Ensinger GmbH v CGA Trading Pty Ltd

[2023] ATMO 117

TRADE MARKS ACT 1995

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

Re:Opposition by Ensinger GmbH to registration of trade mark application 2166488 – TECOR – in the name of CGA Trading Pty Ltd

Delegate:	Bianca Irgang
Representation:	Opponent: Not present at the hearing Applicant: Anthony Place of Patentable
Decision:	2023 ATMO 117 Trade Marks Act 1995 (Cth) - Section 52 opposition – ss 42, 44 and 60 grounds of opposition considered – no grounds of opposition established.

Background

1. CGA Trading Pty Ltd (‘the applicant’), filed trade mark application number 2166488 on 1 April 2021 in class 17 of the International Classification of Goods and Services. Current details of the application are set out below.

Trade mark:  TECOR  (the ‘Trade Mark’)

Trade mark application no: 2166488

Filing Date:  1 April 2021

Specification:  Class 17: Filled cartridges containing semi-worked thermoplastic filaments for use in 3D printing; Linear thermoplastic polyester (semi-worked) for use as hot melts; Panels of plastics (semi-worked); Rubber, raw or semi-worked; Semi-worked acrylonitrile butadiene styrene (ABS) filaments for use in 3D printing; Semi-worked goods made from plastics; Semi-worked panels of plastics materials; Semi-worked plastic products; Semi-worked plastics; Semi-worked plastics in the form of blocks; Semi-worked plastics in the form of fibres; Semi-worked plastics in the form of sections; Semi-worked plastics materials; Semi-worked polylactic acid (PLA) filaments for use in 3D printing; Semi-worked polymer resins in the form of fibres; Semi-worked polymer resins in the form of plates; Semi-worked thermoplastic filaments for use in 3D printing; Plastic filaments for 3D printing; Plastic materials in extruded form for use in manufacture; Plastic profiles in extruded form for use in manufacture; Plastics in extruded form for use in manufacture; Plastics in extruded form for use in packing; Rubber in extruded form for use in manufacture; Semi-processed plastics in extruded form for use in manufacture; Flexible hoses composed of plastics; Rubber hoses; Padding materials of rubber or plastic for use in the manufacture of furniture; Padding materials of rubber or plastics; Insulating materials; Latex (rubber); Plastic substances, semi-processed; Semi-processed plastic substances

1. Acceptance of the application for possible registration was advertised in the Australian Official Journal of Trade Marks dated 2 September 2021. Subsequently Ensinger GmbH (‘the opponent’) filed a Notice of Intention to Oppose registration followed by a Statement of Grounds and Particulars (‘SGP’).

2. The applicant then filed its Notice of Intention to Defend. Thereafter, the opponent filed evidence in accordance with the provisions of the Trade Mark Regulations 1995 (Cth) (‘the Regulations’).

3. I heard the opposition by teleconference as a delegate of the Registrar of Trade Marks on 31 May 2023. The opponent was not present at the hearing but did provide written submissions for consideration by way of its legal representatives Griffith Hack. The applicant was represented Anthony Place of Patentable.

Grounds of Opposition

1. The SGP nominated a number of grounds of opposition under the Trade Marks Act 1995 (Cth   ) (‘the Act’) and sections 44, 60 and 42(b) were pursued at the hearing. The opponent bears the onus of establishing at least one of the grounds of opposition.[1] The standard of proof is the ordinary civil standard of the balance of probabilities.[2]

   [1] Food Channel Network Pty Ltd v Television Food Network GP [2010] FCAFC 58, [32] (Keane CJ, Stone and Jagot JJ).

   [2] Pfizer Products Inc v Karam [2006] FCA 1663, [6]-[26] (Gyles J); Telstra Corporation Ltd v Phone Directories Co Pty Ltd [2015] FCAFC 156, [132]-[133] (Besanko, Jagot and Edelman JJ).

Evidence

1. The evidence filed in this matter consists of the following declaration being:

Opponent’s evidence in support

• Declaration of Achim Lehmann, Head of Legal Affairs for the opponent, made on 25 April 2022 (‘Lehmann Declaration’), accompanied by annexure 1

Discussion

Section 44

1. Section 44 of the Act relevantly provides:

   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)  the applicant’s trade mark is substantially identical with, or deceptively similar to:

   (i)  a trade mark registered by another person in respect of similar goods or closely related services; or

   (ii)  a trade mark whose registration in respect of similar goods or closely related services is being sought by another person; and

   (b)  the priority date for the registration of the applicant’s trade mark in respect of the applicant’s goods is not earlier than the priority date for the registration of the other trade mark in respect of the similar goods or closely related services.

