Evolve Group Pty Ltd and Poolrite IP Pty Ltd v Australian Saltworks Pty Ltd
[2023] ATMO 119
•21 August 2023
TRADE MARKS ACT 1995
DECISION OF A DELEGATE OF THE REGISTRAR OF TRADE MARKS WITH REASONS
Re:Opposition by Evolve Group Pty Ltd and Poolrite IP Pty Ltd to registration of trade mark application number 1948476 (class 1) – Revive – in the name of Australian Saltworks Pty Ltd
| Delegate: | Nicholas Barbey |
| Representation: | Opponents: Shauna Ross of counsel instructed by Davis IP Pty Ltd Applicant: Peter Creighton-Selvay of counsel instructed by Sladen Legal |
| Decision: | 2023 ATMO 119 Trade Marks Act 1995 (Cth) – opposition under s 52 – ss 42(b), 44, 58 and 60 pursued – s 44 established – evidence insufficient – registration of trade mark refused. |
Background
This decision concerns an opposition brought by Evolve Group Pty Ltd (‘Evolve’) and Poolrite IP Pty Ltd (together ‘Opponents’) pursuant to s 52 of the Trade Marks Act 1995 (Cth) (‘Act’) to registration of the following trade mark:
Trade mark: Revive (‘Trade Mark’)
Application number: 1948476
Owner: Australian Saltworks Pty Ltd (‘Applicant’)
Filing date: 15 August 2018
Specification: Class 1: raw salt; rock salt; salt for use in water including swimming pools and spas; magnesium salts for industrial use; magnesium salts for use in manufacturing processes; common salt (sodium chloride) and products predominately consisting of sodium chloride in this class (‘Goods’)
Endorsement: Provisions of paragraph 44(3)(b) and/or Reg 4.15A(3)(b) applied.
The acceptance of the Trade Mark for possible registration was advertised on 2 June 2021. The Opponents filed a notice of intention to oppose, followed by a Statement of Grounds and Particulars (‘SGP’) on 2 September 2021. The Applicant filed a notice of intention to defend on 19 November 2021.
Evidence in Support (‘EIS’) was filed by the Opponents and the Applicant filed Evidence in Answer (‘EIA’). In turn, the Opponents filed Evidence in Reply (‘EIR’) and an oral hearing was requested. Submissions were filed by the Opponents on 8 May 2023 (‘Opponents’ Submissions’) and by the Applicant on 15 May 2023 (‘Applicant’s Submissions’).
As a delegate of the Registrar of Trade Marks (‘Registrar’), I heard this matter by video conference on 22 May 2023. Shauna Ross of counsel presented submissions on behalf of the Opponents and Peter Creighton-Selvay of counsel presented submissions on the Applicant’s behalf.
Grounds of opposition, onus and standard of proof
The SGP nominated grounds of opposition under ss 42(b), 44, 58 and 60 of the Act. To be successful, the Opponents bear the onus of establishing at least one of these grounds.[1] If a ground of opposition is established in relation to all the Goods, consideration of the remaining grounds is not required.
[1] Food Channel Network Pty Ltd v Television Food Network GP [2010] FCAFC 58, [32] (Keane CJ, Stone and Jagot JJ).
The relevant standard of proof is the ordinary civil standard based on the balance of probabilities.[2] The date at which the rights of the parties are to be determined is 15 August 2018 (‘Relevant Date’), being both the filing and priority date of the Trade Mark.
[2] Telstra Corporation Limited v Phone Directories Company Pty Ltd [2015] FCAFC 156, [133] (Besanko, Jagot
Preliminary matter
On 21 May 2023, the Opponents filed a request to amend the SGP pursuant to reg 5.12 of the Trade Marks Regulations 1995 (Cth) (‘Regulations’) which relevantly provides:
Amendment of statement of grounds and particulars
(1) An opponent may request the Registrar to amend the statement of grounds and particulars to:
…
(c) add a new ground of opposition; or…
(2) The Registrar may grant the request on terms that the Registrar considers appropriate.
(3) However, the Registrar may grant a request to:(a) amend a ground of opposition; or
(b) add a new ground of opposition;only if the Registrar is satisfied that the amendment or addition relates to information of which the opponent could not reasonably have been aware at the time of filing the statement.
The Opponents’ request sought to add s 59 as a new ground of opposition. In essence, the new ground alleged that the Applicant did not intend to use the Trade Mark in relation to a subset of the Goods, namely magnesium salts, as at the Relevant Date. The alleged catalyst for this request was the following statement contained in the Applicant’s Submissions: ‘Australian Saltworks accepts that water softener salts are not “magnesium salts for industrial use” or “magnesium salts for use in manufacturing processes”’ (‘Statement’).[3] As the Opponents’ request was filed on the day prior to the hearing, submissions as to whether it should be granted were made at the hearing.
[3] Applicant’s Submissions, [2.2.32] (emphasis in original).
