Enel SpA v Rex Energy Pty Ltd
[2024] ATMO 7
•12 January 2024
TRADE MARKS ACT 1995
DECISION OF A DELEGATE OF THE REGISTRAR OF TRADE MARKS WITH REASONS
Re:Opposition by ENEL SpA to registration of trade mark application number 2152010 (classes 9 and 39) - X (stylised) - in the name of Rex Energy Pty Ltd
Delegate: | Benjamin Goldsworthy |
Representation: | Opponent: Spruson & Ferguson Applicant: Sophie Yates of Counsel instructed by Nicole Murdoch of EAGLEGATE Pty Ltd |
Decision: | 2024 ATMO 7 Trade Marks Act 1995 (Cth) – opposition under section 52 – grounds under ss 42(b), 58, 60 62A and reg 4.15A of the Trade Mark Regulations 1995 (Cth) pursued – no grounds established – trade mark to proceed to registration. |
Background
On 28 January 2021 (‘Relevant Date’) an application was filed under the Trade Marks Act 1995 (Cth)[1] for a trade mark in the name of Rex Energy Pty Ltd (‘Applicant’) with the following details:
[1] Unless specified otherwise, a reference in these reasons to a section is a reference to such in the Trade Marks Act 1995 (Cth) and a reference to a regulation is a reference to such in the Trade Marks Regulations 1995 (Cth).
Trade mark:
(‘Trade Mark’)
Goods and services: Class 9: Apparatus for managing energy supplies; Devices for measuring energy; Electrical apparatus (other than generators) for use in energy supply; Energy control devices; Apparatus and instruments for controlling electricity; Apparatus and instruments for regulating electricity; Apparatus and instruments for switching electricity; Apparatus for accumulating electricity; Apparatus for electricity distribution; Apparatus for electricity supply; Electricity boxes for electrical installations; Electricity metering apparatus; Electricity transformers; Inverters (electricity); Panels for the control of electricity; Apparatus for controlling the supply of electrical current; Electrical apparatus for analysis (other than for medical use); Electrical distributors; Electrical inverters; Electrical meters; Power supply devices (batteries); Power supply devices (rectifiers); Power supply devices (transformers); Power supply units (transformers); Switching power supply apparatus; Power controlling apparatus (electric); Power distribution apparatus for use in electrical systems; Power distributors (electrical); Power dividers (electric); Power meters; Power regulating apparatus; Power units (transformers)
(‘Applicant’s Goods’)
Class 39: Electricity distribution; Electricity storage; Electricity supply services; Supply of electricity; Transmission of electricity
(‘Applicant’s Services’)
The Trade Mark was examined under s 31 and acceptance was advertised on 29 June 2021. On 27 August 2021 Enel SpA (‘Opponent’) filed a Notice of Intention to Oppose and on 24 September 2021 filed its Statement of Grounds and Particulars (‘SGP’). On 14 October 2021 the Applicant filed its Notice of Intention to Defend.
The following evidence was filed by the parties:
- Opponent’s Evidence in Support (‘EIS’) being a declaration of Elisabetta Mancuso, Head of Industrial Law and Property Rights Legal Assistance at the Opponent, dated 14 January 2022, including Annexures EM-1 to EM-17 and Confidential Annexures EM-13 and EM-14 (‘Mancuso-1’).
- Applicant’s Evidence in Answer (‘EIA’) consisting of a declaration of Andrew Laing, Chief Operating Officer of the Applicant, dated 23 June 2022 with Annexures AL-1 to AL-19 (‘Laing’).
- Opponent’s Evidence in Reply (‘EIR’) consisting of a declaration of Elisabetta Mancuso, dated 23 August 2022 Annexures EM-A to EM-N (‘Mancuso-2’).
On 29 September 2022 both parties separately requested to be heard by video conference. On 21 September 2023 the Opponent advised by letter that it would not be attending the hearing and on 4 October 2023 that it would not be filing any written submissions. On 10 October 2023 the Applicant filed its written outline of submissions. I heard the matter on 17 October 2023. Sophie Yates of Counsel instructed by Nicole Murdoch of EAGLEGATE Pty Ltd appeared on behalf of the Applicant. Also present was Scott Graham from the Applicant. I have decided the matter as a delegate of the Registrar of Trade Marks.
