Federal-Mogul Corporation v Fujikura Diesel Co.Ltd

[2014] ATMO 31

TRADE MARKS ACT 1995

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

Re:Opposition by Federal-Mogul Corporation to protection of International Registration Designating Australia 1450840 (12) - FP-DIESEL DEVICE - filed in the name of Fujikura Diesel Co. Ltd.

Delegate:	Cristy Condon
Representation:	Opponent: Spruson & Ferguson Holder: Not represented 2014 ATMO 31
Decision:	S52 Opposition - s60 in opposition successful – application refused

Background

1. This matter is an opposition under section 52 of the Trade Marks Act 1995 (‘the Act’) to the protection of the International Registration Designating Australia filed by Fujikura Diesel Co. Ltd. (‘the Holder’) details of which appear below:

   Application number:  1450840

   International Registration No:  1089998

   Priority Date:  15 August 2011

   Goods:   Class 12

   Crankcases for land vehicle components, other than for engines; vehicle chassis; hydraulic circuits for vehicles; gearing for land vehicles; clutches for land vehicles; engines for land vehicles; motors for land vehicles; turbines for land vehicles; gear boxes for land vehicles; torque converters for land vehicles

   Trade Mark:   (‘the IRDA’ or ‘the Trade Mark’)

   Endorsements:  Mark Description: This mark consists of a device, a stylized English letter "F" and an English word "DIESEL" with a hyphen between "F" and "DIESEL".*

2. The application was examined in compliance with section 31 of the Act and advertised as accepted for possible registration in the Australian Official Journal of Trade Marks dated 22 December 2011.

3. Having been granted numerous extensions of time to do so, on 22 March 2012, Federal-Mogul Corporation (‘the Opponent’) filed a Notice of Opposition (‘the Notice’) to the extension of protection in Australia to the IRDA.  The Notice is couched in broad terms.  However, only the section 60, section 44, section 42(b) and section 58 grounds were indicated as the principal grounds relied upon by the Opponent in its written submissions.

4. The parties were given an opportunity to request a hearing or to file written submissions.  The Opponent requested a hearing based on written submissions.  The Holder does not have an address for service in Australia and has taken no part in these proceedings. Although as a matter of courtesy the Holder was informed of these proceedings via its agents email address who I note did acknowledge receipt of this email advice. The Opponent seeks its costs.

5. For the sake of completeness I find that the grounds other than those indicated as the principal grounds have not been established and note that any ground may be relied upon should my decision be appealed to the relevant Court where the matter will be considered de novo.

6. The Opponent bears the onus of establishing a ground of opposition on the balance of probabilities.[1]  Moreover, should I decide that one of the so called principal grounds is established, I am not required to discuss the remaining grounds with reasons.

   [1] See Pfizer Products Inc v Karam [2006] FCA 1663; 237 ALR 787; (2006) 70 IPR 599; [2006] AIPC 92-146 per Gyles J at [6] to [26]; Chocolaterie Guylian N.V. v Registrar of Trade Marks [2009] FCA 891; (2009) 180 FCR 60; (2009) 258 ALR 545; (2009) 82 IPR 13; [2009] AIPC 92-355 per Sundberg J at [22] to [26]; and most recently Tricarico v Dunn Bay Holdings Pty Ltd [2012] FCA 271 per McKerracher J at [9] to [10] and Fry Consulting Pty Ltd v Sports Warehouse Inc (No 2) [2012] FCA 81; (2012) 94 IPR 551 per Dodds-Streeton J at [13].

7. The date at which a ground of opposition must be established is the date of filing of the IRDA seeking protection in Australia. This is 15 August 2011 (the ‘relevant date’): see Southern Cross Refrigerating v Toowoomba Foundry Pty Ltd (1953) 91 CLR 592 at 595.