The Opponents assert that the Statement was significant because magnesium salts constitute two of the six items particularised in the Goods. In the Opponents’ view, the EIA reveals that the Trade Mark has only been used in relation to a water softener salt product and the Statement concedes that this product does not conform with magnesium salts. In this context, it was submitted that the Applicant did not, at the time the Statement was made, have an intention to use the Trade Mark in relation to magnesium salts. An inference can therefore be drawn that no intention existed at the time the application was filed because the EIA demonstrates that the Applicant’s water softener salt product has not changed since 2012. In short, the Statement crystallised the Opponents’ suspicion regarding the Applicant’s lack of intention to use the Trade Mark in respect of magnesium salts. The Opponents assert that they could not reasonably have been aware of this Statement at the time of filing the SGP since the Applicant’s Submissions were filed on 15 May 2023.
10. The Applicant submits that the request should be refused because it had been filed extremely late and without any proper explanation. In the Applicant’s opinion, granting the request would amount to a denial of procedural fairness as the SGP was filed approximately 20 months ago, yet the first time the Opponents provided any indication of amending it was the night before the hearing. The Applicant emphasised that the precipitating reason for adding the s 59 ground of opposition is based upon the EIA and not the Statement. That is, the substance of the proposed ground is that because the EIA only demonstrates use in relation to water softener salts, it can be inferred that the Applicant had no intention to use the Trade Mark in connection with magnesium salts. As such, the Applicant remarked that this was not a new factual matter and the Opponents’ request could have been filed a year ago irrespective of the Statement.
The arguments advanced by the Applicant are compelling. Plainly, the timing of the Opponents’ request is highly prejudicial to the Applicant as it was denied an opportunity to properly review the request or formulate a considered response. Moreover, I agree that the rationale underpinning the proposed s 59 ground of opposition ultimately rests on the disclosures made in the EIA. Properly distilled, the Statement is not of such fundamental importance to the rationale advanced that the Opponents’ request could only have been made after the Applicant’s Submissions were filed. The request could and should have been made after the EIA was filed on 23 May 2022. The delay of some 12 months thus weighs heavily against granting the request. Finally, there is a public interest in determining this proceeding promptly. Granting the request at this late stage would invariably result in delay given the Applicant is entitled to a reasonable opportunity in which to consider, address and, if necessary, prepare evidence in response to a new ground of opposition. For these reasons, the Opponents’ request to amend the SGP is refused.
Evidence
12. The following declarations were filed:
| EIS |
|
| EIA |
|
| EIR |
|
EIS
13. According to Knapp 1, the ‘Poolrite business’ was established in 1978 and it is a leader in the Australian pool industry with ‘a reputation for delivering high quality pool products’.[4] Mr Knapp explains that Poolrite IP Pty Ltd is ‘the holding company for most of the Intellectual Property in the Poolrite business’ and Evolve is related to the entity that ‘acquired all assets in the Poolrite business’.[5]
[4] Knapp 1, [4].
[5] Ibid [5]–[6].
14. On 2 August 2021, Evolve filed the following Australian trade mark application:[6]
Trade mark: REVIVE (‘Opponents’ Mark’)
Application number: 2199244
Priority date: 2 August 2021
Specification: Class 1: chemicals and chemical products for use in treating swimming pool water; minerals for use in pools, spas and bathing installations; mineral blends, including mineral blends of magnesium, potassium, sodium, boron and iodine for use in pools, spas and bathing installations; magnesium preparations for use in pools, spas and bathing installations
[6] This application has subsequently been assigned to Poolrite IP Pty Ltd.
15. Mr Knapp states that Evolve has continuously used the Opponents’ Mark in ‘relation to minerals and mineral products for use in treating swimming pool water’ since 2017.[7] It is declared that the products have been promoted under the Opponents’ Mark ‘by way of brochures, Point of Sale advertisements, catalogues, email marketing campaigns, trade displays and exhibitions, social media and websites’.[8]
[7] Knapp 1, [7], [13].
[8] Ibid [20].
16. Knapp 1 provides annual turnover figures derived from use of the Opponents’ Mark including the total number of units sold for each financial year. The figures disclosed, which span from 2017 to 2022, indicate sizeable year on year growth. In Mr Knapp’s opinion, there has been extensive use of the Opponents’ Mark and it has acquired a strong reputation in Australia.
The Symonds Declaration states that the Opponents’ representative filed a request with IP Australia under s 217A of the Act for all documents relating to the application for the Trade Mark. Exhibit JS-01 to the Symonds Declaration contains the documents obtained including the search report, research and correspondence exchanged between the examiner and the Applicant during the examination stage of the Trade Mark.
EIA
18. According to the McNamara Declaration, the Applicant is ‘a leading salt producer with a significant presence throughout the Australian salt market’.[9] Its principal functions are ‘to manufacture, refine, process, sell and distribute salt, together with a range of salt products’.[10] It is declared that the Applicant’s salt products are ‘tailored to meet the needs of all segments of the salt market including customers in the stockfeed, skin, hide, pool, water softening, drilling, textile, dust suppression, industrial and food markets’.[11]
[9] McNamara Declaration, [5].
[10] Ibid [6].
[11] Ibid.