Evidence
EIS
Mancuso-1 declares that, ‘the Opponent is an Italian multinational manufacturer and distributor of electricity and gas operating in 30 countries (including Australia)’ and has a focus on ‘production, distribution and supply of energy’.[2] Mancuso-1 states that, ‘[t]he Opponent's operations in Australia are primarily in the renewable energy sector, including the construction of the country's largest photovoltaic plant and through the provision of demand responses and energy efficiency goods and services.’[3] Mancuso-1 states that the Opponent operates three solar plants in Australia.[4] Two plants have operated since 2018 and the other from 2019. Construction of a ‘Cohuna solar project’ commenced in November 2019. The Opponent is involved in projects related to renewable energy in Victoria, including the provision of smart lighting services to the town of Cohuna and ‘the generation of energy and green certificates across [Victoria]’.[5]
[2] Mancuso-1, [9].
[3] Mancuso-1, [15].
[4] Mancuso-1, [15].
[5] Mancuso-1, [19].
Mancuso-1 introduces the Opponent’s registered trade mark 1966383, which I extract below:[6]
Priority date: 24 November 2017 (convention)
Trade mark: (‘Earlier Trade Mark’)
Endorsements: Colour Claimed: PURPLE
Goods and services: see Schedule 1 to these reasons (‘Opponent’s Goods and Opponent’s Services’)
[6] Mancuso-1, [21].
Mancuso-1 adds that the Opponent has had extensive use of the ENEL X word mark and the Earlier Trade Mark in Australia and worldwide. Mancuso-1 also asserts extensive use of the ‘x’ element of the Earlier Trade Mark, which I reproduce below:[7]
(‘X Device’)
[7] Mancuso-1, [47].
I summarise relevant annexures to Mancuso-1 from here. These include undated screen captures from the Opponent’s website overseas ( and in Australia ( and press releases. Annexure EM-6 is a video showing the X Device. Mancuso-1 states the video relates to ‘DER.O’, which is ‘a scalable management software system’.[9] Annexure EM-7 is an undated brochure showing the Earlier Trade Mark and Enel X word mark ‘for the business division of the Opponent’ in relation to advisory services relating to energy and energy management.[10] Various undated extracts of the Opponent’s Australian website are also provided at Annexures EM-8 and EM-16. Annexure EM-9 is a brochure dated in 2019 which shows the Enel X word mark, Earlier Trade Mark and the X Device in relation to advisory services relating to energy and energy management. Annexure EM-10 is titled as a ‘fact sheet’ which is declared to have, ‘been available on the [Opponent’s website] since 2019’ showing the Earlier Trade Mark and the Enel X word mark. Annexure EM-11 is a video showing use of the Earlier Trade Mark and a trade mark consisting solely of the X Device in relation to ‘energy solutions’. Confidential Annexure EM-13 is a table outlining the Opponent’s Australian revenue generated through the provision of goods and services, ‘associated with the [Earlier Trade Mark], [ENEL X word mark] and X Device for the period 2019 to 2021 (YTD)’.[11] Confidential Annexure EM-13 also provides, ‘Marketing and Advertising expenditure in connection with the [Earlier Trade Mark], [ENEL X word mark] and X Device for the period 2019 to 2021 (YTD) in Australia’.[12] Confidential Annexure EM-14 shows six invoices dated between 2019 and 2021, displaying the Earlier Trade Mark. Annexure EM-17 is an article dated 10 December 2021 on the website ‘Solar Directory’ discussing the Applicant’s activities. I otherwise discuss the EIS where relevant in these written reasons.
[8] Mancuso-1, Annexures EM-2 and EM-3.
[9] Mancuso-1, [31] and Annexure EM-10.
[10] Mancuso-1, [34]
[11] Mancuso-1, [40]
[12] Mancuso-1, [40]
EIA
Laing declares that the Applicant was incorporated on 17 June 2020 and is a Queensland-based supplier of turnkey renewable energy solutions. Laing declares the Applicant adopted the Trade Mark around December 2020. It describes the Applicant’s activities concerning its goods, including contracts for installation of its goods. The Applicant promotes its goods via social media and field representatives. The Applicant operates a facility, a website and social media. I need not further summarise Laing here, but I refer to it throughout these reasons where relevant.
EIR
Mancuso-2 expresses disagreement with assertions about the evidence in Laing and discusses the corporate structures and relationships of the Applicant and its related entities. Annexures to Mancuso-2 also concern the corporate structures of the Applicant and its related entities.
Grounds and onus
The Opponent has the onus to establish at least one ground of opposition for all or any of the Applicant’s Goods and Applicant’s Services.[13] The standard of proof is that of the balance of probabilities.[14]
[13] Food Channel Network Pty Ltd v Television Food Network GP [2010] FCAFC 58, [32] (Keane CJ, Stone and Jagot JJ).
