EnviroTread – in the name of Envirowalk Pty Ltd.
[2022] ATMO 103
•23 June 2022
TRADE MARKS ACT 1995
DECISION OF A DELEGATE OF THE REGISTRAR OF TRADE MARKS WITH REASONS
Re:Opposition by Treadwell Group Pty Ltd to registration of trade mark application number 2124512 (Class 19) – EnviroTread – in the name of Envirowalk Pty Ltd.
Delegate: Blake Knowles Representation: Opponent: Self-represented.
Applicant: Self-represented.Decision: 2022 ATMO 103
Trade Marks Act 1995 (Cth) – opposition under section 52 – grounds of opposition under sections 60 and 62A pressed by Opponent – no ground established – trade mark to proceed to registration.Background
This is a decision in the opposition by Treadwell Group Pty Ltd (‘Opponent’) to registration of trade mark number 2124512 (‘Application’). The Application was filed on 30 September 2020 (‘Relevant Date’) by Envirowalk Pty Ltd (‘Applicant’) for the trade mark ‘EnviroTread’ (‘Trade Mark’) and goods:
Class 19: Non-metallic FRP (fibre-reinforced polymer) or wood decking; Non-metallic FRP (fibre-reinforced polymer) or plastic gratings; Non-metallic FRP (fibre-reinforced polymer) floors; Non-metallic FRP (fibre-reinforced polymer) or plastic or wood walkways; Non-metallic FRP (fibre-reinforced polymer) structural platforms (structures); Non-metallic FRP (fibre-reinforced polymer) structures (frameworks); Fibre-reinforced structures and materials; Architectural FRP (fibre-reinforced polymer) materials of non-metallic FRP (fibre-reinforced polymer) composite materials; Artificial wood; FRP (fibre-reinforced polymer) composite or plastic Balustrades, not of metal; Construction materials, not of metal; Non-metallic building materials; Non-metallic FRP (fibre-reinforced polymer) composite building materials for civil engineering; Nonmetallic FRP (fibre-reinforced polymer) composite building materials for floors; Non-metallic FRP (fibre-reinforced polymer) composite building materials for use in relation to floors; Non-metallic FRP (fibre-reinforced polymer) composite building materials in the form of shaped sections; Nonmetallic composite materials for use in construction; Non-metallic composite flooring materials; Non-metallic composite flooring panels; Non-metallic prefabricated building elements for on site assembly; Nonmetallic roofing skeletons; Non-metallic surfaces for recreational areas; Prefabricated non-metallic constructions; Structures made of nonmetallic composite materials; Shelters (building structures) of nonmetallic composite materials; Staircases, not of metal; Non-metallic structures; Bridges (structures) other than of metal; Flooring compounds of synthetic resins
As required by the Trade Marks Act 1995 (Cth)[1] the Trade Mark was examined. The Trade Mark was advertised for opposition purposes on 1 March 2021. The Opponent filed notice of its intention to oppose registration of the Trade Mark on 12 April 2021 and a statement of grounds and particulars (‘SGP’) on 29 April 2021. The Applicant filed a notice of intention to defend the Application from opposition on 16 June 2021.
[1] Unless otherwise stated, each reference to a section or regulation is a reference to a section of the Trade Marks Act 1995 (Cth) (‘Act’) or regulation of the Trade Marks Regulations 1995 (Cth) (‘Regulations’).
The parties had the opportunity to file evidence in accordance with the timetable set out in reg 5.14. The Opponent filed Evidence in Support (‘EIS’) on 16 September 2021. The Applicant filed Evidence in Answer (‘EIA’) on 17 December 2021. The Opponent did not file Evidence in Reply.
The parties were given the opportunity to request a hearing by videoconference or by written submissions only. Neither party requested a hearing. The Applicant requested that the matter be decided based on the materials filed and paid the relevant fee. As such, I have decided this matter based on the particulars set out in the SGP and the evidence filed.
Grounds and onus
The SGP nominated grounds of opposition under ss 60 and 62A.
