Felder KG v SawStop, LLC

[2022] ATMO 157

TRADE MARKS ACT 1995

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

Re:Opposition by Felder KG to registration of trade mark application number 2007000 (Class 7) – PCS – in the name of SawStop, LLC.

Delegate:	Blake Knowles
Representation:	Opponent: Helen Kavadias of HWL Ebsworth Lawyers. Applicant: Phillips Ormonde Fitzpatrick.
Decision:	2022 ATMO 157 Trade Marks Act 1995 (Cth) and Trade Marks Regulations 1995 (Cth) – opposition under section 52 – grounds of opposition pressed under ss 41, 42(b), 43, 59, 62(b) and 62A and reg 4.15A – ground under reg 4.15A established – registration refused.

Background

1. This is a decision in the opposition by Felder KG (‘Opponent’) to registration of trade mark number 2007000 (‘Application’) filed by SawStop, LLC (‘Applicant’).

2. The Application was filed on 2 May 2019 (‘Relevant Date’/‘Priority Date’) for ‘PCS’ (‘Trade Mark’), in respect of the following goods:

   Class 7: Table saws and table saws equipped with active injury mitigation systems

   (‘Applicant’s Goods’)

3. The Trade Mark was examined and initially subject to grounds for rejection raised under reg 4.15A(1).0F[1] The Applicant overcame the objection by filing evidence of prior and continuous use under reg 4.15A(5). The Trade Mark was accepted and advertised for opposition on 1 July 2020.  The Opponent filed notice of its intention to oppose registration on 18 August 2020 and a statement of grounds and particulars (‘SGP’) on 18 September 2020. The Applicant filed a notice of intention to defend the Trade Mark from opposition on 16 December 2020.

   [1] Unless otherwise stated, each reference to a section or regulation in these reasons is a reference to the Trade Marks Act 1995 (Cth) (the ‘Act’) or the Trade Marks Regulations 1995 (Cth) (the ‘Regulations’).

4. The parties filed evidence in accordance with the timetable set out in reg 5.14. The Opponent filed Evidence in Support (‘EIS’) on 17 June 2021. The Applicant filed Evidence in Answer (‘EIA’) on 17 September 2021. The Opponent did not file Evidence in Reply.

5. The parties were given an opportunity to request a hearing by videoconference or by written submissions. Both parties elected to be heard by way of written submissions. Submissions were filed on behalf of the Opponent by Helen Kavadias of HWL Ebsworth Lawyers, and on behalf of the Applicant by Phillips Ormonde Fitzpatrick.  I have decided the matter as a delegate of the Registrar of Trade Marks based on the particulars in the SGP, and the evidence and submissions filed by the parties.

   Grounds and onus

6. The SGP nominates grounds of opposition under reg 4.15A and ss 41, 42(b), 43, 59, 62(b), and 62A.

7. The Opponent carries the burden of establishing at least one ground of opposition on the balance of probabilities.1F[2] The rights of the parties are assessed as at the Relevant Date.2F[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

8. The following evidence was filed:

   EIS

   Declaration of Stefan Egger, Director of Communications of the Opponent, made on 31 May 2021, with Exhibits SE-1 to SE-7.

   EIA

   Declaration of David Fanning, Vice-President of the Applicant, made on 12 September 2021, with Exhibits DF-1 to DF-8.

   EIS

9. Mr Egger declares that the Opponent is the Holder in Australia of Protected International Trade Mark number 20097773F[4] (‘PITM’) for ‘PCS’ (‘Opponent’s Mark’) in respect of Class 7: Woodworking machines; metalworking machines; machines for plastics working; machine tools (‘Opponent’s Goods’). The PITM has a priority date of 13 December 2018.4F[5]

   [4] Australian designation of International Registration number 1466799.

   [5] Priority claimed under s 29 from European Union trade mark number 18000275.