[14] Telstra Corporation Ltd v Phone Directories Co Pty Ltd [2015] FCAFC 156, [133] (Besanko, Jagot and Edelman JJ).
The Opponent by its SGP nominated ss 42(b), 58, 60 and 62A and reg 4.15A as grounds of opposition.
Preliminary matter
As can be seen above in my discussion of the EIS, the Opponent has asserted three prior trade marks for consideration throughout its evidence. That is, the Earlier Trade Mark, the Enel X word mark and the X Device. The Applicant submits that the Opponent ‘cannot rely on’ the Enel X word mark and the X Device in this opposition as it did not raise them in the SGP. The Applicant’s submissions are inconsistent with its EIA, where it engages with and critiques aspects of the EIS relating to those two marks. As such I consider this aspect of the opposition to have been ‘fairly contested’,[15] and have accordingly addressed the Opponent’s evidence in relation to those two trade marks, where relevant, below.
Consideration
[15] Halal Certification Authority Pty Limited v Flujo Sanguineo Holdings Pty Limited [2023] FCAFC 175, [141]-[144] (Nicholas, Burley and Cheeseman JJ).
Regulation 4.15A
Regulation 4.15A relevantly provides:
4.15A Grounds for rejection—trade mark identical etc to trade mark protected under Madrid Protocol
(1) For section 189A of the Act, and subject to subregulations (3) and (5), 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 protected international trade mark; or
(ii) a trade mark in respect of which the Registrar has received notification of an IRDA;
held by another person in respect of similar goods or closely related services; 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 other trade mark in respect of the similar goods or closely related services.
Note: Under subsection 189A(3) of the Act, regulations made for the purposes of section 189A:
(a) may be inconsistent with the Act; and
(b) prevail over the Act (including any other regulations or other instruments made under the Act), to the extent of any inconsistency.
Division 2 of Part 4 of the Act includes provisions relating to the grounds on which an application for the registration of a trade mark must be rejected.
(2) For section 189A of the Act, and subject to subregulations (3) and (5), an application for the registration of a trade mark (applicant’s trade mark) in respect of services (applicant’s services) must be rejected if:
(a) the applicant’s trade mark is substantially identical with, or deceptively similar to:
(i) a protected international trade mark; or
(ii) a trade mark in respect of which the Registrar has received notification of an IRDA;
held by another person in respect of similar services or closely related goods; and
(b) the priority date for the registration of the applicant’s trade mark in respect of the applicant’s services is not earlier than the priority date for the other trade mark in respect of the similar services or closely related goods.
Note: Under subsection 189A(3) of the Act, regulations made for the purposes of section 189A:
(a) may be inconsistent with the Act; and
(b) prevail over the Act (including any other regulations or other instruments made under the Act), to the extent of any inconsistency.
Division 2 of Part 4 of the Act includes provisions relating to the grounds on which an application for the registration of a trade mark must be rejected.
The Opponent relies on the Earlier Trade Mark for this ground of opposition. The Earlier Trade Mark has a priority date which is earlier than the Relevant Date and it is in the name of a person other than the Applicant. The remaining points of contention are (1) whether the Applicant’s Goods or Applicant’s Services are similar or closely related to the Opponent’s Goods and Opponent’s Services; and (2) whether the Trade Mark is substantially identical with, or deceptively similar to, the Earlier Trade Mark.
Comparison of goods and services
I next consider whether the Applicant’s Goods or the Applicant’s Services are ‘similar’ to any of the Opponent’s Goods and Opponent’s Services. The word ‘similar’ is defined as (a) the same as the goods of the Earlier Trade Mark (b) or of the same description as the goods of the Earlier Trade Mark.[16] The word ‘similar’ is also defined as (a) the same as services of the Earlier Trade Mark (b) or services of the same description as the services of the Earlier Trade Mark.[17]
[16] Section 14(1).
[17] Section 14(2).
All of the Applicant’s Goods in class 9 are plainly included in the Opponent’s Goods in class 9. Therefore, they are the same as those of the Earlier Trade Mark. I also consider all of the Applicant’s Services to be of the same description as the Opponent’s technical design and planning of power stations; development of energy and power management systems; development of energy and power management systems in class 42.
Therefore, all of the Applicant’s Goods and Applicant’s Services are similar to those of the Earlier Trade Mark.
