F F Seeley Nominees Pty Ltd and Seeley International Pty Ltd v Climate Technologies Pty Ltd

[2017] ATMO 72

TRADE MARKS ACT 1995

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

ReOppositions by F F Seeley Nominees Pty Ltd and Seeley International Pty Ltd to registration of trade mark applications 1683685 (11) – HushWing and 1689803 (11) HUSHDRIVE - in the name of Climate Technologies Pty Ltd

Delegate:                 Robert Wilson

Representation:       Opponent: Campbell Thompson of Counsel, instructed by Vanessa Gore of Fisher Jefferies

Applicant: not represented

Decision:                   2017 ATMO 72

Trade Marks Act 1995 (Cth) - Section 52 opposition: s 60 considered – deception or confusion likely because of reputation of Opponent’s trade mark – registration refused

Background

1.     This decision concerns an opposition brought by F F Seeley Nominees Pty Ltd and Seeley International Pty Ltd (together ‘the Opponents’) pursuant to s 52 of the Trade Marks Act 1995 (‘the Act’) to registration of the trade marks the subject of the applications detailed below in the name of Climate Technologies Pty Ltd (‘the Applicant’):

Application Number:	1683685
Filing Date:	26 March 2015
Goods:	Class 11: Air conditioning, heating, cooling and ventilating apparatus; parts and accessories for air conditioning, heating, cooling and ventilating apparatus
Trade Mark:	HushWing	(‘HushWing Trade Mark’)

Application Number:	1689803
Filing Date:	27 April 2015
Goods:	Class 11: Air conditioning, heating, cooling and ventilating apparatus; parts and accessories for air conditioning, heating, cooling and ventilating apparatus
Trade Mark:	HUSHDRIVE	(‘HUSHDRIVE Trade Mark’)

2.     On 20 August 2015 and 17 September 2015, respectively, the acceptance of the applications for possible registration were advertised in the Australian Official Journal of Trade Marks. The Opponent filed Notices of Intention to Oppose the registrations on 20 October 2015 and 17 November 2015, and Statements of Grounds and Particulars (‘the SGPs’) on 20 November 2015 and 16 December 2015 respectively. The Applicant filed Notices of Intention to Defend on 14 December 2015 and 22 January 2016. The SGPs, which are essentially identical in their particulars raised grounds of opposition under ss 42, 44, 58, 59, 60 and 62A of the Act.

3.     Once the time allowed for filing evidence had ended the Opponent requested an oral hearing. I heard the matter in Canberra on 20 June 2017 as a delegate of the Registrar of Trade Marks. Campbell Thompson of Counsel instructed by Vanessa Gore of Fisher Jeffries appeared for the Opponent. Also present was Paul Munster. Mr Thompson’s oral submissions were supplemented by written submissions filed with IP Australia, in accordance with my earlier directions, on 2 June 2017. The Applicant was not represented at the hearing and did not make written submissions.

Evidence

4.     The parties filed the same evidence in both matters being:

Evidence in Support (‘EIS’):

·Declaration made on 23 March 2016 by Paul Munster, joint Company Secretary of F F Seeley Nominees Pty Ltd (‘Seeley Nominees’) and joint Company Secretary and General Counsel of Seeley International Pty Ltd (‘Seeley International’), with Exhibits PM-1 to PM-11 (‘Munster 1’).

Evidence in Answer (‘EIA’):

·Statutory Declaration made on 5 July 2016 by David Scott Aird, Chief Financial Officer of the Applicant, with Exhibit DSA-1 (‘the Aird Declaration’); and

·Statutory Declaration made on 24 June 2016 by Michael Peter Squires, a registered patent and trade mark attorney and partner of Phillips Ormonde Fitzpatrick, attorneys for the Applicant, with Exhibits MPS-1 and MPS-2 (‘the Squires Declaration’).

Evidence in Reply (‘EIR’):

·Declaration made on 15 September 2016 by Paul Munster, with Exhibits PM‑12 and PM-13 (‘Munster 2’).