8. I am a delegate of the Registrar of Trade Marks and I am to decide the opposition as required by section 55 of the Trade Marks Act 1995 (‘the Act’) which provides that, unless the proceedings are discontinued, dismissed or the application lapses, 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;

9. The following evidence was filed and served in accordance with relevant legislation:

Declarant	Position	Date	Exhibits
Evidence in support	MaryAnn Fick (‘Fick’)	Intellectual Property Counsel of the opponent	7.06.2013	MAF-1 to MAF-7 N.B. MAF-4 is confidential

1. After considering the evidence and the Opponent’s submissions I find that the 60 ground is established.  Here follow the reasons for that finding.

Discussion - Section 60 ground for opposition

1. Section 60 provides:

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

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

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

2. To satisfy section 60 the Opponent must establish:

   o That another trade mark had, before 15 August 2011, acquired a reputation in Australia in respect of particular goods/services; and

   o Because of the reputation of that other trade mark, the use of the Holder’s trade mark would be likely to deceive or cause confusion.

3. The Opponent relies upon its trade mark      which it uses in connection with heavy-duty engine parts and gaskets for commercial, marine and agriculture, industrial sectors (see Fick [3]). These goods include:

   Bearings, gaskets, pistons, piston rings, piston pins, retainers, cyclinder lines, cylinder heads, o-rings, thrust washers, crankshafts, camshafts, valves, valve guides, valve springs, water pumps, fuel pumps and thermostats (see FICK [16]).

1. The  trade mark was not registered in Australia as at 15 August 2011. The Opponent has, however, sought protection for its trade mark in 55 countries (see Fick [14] and exhibit MAF-2). The Opponent also has subsidiaries in 30 countries throughout the world, including Australia. The distribution centre for the Opponent’s goods which bear the FP Diesel trade mark and that are sold in Australia is the United States (see Fick [10]-[11]).

2. The Opponent’s FP Diesel trade mark was first used in Australia in 1998 on goods being heavy duty engine components. The Fick declaration says at [16]:

   Over the years, the range of goods sold under the FP Diesel trade mark have expanded to cover a wide range of engine parts. (see those listed at [13] of this decision.)

3. Exhibit MAF-3 consists of a list of engine products that the Opponent is selling in Australia as aftermarket parts under the FP Diesel branding. Exhibit MAF-4 contains confidential sales information relevant to the Australian market.

4. Advertising and promotion of the Opponent’s goods is said to be extensive but the breakdown of the Australian expenses is not provided. Advertising is conducted through many different means including brochures, catalogues, posters, trade and industry shows and the websites of authorized distributors. (see Fick [18] and Exhibits MAF-4, MAF-6, MAF-7).

5. The Opponent further submits that “Reputation”, in the context of section 60, means recognition by the public generally of the Opponent’s trade mark and it cites as authority for this proposition McCormick & Co v McCormick (2000) FCA 1335 at [81] (‘McCormick’). The Opponent says that this is informed by:

   …a combination of familiarity based on extensive exposure through advertising and sales, and “esteem”, which is the image or set of values which the public associates with the mark, and can arise from activities other than sales and advertising: Jackson International v Hugo Boss (1999) 47 IPR 423 at 436, discussed with approval by Kenny J in McCormick.

6. Therefore, I should first determine if the Opponent has acquired a reputation in Australia for its trade mark.  This is more than merely indicating prior use; the Opponent’s trade mark needs to be “associated in the minds of the Australian public”[2].

   [2] Seven Up Co v OT Ltd [1947] HCA 59; (1947) 75 CLR 203 at 211

7. In relation to reputation Kenny J states in McCormick at 128:

   In Conagra Inc v Mc Cain Food (Aust) Pty Ltd [1992] FCA 159; (1992) 33 FCR 302 at 343; [1992] FCA 159; 23 IPR 193 at 234, Lockhart J said:

   [R]eputation within the jurisdiction may be proved by a variety of means including advertisements on television or radio, or in magazines and newspapers within the forum.