Substantially identical
The test for whether two trade marks are substantially identical is expounded in Shell Co (Aust) Ltd v Esso Standard Oil (Aust) Ltd:
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.[18]
[18] [1963] HCA 66, [12] (Windeyer J).
Comparing the Trade Mark and the Earlier Trade Mark side by side there is a single similarity in the presence of what appears to be a letter ‘x’. The Trade Mark consists solely of a stylised letter ‘x’. The letter x in each trade mark is different in stylisation and fonts. The Earlier Trade Mark contains an addition being the word ‘enel’, which is the leading and essential feature, whilst the Trade Mark does not. These differences are of significance. I am not satisfied that a total impression of resemblance emerges from a side by side comparison of the trade marks. Therefore, I do not consider the Trade Mark to be substantially identical with the Earlier Trade Mark.
Deceptive similarity
Section 10 provides that a trade mark is deceptively similar to another trade mark if it ‘so nearly resembles that other trade mark that it is likely to deceive or cause confusion’. I must compare the respective trade marks as wholes,[19] with regard to essential or distinguishing features,[20] and consider them visually and aurally, and in the context of the relevant surrounding circumstances.[21] Also of importance is the effect and meaning of the trade marks,[22] especially their effect or impression produced on the mind of ordinary consumers.[23] I should account for imperfect recollection of those ordinary consumers and the addition of even a single word can in the right circumstances relevantly differentiate one remembered mark from another in the minds of those consumers.[24] Ultimately, what is required is a real tangible danger of confusion.[25] That is, ‘a real likelihood that some people will wonder or be left in doubt about whether the two sets of products … come from the same source’.[26] Actual instances of deception or confusion are of great weight though not required.[27]
[19] Torpedoes Sportswear Pty Limited v Thorpedo Enterprises Pty Limited [2003] FCA 901, [78] (Bennett J).
[20] Crazy Ron’s Communications v Mobileworld Communications [2004] FCAFC 196, [77]-[88] (Moore, Sackville and Emmett JJ).
[21] New South Wales Dairy Corporation v Murray Goulburn Co-operative Co Ltd (1989) 86 ALR 549, 589 (Gummow J).
[22] Self Care IP Holdings Pty Ltd v Allergan Australia Pty Ltd [2023] HCA 8, [51] (Kiefel CJ, Gageler, Gordon, Edelman and Gleeson JJ) (‘Self Care’).
[23] Ibid [51] and [67], citing Australian Woollen Mills Ltd v F S Walton & Co Ltd (1937) 58 CLR 641 (Dixon and McTiernan JJ) (‘Australian Woollen Mills’).
[24] Jockey International Inc v Darren Wilkinson [2010] ATMO 22 (Hearing Officer Spence).
[25] Southern Cross Refrigerating Co v Toowoomba Foundry Pty Ltd (1954) 91 CLR 592, 595 (Kitto J) (‘Southern Cross’); Registrar of Trade Marks v Woolworths [1999] FCA 1020, [50](i) (French J) (‘Woolworths’); Campomar Sociedad Limitada v Nike International Ltd [2000] HCA 12, [83] (Gleeson CJ, Gaudron, McHugh, Gummow, Kirby, Hayne and Callinan JJ).
[26] Woolworths ibid [50](ii); Southern Cross ibid 594-595 (Kitto J). See also, Australian Woollen Mills (n 23) 658.
[27] Self Care (n 22) [30]; Australian Woollen Mills (n 23) 658.
A shared element for both trade marks is the presence of a letter ‘x’. However, the leading element of the Earlier Trade Mark is the word ‘enel’ which is said to be ‘as a rule, far the most important for the purpose of distinction.’[28] The word ‘enel’ is striking and well adapted to distinguish the relevant goods and services. The common element ‘x’ is of low significance in the Earlier Trade Mark such that consumers are likely to view it as incidental to the main identifying element ‘enel’. Customers are likely to refer to and recall the Earlier Trade Mark as ‘enel x’, or just ‘enel’ rather than by the shared ‘x’ element. The difference in stylisations of the letter ‘x’ also lower the likelihood of consumers being caused to wonder whether there is a connection. The Trade Mark consists of a combination of four rounded rhomboid shapes without intersection. The Earlier Trade Mark ‘x’ element is thin and quadrilateral in shape with right angles. The letter ‘x’ in the Earlier Trade Mark also has the potential to be viewed as Roman numeral of the number 10. An ‘x’ itself is not ‘so unusual that [its] presence in more than one trade mark would necessarily cause consumers to wonder whether they came from the same source’.[29] Taking account of the circumstances in which the consumer would encounter the goods and services, I note that consumers likely to deliberate and pay close attention to trade marks for the relevant goods and services. Overall, each of the trade marks has conceptual, visual and aural dissimilarities such that when they are viewed as wholes, there is no real tangible danger of confusion.