The Opponent carries the burden of establishing one of the grounds of opposition on the balance of probabilities.[2] The rights of the parties are assessed as at the Relevant Date.[3]
[2] Pfizer Products Inc v Karam [2006] FCA 1663, [22] (Gyles J); Telstra Corporation Limited v Phone Directories Company Pty Ltd [2015] FCAFC 156, [133] (Besanko, Jagot and Edelman JJ).
[3] Southern Cross Refrigerating Co v Toowoomba Foundry Pty Ltd (1954) 91 CLR 592, 595 (Kitto J).
Evidence
The following evidence was filed under reg 5.14:
EIS
Declaration of Greg Butcher, Technical and Commercial Director of the Opponent, made on 16 September 2021 with annexures.
EIA
Declaration of Grahame Cross, IP Manager of the Applicant, made on 17 December 2021 with annexures, including various supporting ‘witness’ declarations that are listed in Annexure A to this decision.
EIS
Mr Butcher declares that the Opponent has used the EnviroTREAD brand since at least August 2015. In support of this claim, Mr Butcher annexes various examples of EnviroTREAD being used in relation to recreational public infrastructure products made from fibre reinforced plastic (‘Opponent’s Goods’). The examples include:
(a)Twenty-nine case studies of public infrastructure incorporating the Opponent’s Goods. The case studies are prominently branded with the Opponent’s primary trade mark, TREADWELL, but also include reference to ‘EnviroTREAD’ as being one of the products used on the projects. I note that no dates appear on any of the case studies, although several of the PDF file names contain a year (2020), while several also contain six-digit numbers that appear to represent dates ranging from 2017 to 2019.
(b)The Opponent’s 2016 corporate brochure, which includes information regarding EnviroTREAD as a brand used for the Opponent’s Goods.
(c)EnviroTREAD product guides created in 2016.
(d)Videos featuring use of EnviroTREAD on various projects, several of which are stated to have been published prior to the Relevant Date.
(e)Domain name purchase receipts dated 2017 for various ‘envirotread’ formative domain names, including and
(f)An email to a graphic designer dated August 2015 stating that the Opponent was in favour of using EnviroTREAD.
(g)An email to a client dated August 2016 referring to EnviroTREAD products.
(h)A photo of a plaque including the word ‘EnviroTREAD’ on a railing at Henley Beach in South Australia.
EIA
Mr Cross declares that the Applicant and its predecessor in title have been using the Trade Mark since 13 February 2007. The Applicant was incorporated on 4 February 2010 as Alto-Safety Pty Ltd. The Applicant was originally created to act as an extension of another entity, Envirowalk Grating Pty Ltd (‘EGPL’). The Applicant initially had a focus on smaller safety items including stair treads, safety nosing, safety plates, and stair covers. However, the Applicant later expanded “into the EnviroGrate products as well: [the Applicant] would promote Envirowalk Grating products as their only range of FRP products with the inclusion of the EnviroTread range”.
Mr Cross declares that in 2019 the Applicant changed its name from Alto-Safety Pty Ltd to Envirowalk Pty Ltd in accordance with an agreement which transferred the business of EGPL to the Applicant. Mr Cross annexes a two-page letter dated 24 June 2019 (‘Business Agreement’) which records the transfer of the business. The letter is titled ‘Envirowalk Grating Pty Ltd Business Proposal’ and is signed by Mr Cross on behalf of EGPL, and by Shirley Cross and Karen Jackson on behalf of the Applicant. I note that the Business Agreement is not structured as a formal contract. However, it confirms the transfer of the EGPL business to the Applicant, including existing clients, employees, business website, and rights to all ‘trademark names’ used by EGPL, including EnviroTread. Mr Cross also agreed to act as Managing Director of the Applicant for a transition period, and a consultant thereafter.
Mr Cross annexes examples of use of the Trade Mark by EGPL. Much of the evidence is contained in witness declarations, most of which are by customers who have purchased products sold under the Trade Mark from EGPL. It is not necessary to summarise each of the declarations. However, the following are some illustrative examples which demonstrate use of the Trade Mark:
(a)Declaration by Mr Brian Sumner, which annexes 2009 and 2011, and 2015 email correspondence between Mr Sumner and EGPL regarding products sold under the Trade Mark, and associated invoices from the same years. Mr Sumner also annexes a flyer that he states was given to him on 15 March 2013. The flyer displays the Trade Mark being used in relation to stair safety nosings, anti-slip stair treads, ladder rungs, and industrial step treads.
