Fenestration Solutions Australia Pty Ltd v Combined Group of Companies Pty Ltd

[2020] ATMO 61

TRADE MARKS ACT 1995

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

ReTrade Mark Application numbers 1791912 – EVO building products, smart solutions; 1791913 – EVO lifestyle products; innovative ideas; 1791914 – EVO (class 35) - in the name of Combined Group of Companies Pty Ltd and Opposition by Fenestration Solutions Australia Pty Ltd

Delegate:

Cristy Condon

Representation:

Applicant: Meyer West IP

Opponent: MDP Law Pty Ltd

Decision:

2020 ATMO 61

Trade Marks Act 1995 (Cth) – Opposition to registration – grounds for opposition pursued ss 44, 58, 60, 42(b) of the Trade Marks Act 1995 - all considered – none established – trade marks will proceed to registration

Background

1. On 24 August 2016, Combined Group of Companies Pty Ltd (‘Applicant’) filed three applications to register the following trade marks detailed below under the Trade Marks Act 1995 (‘Act’).

Application Number:

1971912

Filing Date:

24 August 2016

Services:

Class 35: Wholesale of building products, hardware and/or tradesman's tools

2.        Trade Mark:

Endorsements:

Application Number:

Provisions of subsection s44(4) and/or Reg 4.15A(5) applied.;
Provisions of paragraph s44(3)(a) and/or Reg 4.15A(3)(a) applied.

1971913

Filing Date:

24 August 2016

Services:

Class 35: Wholesale of innovative products

4.        Trade Mark:

Endorsements:

Application Number:

Provisions of subsection s44(4) and/or Reg 4.15A(5) applied.;
Provisions of paragraph s44(3)(a) and/or Reg 4.15A(3)(a) applied.

1971914

Filing Date:

24 August 2016

Services:

Class 35: Wholesale of building products, hardware and/or tradesman's tools; wholesale of innovative products

6.        Trade Mark:

Endorsements: 

Evo

Provisions of paragraph s44(3)(a) and/or Reg 4.15A(3)(a) applied.;
Provisions of subsection s44(4) and/or Reg 4.15A(5) applied.

1. The marks above will be referred to collectively as the ‘EVO Trade Marks’ and when required, by their individual trade mark number.

2. The EVO Trade Marks were advertised ‘accepted for possible registration’ in the Official Journal of Trade Marks on 28 September 2017.

3. Fenestration Solutions Australia Pty Ltd (‘Opponent’) filed Notices of Opposition to the registration of the EVO Trade Marks. The Applicant filed Notices to Defend the Evo Trade Marks and the evidence stages followed.

4. The parties were advised of their right to be heard. Neither party requested a hearing.

5. The matter came before me, a delegate of the Registrar of Trade Marks, for a decision on the written record. This record consists of the written submissions filed by each party and the following evidence:

   Evidence in Support

   • Declaration by Shane McDuff, Managing Director of the Opponent, dated 12 June 2018 (‘McDuff 1) together with Exhibits SM-1 to SM - 4

   Evidence in Answer

   • Declaration by Peter Byrne, Managing Director of the Applicant, dated 3 September 2018 (‘Byrne’); together with Annexures PB -1 to PB – 23, Confidential Annexure A and Confidential Annexure B.

   Evidence in Reply

   • Declaration by Shane McDuff, dated 20 November 2018 (‘McDuff 2’)

   Grounds and Onus

6. In the Statement of Grounds and Particulars the Opponent nominates grounds of opposition under ss 42(b), 44, 58 and 60 of the Act.

7. The Opponent bears the onus of establishing at least one of the grounds of opposition.[1] The standard of proof is the ordinary civil standard of the balance of probabilities.[2]

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

   [2] Telstra Corporation Ltd v Phone Directories Co Pty Ltd [2015] FCAFC 156, [132].

8. The rights of the parties are to be determined as at the date of the application[3] which is generally, but not always, the filing date[4]. For the purposes of ss 44 and 60 which speak of the priority date, the relevant date is 24 August 2016 which, in this case, is the same as the filing date of the application. Sections 42 and 58, however, do not refer to a filing date or a priority date. In Apple Inc. v Registrar of Trade Marks his Honour, Yates J noted:

   [T]he Act does not in terms provide a mechanism for implementing a shifting date in s 41 or, indeed, in any other provision of the Act dealing with the registrability of a given mark. I can discern no basis for reading such a mechanism into the Act.[5] [Emphasis added].

   [3] Southern Cross Refrigerating Co v Toowoomba Foundry Pty Ltd [1954] HCA 82; (1954) 91 CLR 592, [595].

   [4] See sections 6, 12, and 72 of the Act.

   [5] [2014] FCA 1304, [45].

9. I will proceed on the basis that the filing date of 24 August 2016 is the ‘Relevant date’ at which to assess each of the grounds nominated.

   The Opponent

10. According to McDuff 1 the Opponent is a leading Australian designer and supplier of door and window systems, and related products. It supplies these products to third party door and window manufacturers ‘who incorporate the Opponent’s systems into products to be on sold for use in new building construction and building refurbishment’.

11. The Opponent relies upon the following earlier registered trade marks (‘the Opponent’s Trade Marks’)[6]:

    [6] See Annexure A for the good and services protected by these registrations.