19. Mr McNamara explains that the Applicant has held an intention to use the Trade Mark since at least December 2011 when it filed a trade mark application for ‘revive’ through the assisted filing service.[12] The Registrar’s preliminary assessment of the application identified the existence of grounds for rejection under ss 41 and 44 of the Act. To overcome these objections, the Applicant amended the application to ‘revive solar’ prior to filing it as a standard application under Part 4 of the Act. The application was subsequently examined and the trade mark achieved registration. Relevant details of this registration are:[13]
Trade mark: revive solar (‘RS Mark’)
Registration number: 1465444
Priority date: 5 January 2012
Specification: Class 1: raw salt; rock salt; salt for preserving, other than for foodstuffs; chemicals for use in swimming pools; iodised salts; magnesium salts for industrial use; magnesium salts for use in manufacturing processes; potassium salts, other than for medical purposes; salt for use in the dyeing industry; water softeners (preparations); water softening preparations; water treatment preparations (chemical); salt for the treatment of animal skins in the curing and tanning process; salt for use in swimming pools and spas; salt to improve water quality; salt for sanitation purposes; salt for ceramic glazing, brick glazing, dyes and textiles; water softening salt (‘RS Goods’)
[12] Regulations pt 3A.
[13] On 8 September 2022, Evolve filed a non-use application against this registration.
20. The Applicant commenced use of the RS Mark ‘in relation to its water softening product in 2012’[14] and Mr McNamara declares that the Applicant’s water softening product is currently distributed nationally under both the RS Mark and the Trade Mark. In his view, the Applicant together with its customers, potential customers and suppliers use the RS Mark and the Trade Mark interchangeably when referring to the Applicant’s product.
[14] McNamara Declaration, [19].
21. The McNamara Declaration clarifies that the Applicant has ‘a broad customer base dominated by retail and wholesale swimming pool salt and water softening salt customers (by number) but with a high proportion of volume being sold into the stockfeed and hide and skin markets (by volume)’.[15] Annual revenue figures from the past 10 years pertaining to sales of the Applicant’s water softening product under the RS Mark and/or the Trade Mark are also provided.
[15] Ibid [28].
22. An overview of how salt is used in the water softening process is detailed in the McNamara Declaration. Relevantly, hard water is ‘[w]ater that has a higher than normal concentration of calcium and magnesium’ and water softening is ‘a filtration process in which high concentrations of calcium and magnesium ions are removed from hard water’.[16] The failure to soften hard water is said to have detrimental impacts on the performance and lifespan of equipment. Mr McNamara explains that water softening systems are used to carry out the filtration process and salt is used to maintain the water softening systems. He states that ‘salt is critical for the brine that regenerates water softening systems and … this is to be distinguished from the use of salt as a “balancing” or other impact agent in the treatment of waste water or sanitation generally’.[17] On this basis, Mr McNamara asserts that ‘[w]ater softening salt is not used to treat the water, rather the equipment used’.[18]
[16] Ibid [32.1]–[32.2].
[17] Ibid [32.3].
[18] Ibid.
23. In Mr McNamara’s experience, ‘[m]anufacturers of salt products commonly sell a broad range of salt products including salt for swimming pools and water softeners’.[19] To support this, he observes that the Applicant’s customers who purchase its water softening products also purchase its swimming pool salt products. Likewise, Mr McNamara remarks that other traders such as ‘Cheetham Salt’ and ‘Morton Salt’ also provide water softening salts as well as swimming pool salts.
EIR
[19] Ibid [34].
24. The Gannon Declaration explains that Amic Pools is a business which specialises in building concrete pools. Mr Gannon has worked in the pool industry for over 25 years and declares that he also oversees the running of Magnatech Pool Centre which is a retailer of pool and spa supplies and equipment. Mr Gannon states that he has ‘a wealth of knowledge on the range of sanitisation systems available for swimming pools and spas’.[20] In his experience, ‘water softener salts are not designed for, or even suitable for, use in swimming pools and spas’ and he would not expect ‘water softener salts to be sold in the same retail, wholesale or trade outlets as pool salts or mineral pool formulations’.[21]
[20] Gannon Declaration, [4].
[21] Ibid [7].
25. Knapp 2 provides additional information regarding differences between water softener salts, pool salts and mineral pool formulations. Mr Knapp declares that ‘water softener products are not applied to the body of water being treated, but rather to the water softening device used to treat the water’ and his understanding is that ‘water softener products are not designed to, and do not, sanitize the body of water’.[22] Meanwhile, pool salts are described as being ‘typically sodium chloride based and used to disinfect pools and prevent the growth of algae and bacteria’.[23]
[22] Knapp 2, [3].
[23] Ibid [4].
26. Mr Knapp states that the water softening product offered under the Opponents’ Mark is ‘an alternative to traditional pool salts and is suitable for all salt and mineral swimming pool systems’.[24] The Opponents’ product predominantly consists of magnesium and also contains ‘a proprietary blend of essential minerals and elements including iodine and boron, together with 10 - <30% sodium chloride’.[25] Similar to pool salts, the product provided under the Opponents’ Mark is added directly to the body of water in a pool and it needs to be quickly mixed into the water.