(b)Declaration by Shane Lewis which annexes 2011 email correspondence between Mr Lewis and EGPL regarding products sold under the Trade Mark, and invoices for goods sold under the Trade Mark from 2009 and 2011. Mr Lewis also annexes a flyer that he states was given to him in April 2011. The flyer displays the Trade Mark being used in relation to stair safety nosings, anti-slip stair treads, ladder rungs, and industrial step treads. Mr Lewis also states that he had a meeting with Jon Butcher, a representative of the Opponent in late 2014 or early 2015, during which he informed Mr Butcher that he had previously purchased ‘Envirotreads’ from EGPL.
(c)Declarations by Mark Robson and Paul Martin in which they state they collected a flyer displaying the Trade Mark from the Home Modifications Conference in Sydney in September 2012. A copy of the flyer is annexed which displays use of the Trade Mark in relation to stair treads, safety plates, and nosings.
(d)Declaration by Phil Moore referring to annexed email correspondence with EGPL dated January 2015 regarding stair treads and landing panels sold under the Trade Mark. Also annexed is a quotation dated 29 January 2015, and invoices dated 18 August 2015, 1 December 2015, and 20 May 2016. The quotations and invoices collectively refer to landings, panels, grids, kick plates, and nosings sold under the Trade Mark.
(e)Declaration by Luke McShane in which he states that he was provided two advertising flyers in July 2017 by EGPL and the Applicant respectively. A copy of the flyers is enclosed which displays the Trade Mark being used in relation to stair safety nosings, anti-slip stair treads, and ladder rungs.
Mr Cross also makes detailed allegations regarding the veracity and credibility of the Opponent’s evidence. However, given my findings below, it is not necessary that I repeat or address these claims.
Discussion
Section 62A
To establish the s 62A ground, the Opponent must establish that the Application was made in bad faith. Whether an application was made in bad faith requires consideration of a subjective and an objective element. For the subjective element I must form a view of the actual knowledge of the Applicant at the time the Application was filed. The objective element then asks, would a person adopting proper standards, knowing what the Applicant knew, regard the act of filing the Application as being in bad faith? This is to be assessed by determining whether the act of filing ‘falls short of the standards of acceptable commercial behaviour’ in the relevant industry.[4] In Fry Consulting Pty Ltd Pty Ltd v Sports Warehouse Inc (No 2), Dodds-Streeton J in considering the tests for bad faith quoted the UK decision in Harrison’s Trade Mark Application:
[4] DC Comics v Cheqout Pty Ltd (2013) 212 FCR 194, 206 [62] (Bennett J).
Clearly the court, when considering bad faith, cannot apply a purely subjective test, called by Lord Hutton ‘the Robin Hood test’. The dishonest person or one with low standards cannot be permitted to obtain trade mark registrations in circumstances where a person abiding by a reasonable standard would not. The registration of a trade mark is designed to enable bona fide proprietors to protect their proprietary rights without having to prove unfair trading. Registration is not provided to help those with low moral standards.
…
The words ‘bad faith’ suggest a mental state. Clearly when considering the question of whether an application to register is made in bad faith all the circumstances will be relevant. However the court must decide whether the knowledge of the applicant was such that his decision to apply for registration would be regarded as in bad faith by persons adopting proper standards.[5]
Justice Dodds-Streeton went on to say:
mere negligence, incompetence or a lack of prudence to reasonable and experienced standards would not, in themselves, suffice, as the concept of bad faith imports conduct which, irrespective of the form it takes, is of an unscrupulous, underhand or unconscientious character.[6][5] Fry Consulting Pty Ltd Pty Ltd v Sports Warehouse Inc (No 2) [2012] FCA 81, [147], quoting Harrison’s Trade Mark Application [2005] FSR 10 [24]-[26] (Sir William Aldous).
