee makers, household cleaning appliances, air conditioning appliances, personal care appliances and miscellaneous home appliances. Since 2011 it has developed a significant local reputation in the Opponent’s Trade Mark.
· The Opponent’s products are sold in Australia through a number of local distributors and are distributed globally in over 80 countries.
· The Opponent has extensively marketed its electrical appliances under the Opponent’s Trade Mark. This includes advertising on the Opponent’s website and its social media pages such as Facebook and Twitter.
· The Opponent is concerned that consumers will think that goods branded with the Trade Mark will be seen as a brand extension of the Opponent’s electrical appliance lines.
11. The exhibits to the Ubric declaration display various products that display the Opponent’s Trade Mark and the TAURUS PROFESSIONAL mark. They also exhibit websites from various third party Australian sites that feature the Opponent’s products, particularly its food processor, sous vide and thermal circulator products as well as examples of the Opponent’s own websites and social media pages featuring a broader range of products.
12. The difficulty I have in assessing the evidence of the Opponent is this. The entirety of the evidence of the Opponent’s sales to Australia consists of two invoices from 2008 and 2009 for 3 products (total), the nature of which cannot be determined from the invoices themselves. I am provided with no evidence of the Opponent’s sales in Australia from 2010 onwards, no evidence of Australia-specific marketing (other than some third party websites), and no other evidence of any promotion in Australia. If a party wishes to assert a reputation in a mark in Australia it is incumbent on them to provide evidence of sales, promotion or recognition and the Ubric declaration includes no such evidence.
The Applicant
The Applicant is an Australian company that was incorporated in 2014.
The relevant claims/statements in the Han declaration can be summarised as follows:
· The Applicant has used the Trade Mark since 2016 and the declarant has traded under the TAURUS LEGEND brand since 2012. The Applicant registered the domain name <tauruslegend.com.au> in 2014 and applied the Trade Mark to its products in 2016. The Applicant makes and sells various automotive and power tools under the Trade Mark and has developed a significant local reputation.
· The Applicant, who makes power tools and hand tools, does not trade in the same business as the Opponent, that makes electrical appliances. The declarant notes that the Opponent only has a single distributor in Australia and does not provide technical support (which it provides in many other jurisdictions) in Australia.
· The Applicant has invested a substantial amount in marketing and promotion through its website, social media, Google ads and through third party retailers.
15. Many of the annexures to the Han declaration show use of the plain word mark TAURUS LEGEND or an earlier figurative mark used by the Applicant which (as neither mark is substantially identical to the Trade Mark) is not necessary to summarise in any detail. Specifically, while all 3 marks contain the words TAURUS LEGEND, the Trade Mark contains a distinctive stylised device element that is not replicated in either of the earlier marks; the TAURUS LEGEND mark being a plain word mark and the earlier figurative mark is using a very different device element.
16. In particular, Exhibit T-6 purports to show products displaying the ‘Current logo’ (aka the Trade Mark) but a number of the products appear to show use of the earlier figurative mark, not the Trade Mark. Exhibit T-6 does include undated photos of a portable car refrigerator bearing a mark that is substantially identical to the Trade Mark (the words ‘Taurus Legend’ being on the side rather than below the device element) and jumper cables. It also exhibits a sales confirmation receipt dated 8 December 2016 that I accept shows the importation of hydraulic jacks, car ramps, car wheel dollies and tile cutters in 2016 bearing a mark that is substantially identical to the Trade Mark (the only difference being the addition of the descriptive words ‘quality assured’ in plain font being below the Trade Mark). The Applicant also exhibits its current YouTube, Facebook and Twitter pages as well as confirmation that the Applicant, at the date of the declaration, supplies third party retailers. I note that the Applicant also provides no evidence of sales though I am satisfied from the evidence in Exhibit T-6 that it has sold a limited quantity of hydraulic jacks, car ramps, car wheel dollies and tile cutters bearing the Trade Mark in Australia for some period after 2016.
Grounds of Opposition, Onus and Standard of Proof
As indicated above, in the SGP the Opponent nominated grounds of opposition under ss 42(b), 44, 58A and 60. To successfully oppose the application the Opponent needs to establish one of the nominated grounds.