8. At [128] Kenny J continues:

   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: ...

9. In assessing the degree of reputation, I take into account that the Opponent has sold products under its trade mark globally including Australia, since 1998.  According to the evidence, prior to 1998 the products were sold under the FP trade mark by the predecessor in interest of the trade mark, Fel-Pro Incorporated (see Fick [15]).

10. For this matter, the Opponent’s evidence of reputation in respect of its trade mark has not been disputed by the Holder.

11. I am satisfied that the Opponent and its predecessor (Fel-Pro Incorporated) have manufactured and marketed heavy-duty engine parts and gaskets for the commercial, marine and agriculture, and industrial sectors at a measureable level since at least 1998 and that these goods have been available for sale in Australia.  Such goods would be widely used in Australia’s substantial farming industry and the industrial industry. In particular, the Exhibits MAF-1 to MAF-7 demonstrate that a variety of engine parts and gaskets are provided for sale in Australia under the Opponent’s brand. Moreover, the value of the Opponents sales and the length of time in the Australian market is, in my opinion, quite convincing of the Opponent’s dominant market presence.

12. Based on the volume and variety of the Opponent’s goods (and the fact that they have been available for sale in Australia for more than 15 years) I find that the Opponent’s FP Diesel brand has a reputation under section 60. I am satisfied that this is a reasonable conclusion based on the evidence before me. The Opponent has partially discharged its onus under section 60. Therefore the Holder’s silence is to its detriment in this matter.

13. However, establishing the Opponent’s reputation is not the end of the matter.  Additionally, section 60 requires that I be satisfied that use of the Holder’s trade mark would be likely to result in deception or to cause confusion.

14. In Pottle Productions Inc v Rute Ithalat Ve Ihracat Anonim Sirketi the Registrar’s delegate observed that:

    The assessment of the likelihood of deception or confusion under section 60 is informed by the strength of the reputation of the Opponent’s trade mark(s), the inherent distinctiveness thereof, the degree of similarity between the trade marks under consideration and the nexus or connection between the goods and/or services of the parties.  Each of these is a variable and it is possible that a trade mark’s reputation might be sufficiently strong and the degree of similarity to an opposed trade mark be so great (particularly where the trade marks are inherently distinctive) that confusion or deception will be a likelihood where very little, if any, nexus or connection exists between the goods and/or services under consideration. [3]

    [3] [2012] ATMO 124 at [40]

15. I have already found that a reputation at the relevant date can be inferred for the trade mark  in relation to heavy-duty engine parts and gaskets for commercial, marine and agriculture, industrial sectors. When it comes to the question of deception and confusion I am bound to decide in favour of the Opponent due to:

    o the strikingly similar visual appearance of Trade Mark   to the Opponent’s  trade mark

    o the fact that the trade marks are both being  applied to highly similar goods, and

    o  that the parties would be trading in the same markets.  

16. For these reasons I am satisfied that the section 60 ground is established.

Decision

1. I am a delegate of the Registrar of Trade Marks and I am to decide the opposition as required by section 55 of the Trade Marks Act 1995 (‘the Act’) which provides that, unless the proceedings are discontinued, dismissed or the application lapses, 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;

2. I have found the opposition to be successful on the section 60 ground raised. I refuse to extend protection in Australia to Trade Mark 1450840.  If the Registrar has been served with a notice of appeal within one month from the date of this decision, I direct that refusal shall not occur until the appeal has been decided or discontinued.

Costs

1. The Opponent has applied for its costs.  Costs are generally awarded against the unsuccessful party to an opposition hearing, unless there has been conduct on the part of the successful party that would justify a departure from the general rule.  I see no reason why costs should not follow the general rule and have awarded costs against the Holder as per the Official Scale contained in Schedule 8 of the Trade Mark Regulations 1995.

Cristy Condon
Hearing Officer
Trade Marks Hearings
26 March 2014