10. Mr Egger refers to a declaration filed by the Applicant that was relied on to overcome grounds for rejection raised under reg 4.15A based on the PITM. Mr Egger makes several criticisms regarding the context and manner of use of the Trade Mark as shown in that evidence, particularly that the Trade Mark is only used as a descriptive acronym, often in combination with other letters and numbers, for a particular model of saw sold by the Applicant (the ‘Professional Cabinet Saw’).

11. Mr Egger goes on to describe the background to the adoption of the Opponent’s Mark by the Opponent, and the subsequent use of the Opponent’s Mark from March 2019. The Opponent claims to have used the Opponent’s Mark in Australia in relation to sliding table saws since April 2019.

12. Mr Egger declares that based on searches of the Applicant’s websites on Internet Archive Wayback Machine (‘Wayback Machine’), he believes that the Applicant only changed its website to refer to the Trade Mark after becoming aware that the Opponent had sought to protect the Opponent’s Mark. Mr Egger annexes Wayback Machine extracts to support this contention.

    EIA

13. Mr Fanning declares that the Trade Mark was adopted by the Applicant in 2008 as an acronym for ‘Professional Cabinet Saw’. The first sale of goods under the Trade Mark in Australia occurred in 2013, and invoices from 2013 and 2014 are annexed. They refer to ‘PCS31230-AU’ under the heading ‘Item No.’ and the description of the goods refers to ‘Professional Cabinet Saw’ together with what appear to be various product codes.

14. Mr Fanning declares that the Trade Mark has been used in promotional and training materials in Australia, including Powerpoint presentations. The Trade Mark has also been used on packaging and labels for the Applicant’s Goods. Annexed to the declaration are examples of such use. I note that the examples of use on packaging and the product itself refer to ‘Model PCS31230-AU’ or ‘Model No. PCS31230-AU’:

15. Mr Fanning declares that the Trade Mark is used in collateral documents associated with the sale of goods, including saw registration forms, dealer bulletins, product lists, and distributor agreements. Examples of these documents are annexed.

16. Mr Fanning declares that the Trade Mark is used on the Applicant’s website < Mr Fanning annexes screenshots from the contemporaneous website and also Wayback Machine extracts of the website from 2013, 2015, and 2019. The Wayback Machine extracts demonstrate use in the following contexts:

17. Mr Fanning declares that the Trade Mark is used on the website of its Australian distributor Carbatec < The annexed Wayback Machine screenshots from the Carbatec website demonstrate use in the following contexts:

18. Mr Fanning provides confidential revenue figures relating to goods sold in Australia under the Trade Mark since 2015, which indicate a reasonable level of commercial use.

    Discussion

    Reg 4.15A

19. To establish a ground of opposition under reg 4.15A(1), the Opponent must rely on either an International Registration Designating Australia or Protected International Trade Mark that has a priority date earlier than that of the Application, and which is in the name of a person other than the Applicant. The earlier mark must be substantially identical or deceptively similar to the Trade Mark, and protection of the earlier mark must be sought or granted in respect of goods that are similar to the Applicant’s Goods or services that are closely related to the Applicant’s Goods.

20. The Opponent relies on the PITM as the basis for the ground under reg 4.15A. The PITM is in the name of a person other than the Applicant and has a priority date which is earlier than the Priority Date of the Application. Further, the Trade Mark is identical to the Opponent’s Mark. As such, I must next determine if the Applicant’s Goods are the same or similar to the Opponent’s Goods.

21. The goods of two parties will be considered similar if they are either the same or if they are of the same description.5F[6] The test for determining whether goods are of the same description is a practical judgement formed by looking at a number of factors, falling within the categories of the nature of the goods, their respective purposes, and the trade channels through which they are commonly provided, with no single factor being determinative.6F[7]

    [6] Trade Marks Act 1995 (Cth), s 14.

    [7] Re Jellinek’s Application (1946) 63 RPC 59, 70 (Romer J).