18. The onus of proof in an opposition rests upon the Opponent.[3] The relevant standard of proof is the ordinary civil standard based on the balance of probabilities.[4] The date at which the rights of the parties are to be determined is the relevant date, which is also the priority date for the purposes of ss 44 and 60.[5]
Discussion
Section 44
[3] Food Channel Network Pty Ltd v Television Food Network GP [2010] FCAFC 58, [32] (Keane CJ, Stone and Jagot JJ).
[4] Following Pfizer Products Inc v Karam (2006) 70 IPR 599, [6]-[26] (Gyles J), and Telstra Corporation Limited v Phone Directories Company Pty Ltd [2015] FCAFC 156, [133] (Besanko, Jagot and Edelman JJ).
[5] Southern Cross Refrigerating Co v Toowoomba Foundry Pty Ltd (1954) 91 CLR 592, 595 (Kitto J), see also s 29(1) Trade Marks Act 1995 (Cth).
The relevant provisions of s 44 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.
Section 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.
To successfully oppose the application pursuant to s 44 the Opponent must establish the requirements of s 44(1), i.e. that at least one of the trade marks upon which it relies, being a trade mark registered or sought to be registered by a person other than the Applicant:
· has a priority date which is earlier than that of the Trade Mark (‘the first requirement’);
· is substantially identical with or deceptively similar to the 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’).
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 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 mark.
The Opponent has particularised the ground of opposition in the SGP by reference to the Opponent’s Trade Mark. The Opponent’s Trade Mark has a priority date that is earlier than the priority date of the Trade Mark.
Similar goods
Section 14 relevantly provides:
14Definition of similar goods and similar services
(1)For the purposes of this Act, goods are similar to other goods:
(a)if they are the same as the other goods; or
(b)if they are of the same description as that of the other goods.
McCormick & Company Inc v McCormick summarises the legal principles applicable when determining if the goods for which the Opponent’s Trade Mark is registered are goods of the same description as the Applicant’s Goods as follows:
Whether the relevant goods are of the same description is essentially a question of fact.
The authorities establish that there are three principal factors to be considered in this regard. They are: (1) the nature of the goods, including their origin and characteristics; (2) the uses made of them, including their purpose; and (3) the trade channels through which the goods are bought and sold. As to the last-mentioned matter, it may be relevant to consider whether the goods being compared are produced by the same manufacturer or distributed through the same channels; whether they are sold in the same shops; whether they are sold to the same sort of customers; and whether those engaged in the manufacture and distribution of the goods are considered as belonging to the same trade: see In Re Jellinek’s Application (1946) 63 RPC 59 at 70-72; In Re John Crowther & Sons (Milnsbridge) Ltd’s Application (1948) 65 RPC 369 (“Crowther’s Application”) at 372; In Re Frank George Whiting’s Application (1952) 69 RPC 219 at 221; and Reckitt & Colman (Australia) Ltd v Boden [1945] HCA 12; (1945) 70 CLR 84 at 94. As the High Court stated in Southern Cross Refrigerating Co v Toowoomba Foundry Pty Ltd (1954) 91 CLR 592 (“Southern Cross”) at 606-607:
The fact that examination of the nature of the applicant’s goods may, by itself, induce an observer to conclude that they are different in character from those of an opponent, and designed to serve different purposes, is by no means conclusive. Nor is the fact that the applicant’s goods are not specified by the regulations as being within the same class of goods: see In re The Australian Wine Importers Ltd (1889) 41 Ch D 278, at p 291 and Reckitt & Colman (Australia) Ltd v Boden [1945] HCA 12; (1945) 70 CLR 84, at p 90 per Latham CJ. There may be many matters to be considered apart from the inherent character of the goods in respect of which the application is made and some indication of what matters are relevant to this inquiry was given by Romer J in In re Jellinek’s Application (1946) 63 RPC 59. Romer J thought it necessary to look beyond the nature of the goods in question and to compare not only their respective uses but also to examine the trade channels through which the commodities in question were bought and sold. Shortly after the decision in Jellinek’s Case … the Assistant-Comptroller elaborated on the observations of Romer J in the following manner: ‘In arriving at a decision upon this issue the reported cases show that I have to take account of a number of factors, including in particular the nature and characteristics of the goods, their origin, their purpose, whether they are usually produced by one and the same manufacturer or distributed by the same wholesale houses, whether they are sold in the same shops over the same counters during the same seasons and to the same class or classes of customers, and whether by those engaged in their manufacture and distribution they are regarded as belonging to the same trade. In the case of Jellinek’s Application …, Romer J classified these various factors under three heads, viz., the nature of the goods, the uses thereof, and the trade channels through which they are bought and sold. No single consideration is conclusive in itself, and it has further been emphasized that the classifications contained in the schedules to the Trade Marks Rules are not a decisive criterion as to whether or not two sets of goods are “of the same description”’: Inre an Application by John Crowther & Sons (Milnsbridge) Ltd (1948) 65 RPC 369, at p 372. Much the same considerations are evident in the observation of Dixon J (as he then was) in Reckitt & Colman (Australia) Ltd v Boden [1945] HCA 12; (1945) 70 CLR 84 when he said: ‘What forms the same description of goods must be discovered from a consideration of the course of trade or business. One factor is the use to which the two sets of goods are put. Another is whether they are commonly dealt with in the same course of trade or business. In the present case, the goods are quite different, their uses are widely separated and they are not commonly sold in the same kinds of shops or departments’ (1945) 70 CLR, at p 94.