[24] Ibid [5].
[25] Ibid.
27. Knapp 2 also responds to the EIA. Attention is drawn to the information listed in the Applicant’s product description.[26] Mr Knapp considers this information to be important as it shows that the Applicant’s product has a ‘very coarse grain size typically averaging around 8mm’.[27] In Mr Knapp’s experience, this large grain size makes it unsuitable for use in pools or spas because the grain size of pool salt is ‘typically 0.8-1.55mm’ and anything larger than this ‘would take too long to dissolve’.[28] Mr Knapp is also critical of the EIA insofar as it allegedly does not explain the trade channels through which pool salt and water softener salt are sold.
Discussion
[26] McNamara Declaration, Exhibit MCN-05.
[27] Knapp 2, [7].
[28] Ibid [8].
Section 44
28. Section 44 of the Act relevantly provides:
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.
...
(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.
...
(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.
29. To establish this ground, the Opponents must identify at least one trade mark which satisfies the following requirements:
it is in the name of a person other than the Applicant (‘First Requirement’);
it has a priority date which is earlier than the Relevant Date (‘Second Requirement’);
it is substantially identical with, or deceptively similar to, the Trade Mark (‘Third Requirement’); and
it is in respect of goods and/or services which are either similar and/or closely related to the Goods (‘Fourth Requirement’).
30. The Opponents’ Submissions nominated the following trade mark registration as the basis for this ground of opposition:
Trade mark: R3vive (‘Prior Mark’)
Registration number: 1714448
Owner: VRM International Pty Ltd
Filing date: 13 August 2015
Specification: Class 1: organic, non-chemical balancing agents used in managing odour in waste and waste water (‘Prior Goods’)
31. By way of background, the Prior Mark also formed the basis of a s 44 ground for rejection raised during the examination stage of the Trade Mark. Over the span of five examination reports, the Applicant unsuccessfully attempted to overcome this objection by arguing that the respective goods were dissimilar and/or by proposing various exclusions to the Goods.[29] The examination history reveals that the acceptance of the Trade Mark was only achieved when the Applicant persuaded the examiner that, due to the existence of the RS Mark, it was proper to apply the provisions of s 44(3)(b) of the Act.
[29] Symonds Declaration, Exhibit JS-01.
Turning to the matter at hand, the Prior Mark is registered by another person and has a priority date of 13 August 2015 which is earlier than the Relevant Date. The First and Second Requirements are satisfied.
33. With respect to the Third Requirement, the Opponents’ Submissions did not address substantial identity. Instead, the Opponents claimed that the Prior Mark is at least deceptively similar to the Trade Mark. For completeness, I do not consider the trade marks to be substantially identical. The test for ‘substantial identity’ was articulated by Windeyer J in Shell Company of Australia Ltd v Esso Standard Oil (Australia) Ltd (‘Shell’):
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.[30]
[30] [1963] HCA 66, [12] (‘Shell’).
34. The trade marks are reproduced below:
| Trade Mark | Prior Mark |
| Revive | R3vive |
35. When compared side by side, the Trade Mark incorporates the standard Latin alphabet letter ‘e’ as its second letter whereas the numeral ‘3’ is utilised in the corresponding position of the Prior Mark. This difference would not be overlooked and it results in a total impression of dissimilarity emerging from the relevant comparison. As such, the Prior Mark is not substantially identical to the Trade Mark.
36. Section 10 of the Act provides that ‘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 assessment of deceptive similarity was considered in Shell by Windeyer J who said:
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 [mark].[31]
[31] Ibid [13].
37. The Opponents contend that the trade marks have obvious and striking similarities. Specifically, the trade marks are identical save for the ‘slight shift in the use of the “3” instead of an “E”’.[32] In the Opponents’ view, the ‘oral pronunciation will be identical’ and consumers would be caused to wonder given they ‘are accustomed to extensions of, and subtle variations to brands’ in the marketplace.[33]
[32] Opponents’ Submissions, [111].
[33] Ibid.
38. Conversely, the Applicant submits that the trade marks are not deceptively similar and stressed that more than mere similarity is required. In its view, the trade marks are visually dissimilar given the replacement of the ‘e’ with the number ‘3’ in the Prior Mark is an unusual and distinctive element. Further, the Applicant submits that the Prior Mark would be pronounced as ‘R – 3 – vive’ and this imports phonetic differences between the trade marks.
39. In my assessment, the trade marks are deceptively similar. Visually, each trade mark consists of a plain six letter word that commences with an ‘r’ and terminates with the suffix ‘vive’. The sole difference is that the Trade Mark contains a standard Latin alphabet letter ‘e’ as its second letter while the Prior Mark incorporates the numeral ‘3’ in the corresponding position. However, the significance of this solitary difference is negligible given it is common for traders to modify words by substituting a letter with a numeral.[34] In this context, supplanting the letter ‘e’ with the numeral ‘3’ is an obvious numeric alternative given ‘3’ resembles a backwards capitalised ‘e’ (i.e., ‘E’). This variation thus has little, if any, visual impact within the Prior Mark. Indeed, in the context of imperfect recollection, conceivably a consumer may not even discern or recall this minor variation. It follows that the trade marks retain strong visual similarities.