[28] Re London Lubricants (1920) Ltd (1925) 42 RPC 264, 279 (Sargant LJ).
[29] OneSteel Wire Pty Ltd v Austral Wire Products Pty [2015] ATMO 52, [44] (Hearing Officer Worth).
Accordingly, the ground opposition under reg 4.15A is not established.
Section 58
The Opponent relies on s 58 which provides that the ‘registration of a trade mark may be opposed on the ground that the applicant is not the owner of the trade mark’.
To establish this ground of opposition, the Opponent can show a person other than the Applicant has used the Trade Mark, or a trade mark with additions or alterations which do not substantially affect the identity of the Trade Mark,[30] in relation goods and/or services which are the same kind of thing as the Applicant’s Goods and Applicant’s Services. The use must be before the Relevant Date, or before use of the Trade Mark by the Applicant, whichever is the earlier.
[30] Section 7(1).
By its SGP the Opponent submits that, the Earlier Trade Mark, ‘is substantially identical to the [Trade Mark] and has been used in relation to goods and services covered by [the application for the Trade Mark] from at least November 2017 in Australia, being before the priority date of the application date of the Opposed Mark of 28 January 2021.’ As noted earlier, the EIS goes beyond the SGP, however, also claiming earlier use of the Enel X word mark and the X Device.
Noting my finding at paragraphs 19 and 20 of these written reasons that the Trade Mark is not substantially identical, the use of the Earlier Trade Mark does not assist the Opponent for the purposes of the s 58 ground of opposition. The Enel X word mark is not substantially identical to the Trade Mark for similar reasons. The X Device is similar to the Trade Mark in that both consist of the common Roman character ‘X’. Insofar as either has an essential feature, it is not the letter portrayed but the stylisation of those respective ‘X’ characters. When compared side by side, the stylisation is almost entirely different – the only shared visual feature is the existence of some white space at their respective centres. The arms of the X Device are sharp and right angles, while the Trade Mark’s arms are soft and irregular. The threshold requirement that the use relied upon by the Opponent be use of a trade mark with additions or alterations that do not substantially affect the identity of the Trade Mark is not demonstrated.
Accordingly, the s 58 ground of opposition has not been established.
Section 60
The Opponent relies upon s 60 as a ground of opposition. Section 60 provides:
60 Trade mark similar to trade mark that has acquired a reputation in Australia
The registration of a trade mark in respect of particular goods or services may be opposed on the ground that:
(a) another trade mark had, before the priority date for the registration of the first‑mentioned trade mark in respect of those goods or services, acquired a reputation in Australia; and
(b) because of the reputation of that other trade mark, the use of the first‑mentioned trade mark would be likely to deceive or cause confusion.
Note: For priority date see section 12.
The Opponent must show that because of a reputation acquired in a trade mark the use of the Trade Mark for the Applicant’s Goods or Applicant’s Services would likely deceive or cause confusion. The reputation must not be assumed, it rather must be established as a matter of fact by the Opponent.[31] A reputation can be demonstrated by various means including quantum of sales or advertising and promotional activities.[32] Advertisements or other appearances of the trade marks at trade fairs, on television, radio or in magazines and newspapers may also be relevant. The reputation required is one of which a significant or substantial number of persons would be aware[33], or a ‘significant section of the public’[34] and it must exist at the Relevant Date.
[31] ConAgra Inc v McCain Foods (Aust) Pty Ltd [1992] FCA 176, [77] (Lockhart J).
[32] Rodney Jane Racing Pty Ltd v Monster Energy Company [2019] FCA 923, [83] (O’Bryan J).
[33] Renaud Cointreau & Cie v Cordon Bleu International Ltee [2001] FCA 1170, [74]-[75] (Moore, Tamberlin and Goldberg JJ).
[34] Fry Consulting Pty Ltd v Sports Warehouse Inc (No 2) [2012] FCA 81, [121] (Dodds-Streeton J) (‘Fry Consulting’).