On the one hand, goods are not necessarily of the same description simply because they are sold for human consumption and in common trade channels: see, for example, In Re J & J Colman Ltd’s Application (1929) 46 RPC 126, where mustard and semolina were held not to be goods of the same description. See also G Wood, Son & Co Ltd v McVitty & Co Pty Ltd (1964) 34 AOJP 2601 and In Re Chan Li Chai Medical Factory (HK) Ltd’s Application (1990) 19 IPR 140 at 144. On the other hand, the expression “goods of the same description” is not construed restrictively and regard is paid to the commercial context in which the goods in question are bought and sold: see Rowntree plc v Rollbits Pty Ltd (1988) 10 IPR 539 at 546 and Dinning v New Balance Athletic Shoe Inc (1992) AIPC 38,719 at 38,725. [6]
[6] [2000] FCA 1335, [17]–[19] (Kenny J).
I am satisfied that the Applicant’s Class 7 goods, being broadly categorised as hand and power tools, are similar goods to the ‘electric drilling machines, agricultural instruments, other than hand-operated and hand-operated hand tools and instruments with the exception of riveting tools and instruments and apparatus for placing screws and bolts’ for which the Opponent’s Trade Mark is registered. The Applicant’s Class 11 goods, being fridge-freezers are similar to the freezers and refrigeration equipment for which the Opponent’s Trade Mark is registered. The third element is satisfied.
Substantially identical and/or deceptively similar
I will now consider whether the Trade Mark is substantially identical to the Opponent’s Trade Mark. When considering ‘substantial identity’ in Shell Co of Australia Ltd v Esso Standard Oil (Australia) Ltd Windeyer J said:
In considering whether marks are substantially identical they should, I think, be compared side by side, their similarities and differences noted and the importance of these assessed having regard to the essential features of the registered mark and the total impression of resemblance or dissimilarity that emerges from the comparison.[7]
[7] [1963] HCA 66, [12].
The Trade Mark and the Opponent’s Trade Mark are set out below:
TAURUS
On a side-by-side comparison there are clear differences, being the distinctive device and the addition of the word LEGEND, which mean that a total impression of dissimilarity emerges from a comparison of the Opponent’s Trade Mark and the Trade Mark. I move then to consider whether the Trade Mark and Opponent’s Trade Mark are deceptively similar.
The principal authority for guidance in determining whether trade marks are deceptively similar also comes from the judgment of Windeyer J in Shell Co (Aust) Ltd v Esso Standard Oil (Aust) Ltd:
On the question of deceptive similarity a different comparison must be made from that which is necessary when substantial identity is in question. The marks are not now to be looked at side by side. The issue is not abstract similarity, but deceptive similarity. Therefore the comparison is the familiar one of trade mark law. It is between, on the one hand, the impression based on recollection of the plaintiff’s mark that persons of ordinary intelligence and memory would have; and, on the other hand, the impressions that such persons would get from the defendant’s [trade mark].[8]
[8] Ibid [13].
Justice Jacobson in Millennium & Copthorne International Limited v Kingsgate Hotel Group Pty Ltd summarised the principles of deceptive similarity with reference to the authorities as follows:
Without seeking to reformulate the various statements of principle stated in the Full Court authorities, it is sufficient for present purposes to identify the critical elements which seem to me to inform the issue of deceptive similarity in the present case. There are nine elements.