[34] This form of modified spelling is, for example, recognised as ‘leet’ which may be defined as ‘noun a coded form of communication used on the internet, in which numbers or other characters replace letters’. See Macquarie Dictionary (online at 11 August 2023) ‘leet’ (def 2).
40. An aural comparison of the trade marks reveals further similarities. The Applicant’s proposition that consumers would pronounce the Prior Mark as ‘R – 3 – vive’ is not persuasive. In my view, this would be a laboured pronunciation that requires consumers to dissect the Prior Mark and articulate it in an unusually elongated manner. It is more probable that ordinary consumers encountering or attempting to recall the Prior Mark would adopt an orthodox approach and enunciate it as a single word. This is especially so given the letters and numeral in the Prior Mark are run together. As such, the Prior Mark would likely be pronounced in a highly similar, if not identical, manner to the Trade Mark.
41. Conceptually, the Prior Mark is technically an invented word because it does not adhere to traditional spelling conventions. However, for the reasons detailed above, it is likely that ordinary consumers will readily apprehend the Prior Mark as being the word ‘revive’ with a minor spelling variation. Put differently, it is improbable that a consumer, upon discerning the minor substitution of the letter ‘e’ with the numeral ‘3’, would immediately dissociate the Prior Mark from the word ‘revive’. On this basis, the trade marks convey fundamentally the same idea notwithstanding the spelling variation in the Prior Mark.
42. Additionally, I have considered the fact that prospective consumers may exercise greater care when selecting the goods given they are not likely to be impulsively purchased. To some extent this may be true, however, I agree with the Opponents that this circumstance does not render the possibility of confusion remote or fanciful. The strong visual, aural and conceptual similarities that exist between the trade marks are such that a real tangible danger of deception or confusion occurring exists notwithstanding the additional care consumers may exercise when purchasing the goods.
43. Overall, when the trade marks are considered in their entirety giving due regard to the impression that they would produce on the mind of potential consumers, I am satisfied that the Prior Mark so nearly resembles the Trade Mark that it is likely to deceive or cause confusion. The Third Requirement is satisfied.
44. As regards to the Fourth Requirement, s 14(1) of the Act provides:
Definition 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.
45. The guiding factors for determining if goods are similar are well settled and involves a holistic consideration of:
[T]he 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 (63 R.P.C. 59), 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.[35]
[35] Application by John Crowther & Sons (Milnsbridge) Ltd (1948) 65 RPC 369, 372.
46. For the purposes of comparison under s 44 of the Act, it is the notional scope of the respective goods that must be considered.[36] To this end, it has been observed that ‘the classification of goods and services according to classes is primarily a matter of convenience in administration’ and hence the ‘nomination of a class for particular goods is not decisive as to the scope of a given registration’.[37]
[36] Berlei Hestia Industries Ltd v Bali Co Inc [1973] HCA 43, [11] (Mason J).
[37] Energy Beverages LLC v Cantarella Bros Pty Ltd [2023] FCAFC 44, [132] (Yates, Stewart and Rofe JJ).
47. The Opponents submit that the expression ‘goods of the same description’ should not be ‘given too restrictive a construction so as to be limited to goods substantially analogous in kind, or commonly used as mere substitutes or alternatives’.[38] In the Opponents’ opinion, the Prior Goods and the Goods overlap ‘in the sense that all the claims relate to agents and preparations for treatment of water’.[39] Meanwhile, the Applicant contends that the goods are not similar when the nature, use and trade channels of the respective goods are properly considered.
[38] Opponents’ Submissions, [117] n 60 which cited: Re J Lyons & Co Ltd's Application [1959] RPC 120 at 128 per Lord Evershed MR.
[39] Ibid [119].
48. In my view, the Prior Goods are similar to the Goods when the true scope of each specification is considered. This is particularly so as the specification of the Prior Goods is broadly drafted, with the only qualification being that the ‘balancing agents’ are particularised as i) organic, ii) non-chemical and iii) for use in managing odour in waste and waste water.[40] A ‘balancing agent’ is a broad term which essentially encompasses any good capable of stabilising or offsetting the value of one thing with another.[41] Salts are clearly capable of being construed as a ‘balancing agent’ insofar as, for example, salts are an agent that can balance the ion composition of water.
[40] The Prior Goods are not confined to managing odour in waste water alone given ‘waste’ would notionally include solids.
[41] Macquarie Dictionary (online at 11 August 2023) ‘agent’ (defs 3 and 10) may be defined as ‘a natural force or object producing or used for obtaining specific results’ or ‘Chemistry a substance which causes a reaction’.
49. With respect to the Goods, the items which appear in this specification have not been limited to a discrete or specialised purpose. In this context, the Goods would notionally include, for example, ‘common salt (sodium chloride) for sanitation purposes’ or ‘salt for use in water sanitation’. Sanitation involves the management of odours by neutralisation or other means. As such, the various salts are notionally capable of being used for any purpose and this would include corresponding use to the Prior Goods as a ‘balancing agent’ for managing odours in waste and waste water.[42]
[42] I acknowledge that the claims for magnesium salts are specified as being ‘for industrial use’ and ‘manufacturing processes’. However, the drafting of these items remains wide enough to include, for example, magnesium salts for industrial sanitation and magnesium salts that are used for sanitation in manufacturing processes.