5.     In addition to Munster 2 there were three declarations which were filed as evidence in reply. They are:

·Declaration made on 25 October 2016 by Paul Munster, with Exhibits PM‑14 and PM-15 (‘Munster 3’);

·Declaration made on 25 October 2016 by Andrew Knowles, the managing director of Knowles Airconditioning and Plumbing Pty Ltd, with Exhibit AK‑1 (‘the Knowles Declaration’); and

·Declaration made on 25 October 2016 by Greg Smyth, the managing director of Darebin Gas (‘the Smyth Declaration’).

6.     These additional declarations were filed outside of the time allowed for filing the EIR in respect of the HUSHDRIVE opposition but within time in respect of the HushWing opposition. No application has been made under reg 5.15 of the Trade Mark Regulations 1995 (Cth) for an extension of time to file those documents in the HushWing opposition. However, the Opponent requested that the material be considered in the HUSHDRIVE matter as allowed by reg 21.19. In the end it was unnecessary that the additional declarations be taken into account in making my decision, so it is unnecessary to discuss the reg 21.19 question further.

7.     Once the time allowed for filing evidence had ended the Opponent requested an oral hearing. After filing its EIA the Applicant took no further part in the opposition process.

The Opponent

8.     According to Munster 1:

Seeley Nominees is the parent of Seeley International. … Seeley Nominees is the registered owner of more than 400 patents and trade marks in Australia and worldwide. Seeley International is authorised to use those patents and trade marks.

Seeley[1] is Australia’s largest air-conditioning manufacturer. The business it operates was founded by Frank Seeley, AM FAICD in 1972 … and since then has grown to become a global leader in the design and manufacture of portable and ducted cooling and heating solutions for the residential, commercial, and industrial markets. Seeley current exports its products to over 120 countries worldwide.

Seeley currently employs around 400 employees. It has three manufacturing facilities. The first is in Lonsdale, South Australia (which is also the head office), the second is in Albury, New South Wales, and the third is in Denver, Colorado, United States of America. It has an office in the capital city of each mainland Australian state, and has offices in the United States, United Kingdom, Italy, France, and South Africa.

Seeley’s products

The brands that Seeley manufactures in Australia include [Breezair, Braemar, and Coolair roof mounted evaporative air-conditioners] …

Seeley’s innovation and awards

Seeley has built a reputation in Australia and globally for quality, service, innovation, safety, reliability, and integrity. … Over the years Seeley has developed and released many products that are ‘world-firsts’. These world-first products were all designed and manufactured by Seeley in Australia, and include the following:

othe world’s first all-plastic cooler;

othe world’s first all-plastic rooftop evaporative air-conditioner, which was a breakthrough enabling the whole rooftop evaporative air-conditioning market in Australia to grow from 12,000 units installed each year to around 70,000. …

othe world’s first direct drive fan motor to which the trademark Hushpower® is applied; …

[1] Mr Munster indicated earlier in his declaration that a reference to ‘Seeley’ indicated a reference, jointly and severally, to Seeley Nominees and Seeley International.

Trade Mark HUSHPOWER

In 2002 to 2003 Seeley developed a direct drive fan motor for cooling systems and evaporative air-conditioners that was completely corrosion resistant, more energy efficient, quieter, safer, and more reliable than traditional fan motors used in evaporative air conditioners. …

Seeley adopted the trade mark HUSHPOWER for use in connection with its motor …

9.     Seeley Nominees is the owner of the registered trade marks detailed below:

Trade Mark Number:	809684
Priority Date:	11 October 1999
Goods:	Class 11: Evaporative coolers and heaters
Trade Mark:	BRAEMAR HUSHPOWER

Trade Mark Number:	965848
Priority Date:	8 August 2003
Goods:	Class 11: Apparatus for heating, cooling, ventilating, air conditioning, and installations thereof; air driers, air re-heaters, central heating radiators, drying apparatus, desiccating apparatus, and installations thereof; refrigerators and refrigerating equipment, and installations thereof; air filtration apparatus and installations; evaporative air coolers, fans, blowers, filters, ducts, controllers, fittings and accessories therefor; ventilation equipment including ventilation hoods
Trade Mark:	HUSHPOWER