First, the judgment of likelihood of deception is a practical one. It requires an assessment of the effect of the challenged mark on the minds of potential customers: Woolworths[9] at [49]; Australian Woollen Mills[10] at 658.
Second, the question of deceptive similarity is not to be decided by a side-by-side comparison. It is to be determined by a comparison of the impression based on recollection of the opponent’s mark that persons of ordinary intelligence and memory would have, and the impression that those persons would get from the opposed trade mark: Crazy Ron’s[11] at [73]; Shell Company of Australia Ltd v Esso Standard Oil (Australia) Ltd [1963] HCA 66; (1963) 109 CLR 407 at 415 per Windeyer J.
Third, allowance must be made for imperfect recollection: Crazy Ron’s at [74].
Fourth, the effect of the spoken description must be considered: Woolworths at [49]; Crazy Ron’s at [75]; Australian Woollen Mills at 658.
Fifth, it is necessary to show a real tangible danger of deception or confusion: Woolworths at [43] and [50]; Crazy Ron’s at [76]; Southern Cross Refrigerating[12] at 594 – 595.
Sixth, 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 the two products come from the same source: Woolworths at [50]; Southern Cross Refrigerating Co at 595. This test sets a lower threshold than that which is required to establish that conduct is likely to mislead or deceive under s 18 of Schedule 2 of the Competition and Consumer Act 2010 (Cth): see McWilliam's Wines Pty Ltd v McDonald's System of Australia Pty Ltd [1980] FCA 159; (1980) 33 ALR 394 at 398 per Smithers J.
Seventh, all surrounding circumstances must be taken into consideration. The circumstances include those in which the marks will be used, and in which the goods or services will be bought and sold, as well as the character of the probable acquirers of the goods and services: Woolworths at [50]; Crazy Ron’s at [86] – [89]; Southern Cross Refrigerating at 595.
Eighth, the question of whether there is a likelihood of confusion is not to be answered by reference to the manner in which a party has used the mark, but by reference to what an applicant can do. That is to say, the use to which it can properly put the mark if registration is obtained: Woolworths at [50]; Berlei Hestia Industries Ltd v The Bali Company Inc [1973] HCA 43; (1973) 129 CLR 353 at 362 per Mason J.
Ninth, if a registered trade mark includes words which can be regarded as an “essential feature” of the mark, another mark that incorporates those words may cause a tangible danger of deception or confusion by reason of consumers retaining an imperfect recollection of those words: Crazy Ron’s at [79]. However, care must be taken to not too readily characterise words in a composite trade mark as an ‘essential feature’ because to do so may effectively convert a composite mark into something different: Crazy Ron’s at [100].[13]
[9] Registrar of Trade Marks v Woolworths Ltd [1999] FCAFC 1020.
[10] Australian Woollen Mills Ltd v FS Walton & Co Ltd [1937] HCA 51; (1937) 58 CLR 641.
[11] Crazy Ron’s Communications Pty Ltd v Mobileworld Pty Ltd [2004] FCAFC 196; (2004) 209 ALR 1.
[12] Southern Cross Refrigerating Co v Toowoomba Foundry Pty Ltd (1954) 91 CLR 592.
[13] [2012] FCA 1022, [37]-[46].
In the recent High Court case of Self Care IP Holdings Pty Ltd v Allergan Australia Pty Ltd, the Court noted the following:[14]
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"[15]. 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[16], 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[17]. 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.[18]
[14] Self Care IP Holdings Pty Ltd v Allergan Australia Pty Ltd [2023] HCA 8, [33] (Kiefel CJ, Gageler, Gordon, Edelman and Gleeson JJ).
[15] 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].
[16] Act, s 68.
[17] New South Wales Dairy [1989] FCA 124; (1989) 86 ALR 549 at 589.
[18] Swancom (2022) 168 IPR 42 at 59 [89]. See also Henschke (2000) 52 IPR 42 at 62 [44].
As stated above, for the purposes of considering deceptive similarity, the reputation of the Opponent’s Trade Mark is not a relevant factor.[19]
[19] See Swancom Pty Ltd v The Jazz Corner Hotel Pty Ltd [2022] FCAFC 157, [93] (Yates, Abraham and Rofe JJ) and, albeit in the s 120(1) context Self Care IP Holdings Pty Ltd v Allergan Australia Pty Ltd [2023] HCA 8, [49] (Kiefel CJ, Gageler, Gordon, Edelman and Gleeson JJ).