2. To establish its opposition in terms of section 44 of the Act the opponent must show all of the following:

• a trade mark (or trade marks), either registered or pending registration, in the name of a person other than the present applicant, and in relation to which the opposed trade mark is either substantially identical or deceptively similar;

• the trade mark(s) in the name of the other person must be in respect of similar goods or closely related services; and

• the priority date(s) of the other person’s trade mark(s) is (are) the earlier.

1. As particularized in the SGP, the opponent is the registered owner of trade mark registration 1997820 TECA and listed it in support of its section 44 ground of opposition. The details of the trade mark registration are as follows:

Trade mark:  TECA  (the ‘opponent’s trade mark’)

Trade mark registration no:1997820

IRDA:  1457546

Filing Date:  24 January 2019

Convention:  DE 302018114575
  21 December 2018

Specification:  Class 1: Unprocessed plastics and unprocessed plastic composites, in particular in the form of granulate, prepregs and compounds.

Class 7: Machines and machine tools for the processing and production of materials, other than of foodstuff and edibles, including welding robots, as well as parts of the afore-mentioned goods; all above-mentioned goods except goods for use in the field of laboratory robotics; all above-mentioned goods not for use in connection with domestic apparatus as well as bath and sanitary products

Class 12:Automobile parts, including undercarriage components, in particular transverse control arms and ball joints; bicycles and parts therefor, in particular gearing parts and cranks

Class 17: Goods made of plastics and plastic composites (semi-finished products), in particular in the form of foils, plates, blocks, rods, hollow rods, profile rods; goods made of plastics (semi-finished products), including plastic profiles, in particular for insulating glazing systems for window and facade glazing; plastic profiles for making composite structures of metal and plastic

Class 19: Building materials and building elements (non-metallic); spacers of plastic for the building sector; building profiles of thermoplastic and foamed plastics; all above-mentioned goods not for use in the fields of domestic apparatus, bath and sanitary products, kitchen technology, washing apparatus and tumble dryers for laundry use, sanitary technology, bathroom technology and air-conditioning technology

Class 40: Processing of plastics; treatment of plastic materials to produce plastic mouldings; treatment and processing of plastics; treatment and processing of plastic mouldings; recycling of plastics.

1. The opponent’s trade mark registration has an earlier priority date to the Trade Mark.

2. The Trade Mark covers the same and/or related goods in class 17 to those that relate to the opponent’s trade mark. There has been significant discussion surrounding the over lap or lack of overlap in the respective goods. However, I do not believe it is an oversimplification to describe the applicant’s class 17 specification as being semi-worked goods made from plastic. Given the that the opponent’s class 17 claim is for goods made of plastics and plastic composites (semi-finished products), I am satisfied that the specification of goods of the respective parties are the same. Semi-finished or semi-worked goods all appear to be goods that have undergone some processing and are used as inputs into the production of finished goods. Therefore, the first two requirements of section 44 have been established.

3. The remaining issue for me to determine is whether the Trade Mark is either substantially identical or deceptively similar to the previously registered trade mark put forward by the opponent. The representations of the respective trade marks are:

Opponent’s trade mark	Trade Mark
TECA	TECOR

1. It is obvious that TECA is not substantially identical to the Trade Mark according to the side-by side test set out by Windeyer J in Shell Co (Aust) Ltd v Esso Standard Oil (Aust) Ltd[3]. While the respective trade marks contain the prefix ‘TEC-’ this is where the similarities between them end. They each have a different suffix which changes the visual and aural termination of each trade mark and precludes a finding of substantial identity.

   [3] (1963) 109 CLR 407, 414.

2. I now consider whether the Trade Mark is deceptively similar to the opponent’s trade mark. Deceptive similarity is defined by section 10 of the Act, which states ‘[f]or 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.’ The determination of deceptive similarity requires a comparison of the impression persons of ordinary intelligence and memory would have, in recalling the opponent’s trade mark, to the impression they would get from the opposed trade mark.[4] The probability of deception must be finite and non-trivial.[5]

   [4] The Shell Company of Australia Ltd v Esso Standard Oil (Australia) Ltd (1961) 109 CLR 407, 415 (Windeyer J).

   [5] Registrar of Trade Marks v Woolworths Limited [1999] FCA 1020, [43] (French J).

3. The opponent’s trade mark consists of the word TECA in plain text with no colour limitations. The Trade Mark is for the word TECOR. It is fair to say that the main shared word elements of both of these marks is the prefix TEC- which is a commonly understood shortening of the word ‘TECHNOLOGY’. The applicant has argued:

Based on a current search, there appears 5500+ registered and pending trademarks on the Australian trademark register filed before the Relevant Date that including a prefix or suffix TEC/TEK, with 4000+ of these including a TEC/TEK prefix. In particular, a search of the register identified 40+ trademarks in class 17 that include a prominent TEC/TEK prefix, with search results attached as Annexure B. As a TEC/TEK prefix is commonly used in trademarks, it must be to some extent discounted when considering deceptive similarity.