Trade Mark Number:	965849
Priority Date:	8 August 2003
Goods:	Class 7: Electric Motors
Trade Mark:	HUSHPOWER

The Applicant

10.     According to the Aird Declaration:

The core business of [the Applicant] is the manufacture, wholesale and retail of air conditioners and their parts and accessories. …

I am aware that [the Applicant] has used the word HUSH as part of the trademark HUSHDRIVE in relation to air conditioning apparatus and parts and accessories in Australia since at least as far back as December 2011. … I understand [the Applicant] has used the trademark HUSHDRIVE continuously in relation to such goods since then up to present day.

Grounds of Opposition, Onus and Standard of Proof

11. At the hearing Counsel for the Opponent pressed only the grounds pursuant to ss 44, and 60 in respect of both oppositions. To succeed the Opponent need establish only one ground. As will become apparent it is only necessary that I consider the ground pursuant to s 60 in respect of both opposed trade marks. Of course, should the decision be appealed, it would remain open to the Opponent to plead any ground available to it under the Act in proceedings before the court.

12.     The onus of proof in an opposition rests upon the Opponent.[2] The relevant standard of proof is the ordinary civil standard based on the balance of probabilities.[3] The date at which the rights of the parties are to be determined are: 26 March 2015 in respect of the HushWing Trade Mark, being the filing date of that application, and 27 April 2015 in respect of the HUSHDRIVE Trade Mark, being the filing date of that application (‘the Relevant Dates’).[4]

[2] Food Channel Network Pty Ltd v Television Food Network GP [2010] FCAFC 58, [32].

[3] Following Gyles J in Pfizer Products Inc v Karam [2006] FCA 1663, [6]-[26] affirmed by the Full Federal Court in Telstra Corporation Limited v Phone Directories Company Ltd [2015] FCAFC 156, [132]-[133].

[4] Southern Cross Refrigerating Co v Toowoomba Foundry Pty Ltd [1954] HCA 82, [2].

Discussion

13. Section 60 of the Act is reproduced below:

Section 60 - Trade mark similar to trade mark that has acquired a reputation in Australia

The registration of a trade mark in respect of particular goods or services may be opposed on the ground that:

(a)another trade mark had, before the priority date for the registration of the first‑mentioned trade mark in respect of those goods or services, acquired a reputation in Australia; and

(b)because of the reputation of that other trade mark, the use of the first‑mentioned trade mark would be likely to deceive or cause confusion.

14. The ground based on s 60 of the Act is particularised in the SGP for the HushWing Trade Mark as follows:

The Opponent has acquired a substantial reputation in the trade marks BRAEMAR HUSHPOWER and HUSHPOWER subject of Registrations 809684, 965848 and 965849 in connection with the goods covered by these registrations, details of which are set out above in the grounds for opposition under Sec 44. The Opponent has used its trade marks in connection with the goods covered by its registrations from at least as early as 2003 and possibly from 1999. In view of the reputation acquired in the Opponent's trade marks BRAEMAR HUSHPOWER and HUSHPOWER, the use of the trade mark subject of Application 1683685 HUSHWING on the goods covered by that Application is likely to deceive or cause confusion.[5]

[5] The SGP for the HUSHDRIVE Trade Mark is identical except that it refers to the HUSHDRIVE Trade Mark rather than the HushWing Trade Mark.

15. To establish the grounds of opposition under s 60 the Opponent must demonstrate that at the Relevant Dates the BRAEMAR HUSHPOWER trade mark and/or the HUSHPOWER trade mark had acquired a reputation in Australia amongst a significant number of persons in the relevant market such that use of one or both of the Applicant’s trade marks would be likely to deceive or cause confusion.