50. I have considered the Applicant’s submission that the Prior Goods must be organic due to the drafting of the specification. Based on a dictionary definition of ‘organic’[43] the Applicant posits that such goods are derived from living organisms, whereas salt is inorganic because it is ‘not derived from living animal or plant organisms’.[44] The Applicant opines that it ‘would be nonsensical to describe an “inorganic” good as being of the same description as an “organic” good’.[45] It is true that the goods encompassed by the Prior Goods are particularised as being organic. If I accept the Applicant’s construction of salt, the Prior Goods and any salt goods would be mutually exclusive based on this characteristic alone. However, taken at its highest, this line of reasoning only addresses the degree of similarity contemplated by s 14(1)(a) of the Act. It is no answer to s 14(1)(b) of the Act because that subsection only requires similarity in the sense that the goods be of the same description. Goods with essentially the same use and which are sold through the same trade channels, as is the case here when notional use is considered, are clearly capable of being goods of the same description notwithstanding that one may be organic and the other inorganic.
[43] Applicant’s Submissions, [3.4.2(1)] which states: ‘The Macquarie Dictionary, 8th edition, defines “organic” as meaning “1. Chem. denoting or relating to a class of compounds which formerly comprised only those existing in or derived from living organisms (animal or plant)… 2. Characteristic of, relating to, or derived from living organisms”’ (emphasis omitted).
[44] Ibid.
[45] Ibid.
51. Similarly, the Applicant submits that the Opponents ‘have provided no evidence to suggest that any of the [Goods] would be appropriate to use as a balancing agent in managing odour in waste and waste water’. This is not persuasive in view of the Applicant’s evidence indicating that salts can and are used in the treatment of waste water. This can be deduced from Mr McNamara’s statement that water softening salt ‘is to be distinguished from the use of salt as a 'balancing' or other impact agent in the treatment of waste water or sanitation generally’.[46] It is also self-evident from the scope of the RS Goods claimed by the Applicant which contains items such as ‘salt for sanitation purposes’. The Fourth Requirement is satisfied.
[46] McNamara Declaration, [32.3] (emphasis added).
52. Accordingly, the Opponents have in principle established the s 44 ground of opposition. However, the s 44 ground of opposition may be overcome if the Applicant is able to demonstrate that it has continuously used the Trade Mark in respect of the conflicting goods for a period beginning before the priority date of the Prior Mark and ending on the Relevant Date.[47] Alternatively, the application to register the Trade Mark may be accepted if there has been honest concurrent use of the trade marks or that, because of other circumstances, it is proper to do so.[48]
Prior continuous use
[47] Act s 44(4).
[48] Ibid s 44(3).
The Applicant contends that it first used the Trade Mark, or the Trade Mark with additions or alterations that do not substantially affect its identity, before 13 August 2015 (being the priority date of the Prior Mark). In its view, the Trade Mark should be accepted under s 44(4) of the Act because the EIA demonstrates use of the Trade Mark, the RS Mark and also the following trade marks since at least July 2011:
| Composite Mark | Device Mark |
54. The Opponents reject this contention and assert that the EIA only demonstrates use of the RS Mark and the Device Mark. That is, the EIA fails to demonstrate any relevant use of the Composite Mark or the Trade Mark. The Opponents claim that neither the RS Mark or the Device Mark constitutes use of the Trade Mark because, amongst other things, ‘solar’ constitutes an addition to the Trade Mark which substantially affects its identity.
The Opponents’ arguments have considerable merit. With respect to the Composite Mark, the Applicant is unable to rely on this evidence for the following reasons. First, the Composite Mark only appears in two documents within the EIA, one dated 1 July 2011 and the other dated 3 April 2012.[49] Counsel for the Opponents highlighted anomalies that existed in both documents which indicate that these were internal drafts and never publicly circulated. Second, even if the aforesaid is put to one side, the Applicant faces an insurmountable obstacle because there are no other examples of the Composite Mark appearing within the EIA despite it purportedly demonstrating nearly a decade’s worth of use by the Applicant. The overwhelming majority of examples provided show use of the Device Mark and, to a lesser extent, the RS Mark. In these circumstances, determining whether either document demonstrates use of the Trade Mark is a redundant exercise. This is because the EIA makes it plain that the Composite Mark has not been continuously used, if at all, by the Applicant since April 2012.
[49] McNamara Declaration, Exhibits MCN-5, MCN-07.