The Opponent relies on an alleged reputation in the Earlier Trade Mark and states the Earlier Trade Mark, ‘is specifically used in respect of goods and services relating to the development, execution and refinement of custom energy strategies to assist businesses in managing their energy more strategically, efficiently and sustainably, including but not limited to, batteries, electricity storage and measuring apparatus, computer software for use in respect of electricity, photovoltaic installations, business management and information services, and the design and development of storage and electrical systems.’[35] It submits it has used the Earlier Trade Mark since November 2017. Also, in the EIS, the declarant asserts that the Enel X word mark and the X Device have been extensively used in Australia.
[35] SGP.
For s 60 I must consider how the trade marks relied upon by the Opponent have actually been used. Some evidence provides detail about the services or goods to which the use of the Earlier Trade Mark relates. Much of the evidence shows use of the Earlier Trade Mark or the Enel X work mark including in brochures in relation to what appears to be advisory, IT and/or platform services in relation to electricity, photovoltaic installations, business management and information services, and the design and development of storage and electrical systems. Some evidence also features the X Device in proximity to Enel X. The Opponent does not provide information about how many persons have been exposed to the brochures or its websites. I also note that many of the statements made in Mancuso-1 and Mancuso-2, and many of the annexures to these declarations, including screen captures of the Opponent’s websites, are undated and therefore do not assist the Opponent in establishing reputation at the Relevant Date.
The Opponent provides revenue figures and advertising expenditure for the years 2019, 2020 and 2021 (YTD). However, these do not demarcate between specific goods or services provided. These figures also do not demarcate between the trade marks to which they refer. Therefore, I am unable to parse apart these figures. The Opponent does not elaborate on the significance of the figures for any particular services or goods. The invoices at Annexure EM-14 to Mancuso-1 appear to relate to ‘consultancy’, ‘a market assessment’ and otherwise the applicable goods and/or services involved are not clear. Regardless, they reflect a low volume of trade.
A press release dated 11 September 2019 at Annexure EM-4 notes, ‘Enel Green Power Australia has been awarded a 15-year agreement … with the State of Victoria for the generation of energy and green certificates from the Cohuna Solar Farm’ and that, ‘Enel is expected to invest around 42 million US dollars in the construction of the facility, which is due to begin in 1H2019’. There is no mention of the Earlier Trade Mark in the text of the article.
Overall, the evidence is not sufficient to establish a reputation in the Earlier Trade Mark, the Enel X word mark or the X Device.
Accordingly, the Opponent has not established the s 60 ground of opposition.
Section 42
Section 42(b) provides,
‘An application for the registration of a trade mark must be rejected if… its use would be contrary to law’.
The requirement is that the use of the Trade Mark would not could be contrary to law.[36] The Opponent relies on (1) ss 18 and 29 of the Australian Consumer Law (‘ACL’);[37] and (2) the common law of passing off. Section 18 of the ACL concerns conduct or representations that have, or are likely to, mislead or deceive. Section 29 of the ACL concerns representations that are false or misleading. There is no material difference between the expression ‘mislead or deceive’ in s 18 of the ACL and ‘false or misleading’ in s 29 of the ACL.[38]
[36] Advantage-Rent-A-Car Inc v Advantage Car Rental Pty Ltd [2001] FCA 683, [28] (Madgwick J).
[37] Competition and Consumer Act 2010 (Cth), Schedule 2.
[38] Australian Competition and Consumer Commission v Coles Supermarkets Australia Pty Ltd [2014] FCA 634, [40] (Allsop CJ).
It follows from my discussion of the s 60 ground of opposition, the lack of a reputation and failure to demonstrate s 60 more broadly, that it is not likely that the stricter test of the ACL[39], and its predecessor,[40] would be met. Without a reputation, I am not satisfied that use of the Trade Mark is likely to mislead or deceive, or amount to a false or misleading impression under ss 18 and 29 of the ACL. As I am not satisfied that ss 18 and 29 of the ACL would be contravened, it follows that I am not satisfied that use of the Trade Mark would amount to passing off.[41] Therefore, use of the Trade Mark would not be contrary law under the ACL or by the common law of passing off.
[39] Weili Mu v Guotai Huang [2021] ATMO 113, [35]-[36] (Hearing Officer Smith).
[40] 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] HCA 44, [7] (Gibbs CJ).
[41] Re Equity Access Pty Ltd v Westpac Banking Corporation [1989] FCA 506, [40] (Hill J).
Accordingly, the ground of oppositions under s 42(b) is not established.