16.     In McCormick & Co Inc v McCormick, Kenny J considered what is intended by the word ‘reputation’. Her Honour had consulted the Macquarie Dictionary and on the basis of the definition provided decided that, in s 60, reputation is ‘the recognition of the [trade mark] by the public generally’.[6] Her Honour quoted with approval the following words of Lockhart J from Re ConAgra Inc v McCain Foods (Aust) Pty Ltd:

[R]eputation within the jurisdiction may be proved by a variety of means including advertisements on television or radio, or in magazines and newspapers within the forum. It may be established by showing constant travel of people between other countries and the forum and that people within the forum, (whether residents there or persons simply visiting there from other countries) are exposed to the goods of the overseas owner …[7]

[6] [2000] FCA 1335, [81].

[7] [1992] FCA 159, [118].

17.     On the subject of reputation Kenny J also referred to the Hugo Boss decision, where the Registrar’s delegate observed:

[I]t is true that the assessment of the reputation of a trade mark goes far beyond mere examination of sales or turnover of goods sold under that trade mark and contemplation of the advertising and promotional figures.

As regards a trade mark, its reputation derives both from the quantum of sales under that mark and also its 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.[8]

[8] Jackson International Trading Co Kurt D Bruhl GMbH & Co KGv Hugo Boss AG [1999] ATMO 23 (Thompson).

18.     It is declared in Munster 1 that:

Seeley uses the trade mark HUSHPOWER in relation to fan motors that are used in its premium Breezaire evaporative air conditioner and in connection with the trade mark BREEZAIR. It has used the HUSHPOWER mark in conjunction with the promotion of its Breezair evaporative air-conditioners from as early as 2004, and has acquired substantial good will and reputation in the HUSHPOWER mark.

Mr Muster referred to Exhibit PM-5 to support this statement.

19.     Exhibit PM-5 is declared to be ‘samples of trade literature for the years 2006, 2008, 2009, 2011, 2012, 2013, 2014 and 2015 demonstrating the manner in which Seeley uses the trade mark HUSHPOWER’. Exhibit PM-5 contains what appear to be colourful brochures typical of those provided to potential customers by sales people. In their ten to 15 pages, they provide comprehensive information about the Opponents’ Breezaire range of air conditioners. Each brochure shows several occurrences of use of ‘Hushpower’ in connection with the motor of the air conditioners. Some typical examples are:

Australian designed and built, Hushpower’s motor technology leads the world in quiet cooling. The fact is nothing cools as quietly or as effectively as the revolutionary Hushpower Icon.

and:

It’s all thanks to the superior design of Breezair’s ground-breaking centrifugal fan and Hushpower motor …

and:

Revolutionary Hushpower fan and motor technology makes Breezair the world’s best.

and alongside a picture of a motor:

Hushpower® direct drive motor

oExclusive to Breezair

oIncredibly quiet …

20.     There is no direct indication of the number of brochures distributed or where they were distributed; however, confidential sales information contained in Munster 1 indicates very significant sales of the Breezair range of air conditioners from 2004 to early 2016. The unit cost of roof mounted evaporative air conditioners of the type sold by the Opponent is in the thousands of dollars. These are significant household purchases which are typically accompanied by research, discussion with sales people and perusal of sales brochures. Taking these points into account, and in the absence of any submissions or evidence to the contrary from the Applicant, I am satisfied that as at the Relevant Dates the trade mark ‘Hushpower’ had acquired a significant reputation in Australia in respect of air conditioners and air conditioning apparatus.