56. In relation to use of the Trade Mark, being ‘Revive’ simpliciter, the Applicant argued this is evidenced by the Applicant’s internal emails as well as in correspondence between the Applicant and its customers or suppliers.[50] The Opponents disagreed and emphasised that the alleged use must be viewed in the context of the material as a whole. Reference was made to Self Care IP Holdings Pty Ltd v Allergan Australia Pty Ltd wherein the High Court of Australia observed:
Whether a sign has been "use[d] as a trade mark" is assessed objectively without reference to the subjective trading intentions of the user. As the meaning of a sign, such as a word, varies with the context in which the sign is used, the objective purpose and nature of use are assessed by reference to context. That context includes the relevant trade, the way in which the words have been displayed, and how the words would present themselves to persons who read them and form a view about what they connote.[51]
[50] Ibid Confidential Exhibit MCN-08.
[51] [2023] HCA 8, [24] (Kiefel CJ, Gageler, Gordon, Edelman and Gleeson JJ).
57. The correspondence in evidence, over which the Applicant has claimed confidentiality, are not cogent examples of the Trade Mark in use for the purposes of s 44(4) of the Act. I agree with the Opponents’ characterisations that these instances of ‘Revive’ simpliciter are either ‘stray references’ to the RS Mark or are enquiries made by customers. The former does not objectively assist given the unambiguous context of each correspondence exhibited concerns a product bearing the RS Mark as indicated by, for example, the subject line or accompanying attachments. Meanwhile, the latter is not use of the Trade Mark by the Applicant and hence does not advance its case. For these reasons, these examples do not demonstrate persuasive evidence of use of ‘Revive’ simpliciter.
58. As regards to the RS Mark and the Device Mark, it appears to be common ground that the EIA demonstrates prior continuous use of each trade mark up to the Relevant Date. The Applicant will potentially be able to overcome the s 44 ground of opposition if either of these examples qualify as use of the Trade Mark for the purposes of the Act. The crux of this dispute thus turns on whether either mark constitutes use of the Trade Mark with additions or alterations that do not substantially affect its identity. In particular, the significance of the ‘solar’ element, which is common to both the RS Mark and the Device Mark, must be evaluated.
59. The expression ‘with additions or alterations that do not substantially affect the identity of the trade mark’ appears in s 7(1) of the Act and it has been interpreted to require that the two trade marks being compared must be substantially identical.[52] The test for determining substantial identity was outlined in Shell and involves a side by side comparison of the trade marks.[53] In assessing whether the relevant trade marks are substantially identical, due regard must be given to the essential elements of each trade mark noting that the essential elements are unlikely to be found in mere descriptive elements.[54]
[52] PDP Capital Pty Ltd v Grasshopper Ventures Pty Ltd [2021] FCAFC 128, [161] (Jagot, Nicholas and Burley JJ).
[53] See [33] of this decision.
[54] Pham Global Pty Ltd v Insight Clinical Imaging Pty Ltd [2017] FCAFC 83, [52] (Greenwood, Jagot and Beach JJ).
60. The Opponents claim that the addition of ‘solar’ substantially affects the identity of the Trade Mark because the RS Mark is presented in a unified manner with each element being apportioned equal weight. The Opponents argue that ‘solar’ is not a merely descriptive element given there is no evidence filed to substantiate this and the preliminary assessment history of the Trade Mark, as disclosed by Mr McNamara, indicates that ‘solar’ was added to the Trade Mark to overcome a distinctiveness objection. By contrast, the Applicant submits that the essential element of each trade mark is ‘Revive’. It submits that ‘solar’ is descriptive since it refers to ‘the process by which salt is extracted from brine using evaporation’[55] and appears in one sentence of the Applicant’s product description.[56] As such, the Applicant asserts that ‘solar’ does not form an essential element for comparative purposes.
[55] Applicant’s Submissions, [2.2.7]
[56] See, eg, McNamara Declaration, Exhibit MCN-09 in which the Applicant’s product description states ‘Revive Solar Water Softener Salt is a naturally evaporated washed solar salt with a very coarse grainsize’.
61. Based on the evidence filed, ‘solar’ is likely to be perceived as an essential element of the RS Mark. I accept that ‘solar’ seemingly retains a descriptive quality in relation to the Goods given, by definition,[57] it refers to the sun. By deduction, ‘solar’ could potentially be interpreted as denoting the process in which salt is extracted via evaporation caused by the sun. However, in the absence of probative evidence, it is not apparent how ‘solar’ falls within the bounds of a mere descriptive element. As counsel for the Opponents remarked, ‘solar’ simply does not sit in the same descriptiveness category as, for example, ‘radiology’ for radiological services. I agree and reiterate that, aside from a passing reference in its product description, the Applicant has led no evidence to establish the descriptiveness of ‘solar’ in the context of the Goods. As such, the addition of ‘solar’ substantially affects the identity of the Trade Mark. It follows that use of the RS Mark does not assist the Applicant in establishing prior continuous use. In my opinion similar reasoning applies equally to the Device Mark which contains additional points of dissimilarity such as the large, stylised water drop image.
[57] Macquarie Dictionary (online at 15 August 2023) ‘solar’ (def 1) may be defined as ‘of or relating to the sun’.