[6] Ibid, [166].
I am without evidence as to any standards of behaviour peculiar to this industry, so I proceed in my assessments here based on general commercial behaviour.
The particulars of the s 62A ground in the SGP refer to a prior opposition filed by the Applicant against an earlier application (number 2055931) for EnviroTREAD filed by the Opponent. The Opponent ultimately did not defend that opposition. The Opponent states in the SGP: “We believe that their opposition was so that they could apply for [the trade mark] themselves. We decided not to defend as we did not want to incur the lawyers’ fees and a long drawn out legal situation”.
These particulars do not disclose any clear reason why the Application was filed in bad faith. The Applicant clearly opposed the Opponent’s earlier application because the Applicant genuinely believed that the Opponent was usurping its rights. The Opponent’s statement about not wishing to incur fees defending the earlier opposition also seems strange given it subsequently incurred the expense of opposing the current Application.
Leaving aside the curious particularisation of the s 62A ground, it is clear from the evidence that the Applicant applied for registration of the Trade Mark with the reasonable belief that it has better rights to the Trade Mark than the Opponent. The Applicant is the successor to the business of EGPL and I am satisfied that EGPL used the Trade Mark in relation to various non-metallic building components well before the date of first use of EnviroTREAD claimed by the Opponent. The filing of an application in these circumstances can hardly be described as conduct that is unscrupulous, underhand, or unconscientious in nature.
I am not satisfied the Application was made in bad faith. As such, the ground under s 62A is not established.
Section 60
To establish this ground, the Opponent must establish a reputation in a trade mark existing in Australia at the Relevant Date. If reputation is established, the Opponent must then prove that because of the reputation in the mark relied on by the Opponent, use of the Trade Mark subject of the Application is likely to deceive or cause confusion.
In McCormick & Co Inc v McCormick, Kenny J considered the requirements for establishing reputation. Her Honour said:
It may be correct to say, as counsel for Mary McCormick did, that the volume of the company’s sales does not directly establish that a significant number of people held the McCormick & Co marks, as distinct from the company’s products, in favourable regard. It does not follow, however, that the volume of sales and promotional expenditures are irrelevant. As Hearing Officer Thompson observed in Hugo Boss AG v Jackson International Trading Co Kurt D Bruhl GmbH & Co KG (1999) 47 IPR 423 (“Hugo Boss”) at 436:
[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.
In 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: see, e.g., Isuzu-General Motors Australia Ltd v Jackeroo World Pty Ltd (1999) 47 IPR 198; Marks & Spencer plc v Effem Foods Pty Ltd (2000) AIPC 91-560; Photo Disc Inc v Gibson (1998) 42 IPR 473; and RS Components Ltd v Holophane Corp (1999) 46 IPR 451. This Court has followed this approach as well, acknowledging that public awareness of and regard for a mark tends to correlate with appreciation of the products with which that mark is associated, as evidenced by sales volume, amongst other things. Thus, in Toddler Kindy Gymbaroo Pty Ltd v Gymboree Pty Ltd [2000] FCA 618 (“Gymboree”), Moore J accepted at [94] that the applicant had established a reputation for the purposes of s 60 solely on the basis of use and promotion of the relevant mark. Another example of this approach is Nettlefold Advertising Pty Ltd v Nettlefold Signs Pty Ltd (1997) 38 IPR 495 (“Nettlefold”), in which Heerey J relied upon the public visibility of the applicant’s marks over approximately two decades as well as a $100,000 promotional campaign in finding that a reputation for the purposes of s 28 of the 1955 Act existed.[7]
[7] [2000] FCA 1335, [85]-[86].
In Rodney Jane Racing Pty Ltd v Monster Energy Company it was observed that:
The reputation of a trade mark has quantitative and qualitative dimensions. The quantitative dimension concerns the breadth of the public that are likely to be aware of the mark, which can be evidenced by the quantum of sales, advertising and promotion of goods or services to which the mark is applied. The qualitative dimension concerns the image and values projected by the trade mark, which affects the esteem or favour in which the mark is held by the public generally.[8]
[8] [2019] FCA 923, [83] (O’Bryan J).