TEC would further carry less weight in any recollection due to its descriptive TEChnology connotation.

1. The opponent has argued:

   ·TECA is comprised of the two syllables TEC and A. Similarly, the word TECOR is comprised of two syllables TEC and OR. It is compounded in the same way as the TECA mark. 

   ·The Opponent’s Mark and the Opposed Mark each contain the prefix “TEC”. TEC can be seen as nothing else other than a prefix in both TECA and TECOR. The sharing of this prefix creates immediate and unmistakable visual and aural similarities.

   ·The common element “TEC” is the dominant and essential element of the Opponent’s Mark and the Opposed Mark as it is the first syllable and is the most important for the purposes of comparison.

   ·Both TECA and TECOR are pseudo words and not in common use in the English language, therefore increasing the possibility of confusion.

   ·The element shared by words TECA and TECOR, namely TEC does not have descriptive significance.

   ·Both TECA and TECOR are comprised of one word and two syllables.

   ·The only differences between the trade marks are the termination of the words, namely the syllables “A” and “OR”, respectively. The termination of both the Opponent’s Mark and the Opposed Mark are not sufficient to distinguish the marks when allowing for the possibility of slurred pronunciation and distortion of sound.

   ·When comparing the syllables “A” and “OR”, the pronunciation is very similar due to the non-pronunciation of the terminal ‘R” in Australian English. Australian English is uniformly non-rhotic. Accordingly, the non-rhotic pronunciation of the Opposed Mark, TECO, causes the parties marks to be phonetically similar.

   ·It is likely that the final syllables “A” and “OR”, respectively, will be overlooked as an insignificant ending, leaving in the memory the word “TEC”.

   ·A consumer’s imperfect recollection would be of the first and most important element “TEC” which is the shared element of the trade marks

2. I am not persuaded by this reasoning. As already discussed, the prefix TEC- is the common element in all the respective trade mark representations. TEC- is a very commonly used prefix and it does have some descriptive allusions to technology to the average Australian consumer.  The use of such a prima facie non-distinctive term within each of the trade marks is unlikely to cause the potential consumer to wonder whether the trade marks are related.

3. Applying these considerations, I am not satisfied the Trade Mark is deceptively similar to the trade mark registration put forward by the opponent, particularly when the trade marks are considered, as they must be, as wholes. To refuse the Trade Mark because of the common and descriptive prefix TEC- would impermissibly seize on a single similarity between the trade marks, while ignoring the trade marks in their entirety. I recall, ‘it is the whole mark as used which is the subject of the comparison with the registered mark.’[6].

   [6] Anheuser-Busch Inc v Budejovicky Budvar (2002) 56 IPR 182, 218 (Allsop J).

4. In this case, the respective trade marks are structured similarly but the commonality of the prefix TEC- cannot overcome the differences of those visual, aural and cognitive cues caused by the different terminating letters to the trade marks. Those differences are important and carry significant weight when considering the respective trade marks. Therefore, I am not satisfied there would be a real and tangible danger of confusion arising[7] between the respective trade marks. My finding is that the respective trade marks of the two parties are neither substantially identical nor deceptively similar. As a result of this finding, the ground of opposition under section 44 has not been made out.

   [7] Registrar of Trade Marks v Woolworths Ltd (1999) 93 FCR 365, 382 (French J).

Section 60

1. Section 60 of the Act 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.

2. To establish the ground of opposition under section 60 the opponent relies on its use of and the acquired reputation in the trade mark TECA.

3. Unlike section 44 of the Act, section 60 does not require that the goods upon which the opponent uses its trade mark be of a specified standard of similarity with the goods of interest to the applicant, nor is there a requirement that the opponent’s trade mark be substantially identical or deceptively similar to the Trade Mark.

4. It is for me to determine whether the opponent has established that before 1 April 2021 its TECA trade mark was recognized by a significant number of persons in Australia and whether because of that, the use by the applicant of the Trade Mark would be likely to cause the public confusion.

5. In relation to reputation Kenny J states in McCormick & Co Inc v McCormick[8]:

   [i]n ConAgra Inc v McCain Foods (Aust) Pty Ltd (1992) 33 FCR 302 at 343; 23 IPR 193 at 234, Lockhart J said:

   [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.

Justice Kenny continues:

[i]n practice, it is commonplace to infer reputation from a high volume of sales, together with substantial advertising expenditures and other promotions, without any direct evidence of consumer appreciation of the mark, as opposed to the product: …

[8] (2000) 51 IPR 102, 128-129.