In the present case the Trade Mark wholly incorporates the Opponent’s Trade Mark along with the addition of the word ‘legend’, some stylisation and a device consisting of a bull’s head and a gearwheel. Mere incorporation of the Opponent’s Trade Mark is not sufficient to make the trade marks deceptively similar. In some cases, a trade mark conveys an overall conceptual meaning sufficiently different from another trade mark which is contained within it, such that the trade marks are not deceptively similar. This was found to be the case in, for example, REBELLION vs SOUL REBELLION[20] and JOCKEY vs THROTTLE JOCKEY.[21]
[20] Kingsley v Scott [2011] ATMO 10.
[21] Jockey International Inc v Wilkinson [2010] ATMO 22.
In the present case, the Trade Mark consists of the ‘taurus’ element in minor stylisation, along with the additional laudatory word ‘legend’ and the bull’s head device. Given that the word ‘taurus’ comes from the Latin word for bull and the association between the bull and the Taurus star sign I consider this case has some similarities to E. & J. Gallo Winery v Lion Nathan Australia Pty Limited[22] where the device element simply illustrates the word (BAREFOOT paired with an image of a bare foot). In this case the device element simply reinforces the concept of the bull, which is shared between the Trade Mark and the Opponent’s Trade Mark (noting the nature of the goods, the gear device does not provide a significant element of distinction).
[22] [2008] FCA 934 This matter was the subject of an appeal to the Full Federal Court, who agreed with the primary judge’s finding on the issue of deceptive similarity, see E & J Gallo Winery v Lion Nathan Australia Pty Limited [2009] FCAFC 27 and an appeal to the High Court on an unrelated point.
The term ‘legend’ while creating some level of visual and aural distinction, is essentially laudatory. In the context of the shared goods, where the term ‘taurus’ is highly distinctive, consumers will naturally focus more on the ‘taurus’ element. This is particularly so given it is the lead element of the Trade Mark. I consider that in the present case, such as in E. & J. Gallo Winery v Lion Nathan Australia Pty Limited,[23] the additions of the word ‘legend’ and the device elements do not change the idea and impression of the mark as a whole when considering the goods offered under the Trade Mark. Given the nature of the respective goods, each mark conveys the same conceptual meaning.
[23] [2008] FCA 934 This matter was the subject of an appeal to the Full Federal Court, who agreed with the primary judge’s finding on the issue of deceptive similarity, see E & J Gallo Winery v Lion Nathan Australia Pty Limited [2009] FCAFC 27 and an appeal to the High Court on an unrelated point.
36. I find that the Trade Mark is deceptively similar to the Opponent’s Trade Mark and the requirements under s 44(1) are satisfied. It is then necessary to consider the application of s 44 (3) and (4) of the Act.
Subsection 44(4): prior continuous use
37. Subsection 44(4) gives the Applicant the option of overcoming a finding under s 44(1) through the provision of evidence showing that it continuously used the Trade Mark for a period beginning before the priority date for the registration of the other trade mark in respect of the similar goods or closely related services.
38. The priority date for the registration of the Opponent’s Trade Mark is 9 May 2019. While I note my concerns with the quality of the Applicant’s evidence in paragraph 8 above, on balance I am satisfied that the Applicant has used the Trade Mark since 2016 and under that mark has imported and sold a limited quantity of hydraulic jacks, car ramps, car wheel dollies and tile cutters. In the absence of more detailed evidence of importation and sale, such as dated sales receipts or purchase orders, I am not satisfied that the Applicant has established prior use of the Trade Mark for any of the other Applicant’s Goods. While there is some evidence which suggests the Applicant may be offering other goods for sale in Australia, such evidence either predates the date at which the Applicant adopted the Trade Mark (prior branding not being substantially identical to the Trade Mark) or (such as the evidence of the fridge-freezers) is undated or postdates the relevant date and thus do not show use for s 44(4) purposes.
39. I am satisfied that the Applicant has established prior continuous use of the Trade Mark for hydraulic jacks, tile cutters (electric) and vehicle lifts; none of the foregoing being tools for riveting (‘Remaining Goods’). I do not consider that s 44(3) of the Act should be applied with respect to any other Applicant’s Goods. There is no evidence supporting honest concurrent use of the Trade Mark in respect of those goods nor are there any other circumstances that would provide a basis to allow the Trade Mark to proceed to registration.