Generally, reputation in the trade mark relied on by the Opponent, and the attendant likelihood of confusion, must be amongst a significant or substantial number of persons.[9]
[9] Le Cordon Bleu B.V. v Cordon Bleu International Ltee [2000] FCA 158, [84], [91] (Heerey J); Renaud Cointreau v Cordon Bleu International Ltee [2001] FCA 1170, [75] (Moore, Tamberlin, Goldberg JJ).
The Opponent relies on reputation it claims in the EnviroTREAD mark. The Opponent’s evidence indicates that it has used EnviroTREAD since at least 2016. However, while the Opponent has provided numerous case studies which demonstrate use of EnviroTREAD in relation to the Opponent’s Goods, most of these documents are undated and as such it is not possible to verify that most of the case studies relate to activities before the Relevant Date. Further, the Opponent has not provided any revenue figures or promotional expenditure associated with use of EnviroTREAD in relation to the Opponent’s Goods. There are also no other metrics provided, for example, distribution or download figures for the case study documents, or web analytics for visits to relevant pages of the Opponent’s website. Without such metrics, it is difficult to objectively determine the existence and extent of any reputation that may have accrued from the Opponent’s use of EnviroTREAD.
Based on the limited information provided, while the Opponent’s use of EnviroTREAD has probably generated some level of consumer recognition (most likely among former customers), I am not satisfied that the Opponent has established a reputation in EnviroTREAD in Australia.
As the evidence is insufficient to establish that the Opponent has a reputation in a relevant trade mark in Australia at the Relevant Date, I cannot conclude that the use of the Trade Mark is likely to cause confusion. As such, the ground under s 60 is not established.
Decision and costs
The Opponent has not established either of the grounds of opposition nominated in the SGP. As such, my decision is to register the Trade Mark.
Noting the appeal period, the Trade Mark should proceed to registration one month from the date of this decision. If the Registrar of Trade Marks is served with a notice of appeal before that time, registration should not occur until the appeal has been withdrawn or discontinued. Otherwise, the disposition of the opposition is a matter for the court.
The Applicant requested an award of costs. Costs usually follow the event. There being no reason to make an exception, I award costs against the Opponent.
Blake Knowles
Hearing Officer
Delegate of the Registrar of Trade Marks23 June 2022
Annexure A
EIA witness declarations
Declaration of John Jones, owner of Shoalhaven Engineering, made on 22 September 2021, with annexure.
Declaration of Brian Sumner, made on 24 October 2021, with annexures.
Declaration of Shane Lewis, owner of StepSafe Australia, made on 24 October 2021, with annexures.
Declaration of Robert Brealey, director of Arakon Engineering Pty Ltd, made on 17 September 2021, with annexures.
Declaration of William Petersen, owner of Agtrans Services, made on 17 September 2021, with annexures.
Declaration of Mark Robson, Manager of Clarence Valley Home Modifications, made on 25 October 2021, with annexure.
Declaration of Paul Martin, Manager of Hastings Home Modifications, made on 21 October 2021, with annexure.
Declaration of Todd Blaker, NSW Manager of Scavenger Supplies Pty Ltd, made on 27 October 2021, with annexures.
Declaration of Stevhen Calleja, Warehouse Manager of Envirowalk Warehouse, made on 25 October 2021, with annexures.
Declaration of John O’Donoghue, owner of the Last Straw Café, made on 23 September 2021, with annexures.
Declaration of Phil Moore, director of Beeton Pty Ltd, made on 30 October 2021, with annexures.
Declaration of Andrew Cairns, director of Cable Bridge Constructions, made on 29 September 2021, with annexure.
Declaration of Peter Markus, Principal of OpenSpace Infrastructure Australia, made on 15 September 2021, with annexures.
Declaration of Luke McShane, Director of Oceanview Jetty Constructions, made on 18 November 2021, with annexures.
Declaration of David Barrie, Director of Composite Engineering, made on 22 September 2021.
Declaration of Steven Barry, Director of FRP Engineering, made on 24 September 2021.
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