1. In considering whether the trade mark TECA has acquired a reputation in its various plastic goods, I turn to the opponent’s evidence of use of the TECA trade mark in Australia. Lehmann establishes that the opponent is engaged in the manufacture, development and sale of compounds, semi-finished materials, composites, technical parts and profiles made of engineering and high performance plastics. The opponent is a worldwide enterprise with 2,600 employees at 33 locations.

2. According to Lehmann the opponent adopted the TECA trade mark from the German word “Technische Kunststoffe” which means technical polymers and commenced use of the shortened version of that being “T.K.” in the early 1970s. When the opponent began to expand internationally, the TK/TKA trade mark was altered to TECA in the 1980s.

3. Lehmann alleges that the first sale of the opponent’s goods bearing the TECA trade mark in Australia was 1986. According to Mr Lehmann, the opponent is also the owner of the trade marks TECAPEEK, TECAMID, TECAFORM, TECADUR, TECANAT, TECASON, TECAFIL in Australia. These are all specific trade names and these trade marks are used on the packaging of the opponent’s goods as well as
   “TECA by Ensinger”.  Paragraph 15 of the Lehmann declaration contains examples of the packaging of the opponent’s goods and I reproduce a few examples below:

1. According to Lehmann, the opponent’s goods are sold in Australia and internationally. I note from confidential paragraphs 16 through to 18 that the sales of the opponent’s plastic goods are considerable and tend to be growing each year in the international marketplace. Given that the price range of the opponent’s goods ranges from under a dollar to tens of thousand of dollars it is unclear how many units of the opponent’s goods have been sold but I accept that given the international figures, it would be a considerable number. However, when it comes to Australian figures, the figures are much more modest and no break down of the figures has been provided for whether or not these figures are related solely to plastic goods sold under the opponent’s TECA trade mark or collectively all of its various ‘TECA-‘ prefix trade marks. Lehmann makes a broad assertion that the opponent’s market share in Australia for its goods is around 15%-20% but there is limited evidence before me to support that assertion.

2. The opponent’s evidence demonstrates a consistent and reasonable reputation for its goods branded under its various TECA- prefix trade marks on an international level. However, I must determine if the opponent’s trade mark has acquired a reputation in Australia because of which the use of the Trade Mark would be likely to deceive or cause confusion. This is more than the opponent merely indicating prior use, the opponent’s trade mark needs to be ‘associated in the minds of the Australian public’[9] to such a degree that confusion is likely.  I do not believe it has. 

   [9] Seven Up Co v OT Ltd (1947) 75 CLR 203, 211 (Williams J).

3. The opponent’s evidence before me lacks specifics that would allow me to determine the level of its reputation within the Australian marketplace. Nor can I sure what level of sales or reputation would be under the TECA solus trade mark or under its TECA- prefix trade mark.  I am not satisfied that the opponent has established a sufficient reputation in Australia such that use of the Trade Mark will lead a significant number of consumers to experience a reasonable doubt[10] as to the existence of some sort of connection between the opponent’s TECA trade mark and the Trade Mark.

   [10] Southern Cross (n 14) 594-5 (Kitto J).

1. The opponent has accordingly not established its ground of opposition under section 60.

Section 42(b) – Contrary to Law

1. Section 42(b) of the Act 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.

2. The opponent stated in the SGP:

   The opponent had, before the priority date (1 April 2021), acquired a reputation in Australia in the Trade Mark, including in relation to goods made of plastic and plastic composites The use of the similar trade mark by the applicant would be likely to amount to conduct that is misleading and deceptive or is likely to mislead or deceive in breach of sections 18 and 29 of the Australian Consumer Law (Schedule 2 of the Competition and Consumer Act 2010), including by falsely suggesting that the applicant’s goods are those of the opponent or that the applicant or its goods are related to the opponent or are sponsored, approved, affiliated or licensed by the opponent.

3. I have found that the use of the Trade Mark is not, at a minimum, likely to ‘deceive or confuse’ under section 60, it follows that the use is not, on the stricter test posited by the Australian Consumer Law, likely to mislead or deceive. I thus find that the opponent has not established the ground of opposition under section 42(b).

Decision

1. Section 55 of the Act 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.

   Note:          For limitations see section 6.

1. The opponent has not established any grounds of opposition. The trade mark application may accordingly proceed to registration one month from the date of this decision. If the Registrar has been served with notice of appeal before that time, I direct that registration of the Trade Mark shall not occur until the appeal has been decided or discontinued.

Costs

1. It is usual for costs to follow the event, and I see no reason to depart from that principle here. I award costs against the opponent under section 221 of the Act in terms of Schedule 8 of the Regulations.

Bianca Irgang
Hearing Officer
Oppositions and Hearings
Trade Marks and Designs

15 August 2023