Section 62A
Section 62A provides a ground of opposition where an application is made in bad faith. Here I should determine whether, ‘in all the particular circumstances, the applicant’s knowledge was such that his decision to apply for registration at the relevant date would be regarded as in bad faith by persons adopting proper standards.’[42] The determination is to be made as at the Relevant Date though events occurring after that date may be considered to infer the Applicant’s knowledge and intentions as at the Relevant Date. I should consider whether, in the light of any knowledge, the Applicant’s behaviour fell short of acceptable commercial standards.[43] The Opponent provides evidence that Manusco-1 suggests is conduct falling short of acceptable standards of behaviour. That evidence is very limited. It only asserts the Applicant ought to have known about ‘the Opponent’s reputation in the Enel X word mark.’[44] The SGP also alleges that the Applicant should have been aware of the Earlier Trade Mark. Given that I am not satisfied that a reputation in the Enel X word mark, the Earlier Trade Mark or X Device, did indeed exist at the Relevant Date, I similarly cannot be satisfied that the Applicant ought to have known about this alleged reputation. Regardless, merely being aware of a competitor’s trade mark does not, without more, establish a ground of opposition under s 62A.[45] The Opponent has not discharged the onus to show the conduct of the Applicant would be regarded as in bad faith by persons adopting proper standards.
[42] Fry Consulting (n 34) [167] (Dodds-Streeton J).
[43] DC Comics v Cheqout Pty Ltd [2013] FCA 478, [62] and [77] (Bennet J).
[44] Mancuso-1, [50].
[45] 1872 Holdings VOF v Havana Club Holding SA [2017] ATMO 12, [64[ (Hearing Officer Thompson).
Accordingly, the Opponent has not established a ground of opposition under s 62A.
Decision
Section 55 relevantly provides:
55 Decision
(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.
The Opponent has not established a ground of opposition. Accordingly, the Trade Mark may proceed to registration after the appeals period expires.
The Applicant has sought costs, which generally follow the event. I award costs against the Opponent under s 221 in accordance with schedule 8 to the Regulations.
Benjamin Goldsworthy
Hearing Officer
Oppositions and Hearings
Trade Marks and Designs
12 January 2024
Schedule 1
Goods & Services
Class 9: Batteries, electric; electric batteries for vehicles; electrical adapters; power adapters; housings for electrical apparatus; electric power analyzers; apparatus for analysing gases; voltage testers; electric control apparatus; electric power controllers; boiler control instruments; electricity storage apparatus; electricity measuring instruments; thermal energy measuring apparatus; remote monitoring apparatus; safety and monitoring electric apparatus; fibre optic telecommunications apparatus; open-wire transmission apparatus; photovoltaic apparatus and installations for generating solar electricity; apparatus and instruments for controlling electricity; apparatus and instruments for transforming electricity; apparatus and instruments for regulating electricity; apparatus and instruments for accumulating electricity; data processing equipment and accessories (electrical and mechanical); electrical remote control apparatus; regulating apparatus, electric; measuring devices, electric; monitoring apparatus, electric; photovoltaic apparatus for converting solar radiation to electrical energy; computer apparatus for remote meter reading; electricity mains apparatus; remote entry point control apparatus; fuel consumption measuring apparatus; chargers for electric batteries; chargers for electric vehicles; gas detecting apparatus; apparatus, instruments and cables for electricity; computer networking and data communications equipment; meter testing apparatus; communications equipment; electric control installations; apparatus for registration, transmission or reproduction of sound or images; computer software applications, downloadable; electric batteries; batteries for electric vehicles; rechargeable batteries; solar batteries; electrical power distribution blocks; battery chargers; solar battery chargers; encoded loyalty cards; smart cards [integrated circuit cards]; branch boxes; distribution boxes; switchboxes; fiber optic cables; audio cable; coaxial cables; electric cables and wires; Ethernet cables; optical cables; communications cables; telecommunications cables; calibrated photovoltaic reference cells; electric cells; solar cells for electricity generation; photovoltaic cells; electrical circuits; electric couplings; collectors, electric; solar energy collectors for electricity generation; electric and electronic components; condensers [capacitors]; ducts [electricity]; conductors, electric; counters; water meters; gasometers [measuring instruments]; heating meters; frequency meters; electric meters; electronic meters; converters, electric; electric switch plates; electric diodes; multifunctional remote controls; electric power control devices; electrical controllers; igniting apparatus, electric, for igniting at a distance; electrical power distributors; electrical distributors; nonlinear optical fibres; polarisation maintaining optical fibres; light-conducting filaments; optical fibers; electric wires; fuses; electric couplings; electrical switch assemblies; sheaths for optical fibre cable; electric switchgear; electricity indicators; electric loss indicators; armatures [electricity]; inductors [electricity]; photovoltaic installations for generating electricity; photovoltaic power plants; electric circuit closers; photovoltaic inverters; inverters [electricity]; voltage limiters; limiters [electricity]; instruction manuals in electronic format; voltmeters; photovoltaic solar modules; computer software packages; electric switch panels; electricity control panels; panels for the connection of electricity; solar panels for the production of electricity; electrical sockets; electrical