40. I find the s 44 ground to have been established for in respect of a subset of the Applicant’s Goods. The s 44 ground has not been established (and hence the remaining grounds of opposition will need to be considered with respect to) for the Remaining Goods.
Section 58A
41. Section 58A is reproduced below:
Section 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 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.
42. The ground based on s 58A was particularised in the SGP as follows:
The Opponent is the owner of the Prior Trade Mark, being the TAURUS mark (trade mark 2024127). The Opponent first used the Prior Trade Mark in at least 2011, including in relation to food processors, being similar goods to the Applicant’s Goods. The use of the Prior Trade Mark has been continuous since at least 2011 and such use is earlier than the priority date of the Opposed Trade Mark and the first use of the Opposed Trade Mark. Further, the Prior Trade Mark is either substantially identical with, or deceptively similar to, the Opposed Trade Mark.
43. I find that the Opponent has failed to establish the ground of opposition pursuant to s 58A. The Opponent’s evidence, taken at its highest, refers to use of the Opponent’s Trade Mark for kitchen appliances such as food processors, sous vide machines and coffee makers, household cleaning appliances, air conditioning appliances, personal care appliances and miscellaneous home appliances. These are not hydraulic jacks, tile cutters (electric) and vehicle lifts which are of a different nature, used for a different purpose, and sold through different trade channels from the Opponent’s home electrical appliances.
Section 60
Section 60 is reproduced below:
Section 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.
To establish a ground of opposition under s 60, an opponent must demonstrate that as at the relevant date there was another trade mark which had acquired a reputation in Australia amongst a significant or substantial number of persons in the relevant market such that use of the trade mark would be likely to deceive or cause confusion.
Some of the relevant principles of s 60 are summarised in the recent case of Ragopika Pty Ltd v Padmasingh Isaac trading as Aachi Spices and Foods as follows:
The first of these elements calls for a factual inquiry into the extent and nature of the reputation that had been acquired by the existing trade mark – here, the Aachi mark – in Australia. The second element calls for an assessment of the likelihood of deception or confusion arising from use of the new trade mark as a consequence of that reputation.
The existing trade mark need not even be registered for s 60 to be engaged (Fry Consulting Pty Ltd v Sports Warehouse Inc [2012] FCA 81; 201 FCR 565 (Fry Consulting) at [121] (Dodds-Streeton J); Qantas Airways Ltd v Edwards [2016] FCA 729 (Qantas Airways) at [144] (Yates J)). The classes of goods and/or services in respect of which the existing trade mark has been used, and those in which the new trade mark is intended to be used, may be very relevant to the likelihood of confusion (see Qantas Airways at [143] and GAIN Capital UK Limited v Citigroup Inc (No 4) [2017] FCA 519 at [148] (Markovic J)), but the fact that the classes are not the same cannot be determinative. The reputation of the existing trade mark need not relate specifically to the goods or services that are the subject of the proposed application (Qantas Airways at [143]; Rodney Jane Racing Pty Ltd v Monster Energy Company [2019] FCA 923 (Rodney Jane Racing) at [87] (O’Bryan J)). The question is simply whether the reputation of the existing trade mark in Australia is such that the use of the new trade mark is “likely” to be deceptive or cause confusion.[24]
[24] [2023] FCA 487, [20]-[21] (Kennett J)
In McCormick & Co Inc v McCormick,[25] Kenny J considered what is intended by the word ‘reputation’ as used in s 60. Her Honour consulted the Macquarie Dictionary and on the basis of the definition provided concluded that it was ‘the recognition of the [trade mark] by the public generally’.[26] Her Honour quoted with approval the following words of Lockhart J in Re ConAgra Inc v McCain Foods (Aust) Pty Ltd:
[25] [2000] FCA 1335.
[26] Ibid, [81].
[R]eputation within the jurisdiction may be proved by a variety of means including advertisements on television or radio, or in magazines and newspapers within the forum. It may be established by showing constant travel of people between other countries and the forum and that people within the forum, (whether residents there or persons simply visiting there from other countries) are exposed to the goods of the overseas owner …[27]
[27] (1992) 33 FCR 302, 343.