22. The Opponent’s Goods include claims for woodworking, metal working, and plastic working machines, in addition to an unqualified claim for machine tools. These claims are broad enough to encompass the table saws that comprise the Applicant’s Goods. As such, I consider that the goods are similar.   

23. The Opponent has established a prima facie ground of opposition under reg 4.15A(1). Therefore, the Trade Mark must be rejected unless the Applicant’s evidence establishes one of the following: (i) there has been sufficient honest concurrent use of the Trade Mark by the Applicant to justify registration (reg 4.15A(3)(a)), (ii) there are other relevant circumstances justifying registration (reg 4.15A(3)(b)), or (iii) the Applicant has used the Trade Mark continuously in relation to the Applicant’s Goods since before the priority date of the PITM up to the Relevant Date (reg 4.15A(5)).  

24. Any use of the Trade Mark relied by the Applicant must be use ‘as a trade mark’. In a previous matter involving the same parties,7F[8] the Applicant (who was the Opponent in that matter opposing the PITM) relied on similar evidence of prior use in alleging proprietorship of the Trade Mark under s 58. Hearing Officer Brown considered that evidence and said:

    [8] SawStop LLC v Felder KG [2022] ATMO 12.

    In my view, the central issue in this matter is not whether the Opponent’s Alleged Mark is substantially identical to the IRDA, but whether any example of the Opponent’s use of PCS constitutes use as a trade mark. It is not sufficient to merely show that the sign is used in the course of trade, the prior use asserted by the Opponent must be ‘use as a trade mark’.8F[9] Section 17 of the Act provides that a trade mark is ‘a sign used, or intended to be used, to distinguish goods or services dealt with or provided in the course of trade by a person from goods or services so dealt with or provided by any other person’. In Coca-Cola Co v All-Fect Distributors Ltd the Full Court explained:

    [9] Moorgate Tobacco Co Ltd v Phillip Morris Ltd (1984) 156 CLR 414, 432 (Deane J).

    “Use ‘as a trade mark’ is use of the mark as a ‘badge of origin’ in the sense that it indicates a connection in the course of trade between goods and the person who applies the mark to the goods … That is the concept embodied in the definition of “trade mark” in s 17 – a sign used to distinguish goods dealt with in the course of trade by a person from goods so dealt with by someone else.”9F[10]

    [10] Coca-Cola Co v All-Fect Distributors Ltd [1999] FCA 1721, [19] (Black CJ, Sundberg and Finkelstein JJ).

    Accordingly, the Opponent must establish that its use of PCS was for the purpose of distinguishing the Opponent’s goods from those of other traders. In the Fanning Declaration, Mr Fanning states that PCS ‘was adopted by my company in 2008 as an acronym for “Professional Cabinet Saw”’. Use of PCS in this manner appears in the flyers distributed at the International Woodworking Fair in Atlanta in 2009. These refer to ‘The SawStop Professional Cabinet Saw (PCS)’. The Opponent’s product packaging and invoices also feature PCS alongside or in proximity to the words ‘Professional Cabinet Saw’. The immediate problem with relying on PCS in conjunction with the words ‘Professional Cabinet Saw’ is that it appears to the reader to do no more than abbreviate the apparently descriptive material that comes before it with the sum effect of the letters PCS merely indicating to consumers that the Opponent’s goods are professional grade cabinet saws, or cabinet saws targeted towards professionals.

    The Opponent also emphasises that the Opponent’s Alleged Mark was used alone without reference to a model number or the words ‘professional cabinet saws’ in several of its exhibits, namely a Dealer Bulletin, the Australia and New Zealand distribution agreement with the company Carbatec, dealer registration forms, and the Opponent’s website.

    In respect to the Dealer Bulletin, while it does include the PCS without reference to ‘Professional Cabinet Saws’, it is dated June 2010. This is several years before the Opponent claims it began using PCS in Australia. The use of the US Dollar in the brochure also suggests that this brochure was used in the United States of America rather than Australia.