62. Accordingly, the evidence filed is not sufficient to apply the provisions of s 44(4) of the Act.
Honest concurrent use
A prerequisite to establishing honest concurrent use under s 44(3)(a) of the Act is that the evidence must demonstrate concurrent use of the Trade Mark before the Relevant Date. For the reasons discussed in relation to prior continuous use, the EIA does not establish that there has been any concurrent use of the Trade Mark before the Relevant Date. Consequently, the evidence filed is not sufficient to apply the provisions of s 44(3)(a) of the Act.
Other circumstances
64. The Applicant submits that a relevant circumstance in this proceeding is the RS Mark which has been registered since 2012. To support this, attention was drawn to Part 28.4 of the Trade Marks Office Manual of Practice and Procedure (‘Manual’) which provides guidance to the effect that a relevant consideration is an applicant’s earlier registered trade mark ‘that is substantially the same trade mark, for similar goods and/or services’. In the Applicant’s opinion, the examiner did not err in accepting the Trade Mark under s 44(3)(b) of the Act and the Opponents have failed ‘identify any reason to depart from the conclusion of the examiner in this respect’.[58]
[58] Applicant’s Submissions, [3.5.3].
65. The Opponents point out that there is no legal requirement to follow the circumstances outlined in the Manual. More generally, the Opponents observed that the state of the Australian Register of Trade Marks has changed over time since the RS Mark was first registered and thus minimal weight should be given to its existence.
66. For the reasons which follow, I do not consider that the mere existence of the prior registration of the RS Mark makes it proper to accept the application under the provisions of s 44(3)(b) of the Act. First, the fact that the provisions of s 44(3)(b) were applied at the examination stage of the Trade Mark does not mandate that I must do likewise. The examiner’s decision is not binding and there has been evidence filed in this proceeding which was not put before the examiner.
67. Second, the history of the RS Mark reveals that the Applicant is aware of the differences that exist between the RS Mark and the Trade Mark. The Applicant was legally represented during the preliminary assessment stage of the application for the RS Mark and, crucially, it elected to amend ‘revive’ to ‘revive solar’ as a means of overcoming the objections identified. In this context, it would not be reasonable, let alone proper, for the Applicant to now rely on the registration of the RS Mark as a circumstance to justify the acceptance of the Trade Mark. Furthermore, the EIA contains packaging examples of the Applicant’s water softener salt product which reveals the Applicant has primarily used the Device Mark, not the RS Mark.
68. While it is true that there is no legal obligation to follow the guidance set out in the Manual,
s 44(3)(b) of the Act is broadly expressed and the Registrar has previously considered an applicant’s prior registration(s) to be relevant other circumstances.[59] The Applicant has referenced Chris Staats v Click Loans Pty Ltd (‘Staats’)[60] as being analogous to the present proceeding.[61] In Staats, the delegate was satisfied that the applicant’s prior registrations for ‘CLICK’ and ‘CLICK LOANS’[62] were sufficient other circumstances to enable registration of the following trade mark[63] for various loan and credit services in class 36:
[59] See, eg, Active Skin Pty Ltd v Yey Pty Ltd [2018] ATMO 194; The Design Hunter Pty Ltd v Indesign Publishing Pty Ltd [2016] ATMO 111.
[60] [2018] ATMO 116 (‘Staats’).
[61] Symonds Declaration, Exhibit JS-01.
[62] See Australian trade mark registration numbers 702790 and 1744687.
[63] Australian trade mark registration number 1744728.
69. In reaching this conclusion, the delegate observed:
[T]he Applicant is also the owner of the plain text trade mark CLICK LOANS, registered in respect of largely the same services as the Trade Mark. That registration has the same priority date as the Trade Mark. To that end, it would be somewhat futile to refuse registration of the Trade Mark in the face of its plain text counterpart being registered in the Applicant’s name. The graphic elements of the Trade Mark are not so distinctive that the character of registration 1744687 is significantly different to that here.[64]
[64] Staats (n 60) [30] (emphasis added).
70. I consider that the circumstances and decision in Staats is readily distinguished. Here, the Applicant does not have a prior registration for ‘revive’ simpliciter or, for that matter, a stylised depiction of ‘revive’. It relies upon the earlier registration of the RS Mark which is a combination of the Trade Mark and the word ‘solar’. As aforementioned, ‘solar’ is an essential element of the RS Mark and its presence means that the identity of the RS Mark differs to the Trade Mark. The rights granted by the Applicant’s registration of the RS Mark are thus narrower in scope to the prior registration rights held by the applicant in Staats. It follows that Staats is not on all fours with the present matter and refusal of the Trade Mark would not be ‘futile’ in the circumstances.
71. For the above reasons, I am not satisfied that it is appropriate to apply the provisions of ss 44(3) or (4) to accept the application. Accordingly, the s 44 ground of opposition has been established.
Decision
72. Section 55 of the Act relevantly provides:
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.
73. The Opponents have established a ground of opposition. Accordingly, I refuse to register trade mark application 1948476.
Costs
74. Both parties have sought an award of costs. Costs usually follow the event. Accordingly, I award costs against the Applicant per s 221 of the Act in the amounts set out in Schedule 8 of the Regulations.
Nicholas Barbey
Hearing Officer
Delegate of the Registrar of Trade Marks
21 August 2023
and Edelman JJ).
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