power extension cords; downloadable electronic publications in the nature of magazines; electric contact boards; electrical control boards; electric connection boards; electric control panels; electricity distribution boards; electric reactors; voltage regulators for electric power; resistances, electric; ballasts for electrical lighting fittings; fibre optic receptors; electrical receivers; combustion gas detectors; voltage detectors; detectors for electric meters; distance sensors; gas sensors; electronic sensors for measuring solar radiation; software; application software for mobile phones; computer software for use in remote meter monitoring; software for tablet computers; electrical plugs; voltage stabilizers; terminals [electricity]; electric thermostats; electric timers; electric voltage transformers; optical transmitters for use with fibre optic cables; mains power units (electric -); electric power units; electric valves [thermionic]; solar wafers; home automation apparatus; measuring, detecting and monitoring instruments, indicators and controllers; life saving apparatus and equipment; safety, security, protection and signalling devices; home automation software; surveillance and security apparatus; electric household appliances for recording, transmission or reproduction of sound or images; computer network routers; clamp meters; webcams; sensors and detectors; thermostats; sirens; security cameras; multi-function touch buttons; data storage devices; signalling apparatus; alarms and warning equipment; access control and alarm monitoring systems; monitoring instruments; measuring, counting, alignment and calibrating instruments
Class 12: Electric cars; electric bicycles; electrically operated scooters; electric vehicles; spare parts and accessories for electric vehicles
Class 35: Commercial administration of the licensing of the goods and services of others; cost price analysis; business management assistance; industrial management consultation including cost/yield analyses; business management; providing business information via a web site; business information; commercial information and advice for consumers [consumer advice shop]; clerical services; organization of trade fairs for commercial or advertising purposes; arranging of trading transactions and commercial contracts; arranging of contracts, for others, for the providing of services; bidding quotation; business administration; assistance and consultancy services in the field of business management of companies in the energy sector; business consulting; advisory services for business management; price comparison services; commercial intermediation services; systemization of information into computer databases
Class 42: Environmental testing of exhaust emissions; conducting feasibility studies relative to gas exploration; conducting feasibility studies relative to gas exploitation; consultancy in the field of energy-saving; professional consultancy relating to the conservation of energy; technological consultancy in the fields of energy production and use; environmental monitoring of waste storage areas; creation of control programs for electric operation control and drive modules; exploration and searching of oil and gas; geophysical exploration for the oil, gas and mining industries; technical advice in connection with energy-saving measures; providing information about the design and development of computer software, systems and networks; greenhouse gas emission measuring and analysis; monitoring of contaminated land for gas; design of electric circuit boards; design of storage systems; designing of electrical systems; technical design and planning of power stations; technical design and planning of pipelines for gas, water and waste water; technical design and planning of telecommunications networks; design and development of regenerative energy generation systems; design and development of software for control, regulation and monitoring of solar energy systems; engineering drawing; engineering design; exploration of gas and oil; geophysical exploration for the gas industry; exploration services to locate gas; development of computer programs for analysis of exhaust gas emissions; conducting research and technical project studies relating to the use of natural energy; research relating to waste analysis; industrial research; analysis and testing services relating to electrical engineering apparatus; advisory services relating to the use of energy; technological consulting services in the field of alternative energy generation; engineering services relating to gas transport and supply systems; engineering services in the field of electrical power and natural gas production; engineering services for the gas industry; technical design services relating to electricity plants; electrical engineering services; IT programming services; development of testing apparatus for electrical wires; development of power assemblies; development of energy and power management systems; development of energy and power management systems; testing of apparatus in the field of electrical engineering; design and development of domestic automation applications and control systems; design and development of software for domestic automation applications and control systems; installation, maintenance and repair of computer software for domestic automation and domestic safety systems; software programming for domestic automation apparatus; design and development of automatic domestic control systems, namely temperature, humidity and electric control apparatus; monitoring of computer systems by remote access to ensure proper functioning; monitoring of domestic automation systems, namely for remote video access of security and safety equipment; testing, analysis and monitoring of telecommunication signals
Key Legal Topics
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Commercial Law
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Civil Procedure
Legal Concepts
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