On the subject of reputation, Kenny J also referred to Hugo Boss AG v Jackson International Trading Co Kurt D Bruhl GmbH & Co KG, where the Registrar’s delegate observed:
[I]t is true that the assessment of the reputation of a trade mark goes far beyond mere examination of sales or turnover of goods sold under that trade mark and contemplation of the advertising and promotional figures.
As regards a trade mark, its reputation derives both from the quantum of sales under that mark and also the esteem, or image, projected by that trade mark. The quantum of sales, advertising and promotion contributes to the ‘recognition’ component of the trade mark’s reputation. The credit, image and values projected by a trade mark attaches to the ‘esteem’ component of the reputation as do the public events and other trader’s marks with which [the] owner of the trade marks in question chooses to associate the trade marks via sponsorships, cross-promotions, ‘contra deals’ and so forth.
It follows that a trade mark used in relation to goods with comparatively low sales may have a high and strong reputation by virtue of the high credit or esteem in which it is held or, conversely, that a trade mark which has very high sales may have a strong reputation notwithstanding the lack of esteem that attaches to it. The particular popular images, or sets of values, that attach to the trade mark are also, therefore, important parts of the reputation of the trade mark and may be as strong an associative force in the minds of the public as the association of the trade marks with the goods or services themselves.[28]
[28] (1999) 47 IPR 423, 436.
As stated above, in assessing reputation under s 60, what constitutes a significant or substantial number of persons in the relevant market must be considered. The case of Le Cordon Bleu BV v Cordon Bleu International Ltee[29] was decided under s 28(a) of the (now repealed) Trade Marks Act 1955 (Cth). That provision did not refer to ‘reputation’ at all, only that use of the impugned trade mark would be ‘likely to deceive or cause confusion’. Nevertheless the words of Heerey J provide some guidance:
[29] [2000] FCA 1587.
What is ‘significant’ or ‘substantial’ will depend on the nature of the goods or services in question. For some highly specialised products, awareness among a few thousand persons, or even less, might be sufficient … We are here concerned with foodstuffs sold in supermarkets, delicatessens, milk bars and other retail outlets. The relevant market is virtually the entire Australian population from early teenage years onwards.[30]
[30] Ibid [91] (emphasis in original). Justice Heerey’s decision was overturned on appeal to the Full Federal Court, although not on the point quoted. Indeed the court specifically noted that his approach contained no error; see Renaud Cointreau v Cordon Bleu International Ltee [2001] FCA 1170, [75] (Moore, Tamberlin and Goldberg JJ).
The Opponent has particularised the ground of opposition in the SGP in the manner set out below:
The Opponent has used the sign “TAURUS” as a trade mark in Australia since at least 2011 and has acquired a significant reputation in that mark, including in relation to food processors. In light of that reputation, use of the Opposed Trade Mark would be likely to deceive or cause confusion as to the origin of the claimed goods.
I refer to paragraph 12 above where I note my concern with the evidence provided by the Opponent in this matter. The Opponent may have sold products in Australia since 2011 but provides no evidence of sales, advertising expenditure or third-party recognition or esteem in Australia. Indeed, the Opponent, other than noting that it has traded for a significant time in a large variety of markets, provides no evidence of any sales, advertising expenditure or third-party recognition or esteem globally. Given the nature of the goods particularised by the Opponent, which are consumer products with a broad market, I am not satisfied that the Opponent’s Trade Mark had acquired a reputation in Australia at the relevant date, sufficient for the requirements under s 60(a).
I find that the Opponent has failed to establish the ground of opposition pursuant to s 60.
Section 42
Section 42 is reproduced below:
42 - Trade mark scandalous or its use contrary to law
An application for the registration of a trade mark must be rejected if:
(a) the trade mark contains or consists of scandalous matter; or
(b) its use would be contrary to law.The Opponent pressed this ground of opposition solely on the basis that the use of the Trade Mark would be contrary to law (s 42(b)). The onus is on the Opponent to establish that use of the Trade Mark by the Applicant would be, rather than could be, contrary to law on the balance of probabilities.[31] The relevant time for assessing whether an application is contrary to law is at the relevant date but ‘looking forward to prospective conduct after registration’.[32]
[31] Advantage-Rent-a-Car Inc v Advantage Car Rental Pty Ltd [2001] FCA 683, [28] (Madgwick J).
[32] Time Warner Entertainment Co LP v Stepsam Investments Pty Ltd [2004] 59 IPR 343, 353 (Wilcox J).