21. It is not sufficient, however, that the Opponent merely establishes that its trade mark has acquired a significant reputation, I must also be satisfied that because of that reputation the use of either or both of the opposed trade marks would be likely to deceive or cause confusion. Discussions and decisions on the subjects of deception and confusion are legion and a good number provide relevant comments in relation to a consideration of deception and confusion for the purposes of s 60. In a case concerning infringement and passing off, Australian Woollen Mills Limited v F S Walton and Company Limited, Dixon and McTiernan JJ said the following:

An attempt should be made to estimate the effect or impression produced on the mind of potential customers by the mark or device for which the protection of an injunction is sought. … The usual manner in which ordinary people behave must be the test of what confusion or deception may be expected.  Potential buyers of goods are not to be credited with any high perception or habitual caution. On the other hand, exceptional carelessness or stupidity may be disregarded. The course of business and the way in which the particular class of goods are sold gives, it may be said, the setting, and the habits and observations of men considered in the mass affords the standard.[9]

[9] (1937) 58 CLR 641, 658.

22.     The concepts of ‘deceive’ and ‘confuse’ were explained in the New Zealand case of Pioneer Hi-Bred Corn Co v Hyline Chicks Pty Ltd, where Richardson J said:

‘Deceived’ implies the creation of an incorrect belief or mental impression and ‘causing confusion’ may go no further than perplexing or mixing up the minds of the purchasing public. Where the deception or confusion alleged is as to the source of the goods, deceived is equivalent to being misled into thinking that the goods bearing the applicant's mark come from some other source and confused to being caused to wonder whether that might not be the case. ^[10]

[10] [1979] RPC 410, 423 (citations omitted).

23.     In Registrar of Trade Marks v Woolworths Ltd French J highlighted the following further matters concerning confusion:

A trade mark is likely to cause confusion if the result of its use will be that a number of persons are caused to wonder whether it might not be the case that the two products or closely related products and services come from the same source. It is enough if the ordinary person entertains a reasonable doubt. It may be interpolated that this is another way of expressing the proposition that the trade mark is likely to cause confusion if there is a real likelihood that some people will wonder or be left in doubt about whether the two sets of products or the products and services in question come from the same source.

In considering whether there is a likelihood of deception or confusion all surrounding circumstances have to be taken into consideration. These include the circumstances in which the marks will be used, the circumstances in which the goods or services will be bought and sold and the character of the probable acquirers of the goods and services.[11]

[11] [1999] FCA 1020, [50]. These considerations by French J are a restatement of the principles set out by Kitto J in Southern Cross Refrigerating Co v Toowoomba Foundry Pty Ltd (1954) 91 CLR 592, 594-5.

24.     Relevant to the likelihood of deception or confusion are the activities of the Applicant, in particular its use of its trade marks. I note that the EIA includes no sales figures but in respect of the Applicant’s activities it is stated in the Aird Declaration:

I am aware that [the Applicant] has used the word HUSH as part of the trademark HUSHDRIVE in relation to air conditioning apparatus and parts and accessories for air conditioning apparatus in Australia since at least as far back as December 2011. I understand that the trademark HUSHDRIVE was first coined by the then National Sales Manager of [the Applicant], Mr Craig Buchanan. Mr Buchanan is no longer employed by [the Applicant] so is unavailable to make a declaration. I understand [the Applicant] has used the trademark HUSHDRIVE continuously in relation to such goods since then up to present day.

25.     Mr Aird referred to Exhibit DSA-1 of his declaration which is declared to be ‘a selection of extracts from [the Applicant’s] product brochures for its Bonaire and Celair products, which were published and distributed widely in Australia’. The dates of the brochures are:

Bonaire: December 2011, October 2012, August 2013, January 2014, November 2015.

Celair: October 2012, August 2013.

26.     The Applicant’s brochures show use of HUSHDRIVE in a similar manner to the use of HUSHPOWER by the Opponent. For example:

oan image of a motor accompanied by the words ‘Hushdrive motor technology. The patented quiet winding motor design means you can barely hear the unit when its running.

onext to a cutaway view of an air conditioning unit the words ‘Patented Hushdrive™ Motor – strategically placed away from the unit’s central air stream, your home is cooled quietly and efficiently.

27.     Mr Aird also referred to the Applicant’s HushWing trade mark and declared:

I understand that the trademark HUSHWING was coined as least as far back as 2015 by employee [sic] of [the Applicant]. [The Applicant] first used the trademark HUSHWING in Australia at least as far back as 2015 in relation to air conditioning apparatus and/or components of air conditioning apparatus. The trademark was specifically first used in relation to a newly designed fan component.