    The exhibits featuring the Opponent’s website show PCS in respect to the cabinet saws but are not dated or otherwise provided by means that would indicate the screenshot of the website was from before the Relevant Date. The Fanning Declaration states that the website identifies Australian distributors of goods bearing the term PCS. While this is the case, it does not assist the Opponent in demonstrating use of the Opponent’s Alleged Mark in Australia before the Relevant Date.

    The sample distribution agreement provided by the Opponent shows the sales goals and marketing plans for the Opponent’s products, including PCS. Although the agreement is for a period prior to the Relevant Date, it is not signed by either the Opponent or the other contracting party, nor has the Opponent provided any evidence of authorised use of the Opponent’s Alleged Mark by the distributor. I acknowledge that the distribution agreement demonstrates the Opponent’s intention to sell and promote goods in Australia at a date prior to the Relevant Date. However, as with the Opponent’s training materials I am not satisfied that this evidence demonstrates use of the Opponent’s Alleged Mark as a trade mark. This is because PCS is referenced in the document as a model of saw, a manner of use consistent with the product packaging, invoices and training presentations provided by the Opponent.

    Similarly, the dealer registration form relied on by the Opponent refers to the Opponent’s Alleged Mark as a ‘SawStop Model Number’. As with the other exhibits, I do not consider this to be use as a trade mark.

    Having regard to the deficiencies in the evidence outlined above, I am not satisfied that the Opponent, or any other party, has an earlier claim of ownership to the IRDA. The ground for opposition under section 58 has not been established.

25. I agree with the assessment of the evidence made by Hearing Officer Brown, insofar as that evidence is the same as the EIA. The only relevant exhibits that differ in this case are the Wayback Machine extracts provided for the Applicant’s website and contemporaneous and archived extracts of the Carbatec website. Regarding the archived pages of the Applicant’s website, it appears this use of the Trade Mark is similar in nature and context to other descriptive uses shown in the EIA. Further, I note that two of the archived pages contain the words ‘Available to customers in the United States only’. While it is not clear whether this statement refers to all the model types on the page, or only the nearest model type, this ambiguity does not assist the Applicant’s case. Regarding the pages on the Carbatec website, the use of the Trade Mark also appears to be descriptive. Further, the products in question are not the same as those described under the Applicant’s Goods, but rather are conversion kits and mobile bases. These appear to be accessories for the Applicant’s Goods, not the Applicant’s Goods per se. It is unclear why, considering the revenue figures provided by the Applicant for the Australian market, the Applicant is unable to provide any actual evidence of use of the Trade Mark on or in relation to the Applicant’s Goods sold by Carbatec, for example, an invoice issued by Carbatec to an Australian customer. I infer that either such evidence was not available to the Applicant or that it would not have favoured the Applicant.  

26. On balance, I am not satisfied that the use of the Trade Mark relied on by the Applicant is use ‘as a trade mark’ for the purposes of establishing prior and continuous use, honest concurrent use, or other relevant circumstances under reg 4.15A(3) or (5). As such, I am satisfied that the Trade Mark should not be registered under either of these provisions.  

27. As the Opponent has established a ground of opposition under reg 4.15A(1), there is no need for me to consider the other grounds of opposition relied on.

    Decision and costs

28. The Opponent has established a ground of opposition under reg 4.15A. As such, I have decided to refuse registration of the Trade Mark. Noting the appeal period, this refusal will be recorded one month from the date of this decision unless the Registrar of Trade Marks is served with a notice of appeal. If an appeal is filed, the disposition of this opposition will be for the court.

29. The Opponent has requested an award of costs. Costs generally follow the event, and I see no reason to depart from the general rule in this case. As such, I award costs against the Applicant.

    Blake Knowles
    Hearing Officer
    Delegate of the Registrar of Trade Marks
    12 September 2022