The Opponent particularised the ground of opposition in the SGP as follows:
The Opponent has used the sign “TAURUS” as a trade mark in Australia since at least 2011 and has acquired a significant reputation in that mark, including in relation to food processors. In light of that reputation, use of the Opposed Trade Mark would be likely to deceive or mislead and amount to a false or misleading representation in breach sections 18 and 29 of the Australian Consumer Law and would constitute passing off at common law.
As previously stated the Opponent has failed to establish a ground of opposition under s 60. The test for misleading or deceptive conduct under s 18 of the Australian Consumer Law (‘ACL’) is a more stringent one than that for deception or confusion under s 60,[33] and consequently I find that the Opponent has also failed to establish that the Applicant’s use of the Trade Mark would be contrary to s 18 of the ACL.
[33] See, e.g.: Ownit Homes Pty Ltd v Ownit Conveyancing Pty Ltd [2005] ATMO 47, [36] (Hearing Officer Williams); Parkdale Custom Built Furniture Pty Ltd v Puxu Pty Ltd (1982) 149 CLR 191, 198 (Gibbs CJ).
Paraphrasing the statement of the Registrar’s delegate in A G Professional Hair Care Products Ltd v Geagroup Invest SRL,[34] where a trade mark does not run afoul of s 18 of the ACL, neither will it run afoul of s 29 of the ACL. In Pacific Publications Pty Ltd v IPC Media Pty Ltd, Justice Beaumont considered — in connection with the superseded Trade Practices Act1974 (Cth) (‘TPA’) — that ‘the Court’s conclusion on s 52 would necessarily carry with it a conclusion on s 53(c) and (d)’.[35] Sections 52 and 53 of the TPA were, respectively, the equivalent provisions to ss 18 and 29 of the ACL. Justice Hill in Re Equity Access Pty Ltd v Westpac Banking Corporation also addressed the relationship between s 52 of the TPA and passing off. His Honour considered that:
[34] [2014] ATMO 65, [50] (Hearing Officer Wilson).
[35] [2003] FCA 104, [107] (Beaumont J).
The scope for the operation of s s.52 will thus be broader than that involved in the tort of passing off so that in a case such as the present where the claim is for the protection of the reputation in a name against the use of that name by another, failure to succeed under s s.52 or s.53 will invariably mean that proceedings for passing off would likewise fail.[36]
[36] [1989] FCA 506, [40] (citations omitted).
For these reasons I am not satisfied that use of the Trade Mark by the Applicant would be contrary to law. Therefore, the Opponent has failed to establish the ground of opposition under s 42(b).
Resolution of Opposition
In Apple Inc. v Registrar of Trade Marks, Yates J stated that:
My finding that the application for registration of APP STORE for the designated services in Class 35 must be rejected determines the fate of the application as a whole. This is because there are no separate applications for registration of the mark for the designated services Classes 38 and 42. There is but one application covering registration of the mark for all the services that have been specified. If the application fails in one respect, it fails as a whole. In these circumstances, is not necessary for me to proceed to determine the registrability of APP STORE for the designated services in Class 38 or Class 42.[37]
[37] [2014] FCA 1304, [232].
In circumstances where an opposition has been established in respect of some, but not all of an applicant’s goods or services the Registrar may proceed to reject the application in its entirety, under the principles outlined above, but also has a discretion to offer an amendment to an applicant, allowing it to amend the application to remove goods and services for which a ground of opposition has been established.
I consider it reasonable to offer an amendment to the Applicant’s Goods to allow the Trade Mark to proceed to registration for the subset of Applicant’s Goods for which prior usage has been established, namely the Remaining Goods.
On 3 June 2024 I provided the Applicant with an opportunity to amend its application for the Trade Mark to the Remaining Goods which it did on 5 June 2024. The amendment has now been made. On that basis I find that the Opposition under s 44 has not been established for the revised set of goods for which the Trade Mark is sought to be registered.
Decision and Costs
Following the amendment referred to in the paragraphs above I find that the Opponent has failed to establish any of the grounds of opposition it nominated in the SGP. Trade mark number 2114901 may proceed to registration not less than one month from the date of this decision. If the Registrar has been served with a notice of appeal before that time, 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.
Both parties have sought an award of costs in their favour. As each party has had a degree of success I make no order as to costs.
Nicholas Smith
Hearing Officer
Delegate of the Registrar of Trade Marks
7 June 2024
0
36
0