The only examples of use of ‘Hushwing’ appear to be in the Bonaire brochure dated November 2015 and, for example, refer to ‘a new Hushwing™ fan’ and ‘Hushwing™ fan with Bonaire Vortex Generators™’.

28.     I note the EIA includes no sales figures.

29.     Relevant also to the likelihood of deception or confusion is the nature of the trade marks in question. In particular in this case, the distinctiveness of the common, and first, syllable of the trade marks, ‘HUSH’. In respect of this point, and in respect of the comparison of the trade marks generally, the Opponent has submitted:

The first part of the mark (HUSH) should ordinarily be regarded as being the most significant part, and the second and final part (POWER) should ordinarily be regarded as being the least significant part.[12]

[12] PB Foods Ltd v Malanda Dairyfoods Ltd [1999] FCA 1602, [33].

This typical hierarchy of importance is supported by consideration of the meaning of the words in the context of the relevant goods. The word ‘power’ is obviously apt to directly describe characteristics of any electrical goods.

In contrast, the word ‘Hush’ is not directly descriptive of the relevant goods or their characteristics. The Macquarie Dictionary … lists the following meanings of the word ‘hush’:

Interjection 1. (a command to be silent or quiet)

- verb (i) 2. to become or be silent or quiet.

- verb (i) 3. To make silent; silence

4. to suppress mention of; keep concealed.

5. to calm or allay; to hush someone’s fears

- noun 6. silence or quiet, especially after noise.

…

Rather than being a directly descriptive word in respect of the relevant goods, the word ‘hush’ cleverly alludes to or evokes the idea that in operation the air conditioner, or its internal motor, will not be noisy. It is a word inherently adapted to distinguish these goods.[13]

[13] Mark Foy’s Ltd v Davies Coop & Co Ltd (1956) 95 CLR 190.

30.     The Aird Declaration contains a relevant statement, which is in the nature of a submission on this point, being:

I consider that at the time when the trademark HUSHDRIVE was coined, the word ‘HUSH’ was an appropriate word to refer to the quietness or silence of an air conditioning apparatus or a component of such an apparatus when being used.

Mr Aird made a similar statement in respect of the HushWing Trade Mark.

31.     I am persuaded by the Opponent’s view and am satisfied that ‘HUSH’ is inherently adapted to distinguish the goods in question in this decision—it not being directly descriptive of any aspect of the goods but being allusive, as submitted by the Opponent. I am also satisfied that this is an element of the Opponent’s HUSHPOWER trade mark which is both significant and memorable. What I will describe as the ‘secondary elements’ of the respective trade marks—‘power’, ‘wing’ and ‘drive’—are far less distinctive and memorable.

32.     Due to the significant reputation which has been acquired by the Opponent’s HUSHDRIVE trade mark, the presence of the HUSH element in each of the opposed trade marks is sufficient to make use of the opposed trade marks likely to deceive or cause confusion: the deception or confusion being as to trade source of the particular components within the Applicant’s goods or as to the source of the goods themselves. Consequently, the Opponent has established this ground of opposition.

Decision

33. I have found the Opponent has established the grounds of opposition it raised pursuant to s 60 of the Act in respect of both opposed applications. As the Delegate of the Registrar I accordingly refuse to register the HushWing Trade Mark and the HUSHDRIVE Trade Mark.

Costs

34.     As the successful party, the Opponent is entitled to its costs and I accordingly award costs against the Applicant as per Schedule 8 of the Trade Mark Regulations 1995, with costs for the second of the two oppositions to be assessed as set out in the table attached to the Hearing Officer’s decision in James Hardie & Co Pty Ltd v Hume Industries (Malaysia) Berhad.[14]

[14] (2001) 53 IPR 591.

Robert Wilson
Hearing Officer
Trade Marks and Designs Hearings
19 July 2017