Trade Mark No	Trade Mark	Goods/Services	Priority Date
1663959	EVO	6, 19, 37	17 December 2014
1680114	EVO	35	17 December 2014

The Applicant

1. The Applicant’s business sources, imports, markets and distributes products to the building and lifestyle industries including customers such as Bunnings, Trade Link and Reece.

   Discussion and Reasons

   Section 44

2. Section 44 of the Act relevantly provides:

   (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. 

3. Subject to s 44(4), an opponent must establish that the trade mark/s are substantially identical with, or deceptively similar to, another trade mark/s with an earlier priority date, in the name of a person other than the applicant, in respect of similar goods or closely related services.

4. In support of this ground the Opponent relies on the Opponent’s Trade Marks. Considering the information set out at [18] of this decision, it is clear that the Opponent’s Trade Marks are held in a name other than that of the Applicant and their priority dates are earlier than the Relevant date.

5. However, I must also decide whether the Opponent’s Trade Marks are substantially identical or deceptively similar to the EVO Trade Marks. The similarity of these marks has not been the subject of argument between the parties, but I will address this requirement and, for brevity, I make the following observations:

   The Opponent’s Trade Marks are both the word ‘EVO’ and the Applicant’s EVO Trade Marks are either identical - in the case of trade mark 1971914, or substantially identical to the Opponent’s Trade Marks, according to the widely accepted ‘side by side’ test.[7] The Applicant’s  trade marks numbers 1971912 and 1971912 wholly contain the Opponent’s Trade Marks. These marks all share the same identifying and memorable features and I find a total impression of similarity emerges from a comparison between the marks.[8]

   [7]  The Shell Co. of Australia Ltd v Esso Standard Oil (Australia) Ltd [1963] HCA 66; (1963) 109 CLR 407 at 414.

   [8] Carnival Cruise Lines Inc v Sitmar Cruises Limited (1994) 120 ALR 495 at [62].

6. I am left now to consider the similarity of the Applicant’s services compared with the goods and services already protected by the Opponent’s Trade Marks.

7. The Opponent’s trade mark number 1680114 includes the following class 35 services:

   Class 35: Retailing and wholesaling of windows, doors, parts of windows, parts of doors, door hardware, window hardware, window systems, door systems, automatic door systems, automatic window systems, cleaning agents for PVC, timber and aluminium, glazing lifters, glazing packers, sealants and silicones; import services (not being transport service); distribution of goods (not being transport services) (agent, wholesale, representative services, by any means); none of the foregoing services being provided in relation to hair or beauty products of any kind

8. The Applicant claims wholesaling services in class 35 for building products, hardware and/or tradesman's tools; wholesale of innovative products. These claims are broad wholesaling claims for any type of building, hardware and/or innovative product and each clearly encompass the services already protected by the Opponent’s trade mark no. 1680114. The most contentious issue here is what are innovative products? I am satisfied that the term would cover a very broad range of products which could extend to those the Opponent retails and wholesales.

9. Surprisingly, Mr McDuff states:

   ‘…my professional view is that all of the products disclosed in the Byrne declaration are different, and not the same as or similar, to the goods referred to in the opponent’s registered trade marks 1663959 and 1680114.’[9]

   [9] McDuff 2 [6], [7] and [9].

10. However, the relevant question under s 44 is what the Applicant can do if registration is obtained[10]. This is known as notional use and in this case, if registration was obtained, the Applicant could wholesale the same goods as the Opponent.

    [10] Southern Cross Refrigerating Company v Toowoomba Foundry Pty Ltd (1953) 91 CLR 592 at 595.

11. The s 44 ground has been made out.

12. This is not fatal to the application, however, because the Applicant has filed evidence of use. I must consider ss 44(3) and s 44(4).

13. Byrne establishes the Applicant commenced using the EVO Trade Marks in relation to the claimed services in 2010.

14. The Applicant’s evidence shows that the EVO Trade Marks are featured on invoices it sends to its customers and this is evidenced by the sample copies of invoices featured in Annexures PB-2 – PB 9. The earliest date on these invoices is 23 July 2010.

15. Confidential Annexure A shows the Applicant has earned a significant amount in revenue in the years between 2010 -2018 in relation to the EVO Trade Marks and the Applicant’s services.

16. The Applicant’s website prominently displays the EVO Trade Marks as evidenced in Annexures PB -13 and PB-14. Archived screenshots of the Applicant’s webpages have been provided for the years between 2011-2017.

17. The Applicant submits it has promoted the EVO Trade Marks extensively through print media, online advertising and social media platforms. Samples of these advertisements have been provided in Annexure PB-17.

18. Confidential Annexure B includes a breakdown of the Applicant’s marketing and promotional expenses between 2009-2018.

19. Annexure PB-19 includes a screen shot of an award reviewed by the Applicant in recognition of the ‘Selector Best New Product Award” at Designbuild for launching the first hot water heat recovery system in Australia.

20. Mr Byrne claims the Applicant has built a large portfolio of customers. Moreover, he says the Applicant honestly adopted the EVO Trade Marks and it was not aware of any use of any trade mark incorporating the word EVO by any other party when it commenced first use of the EVO Trade Marks in 2010.

21. McDuff 1 and 2 do not describe any earlier use of the Opponent’s Trade Marks or offer contemporaneous examples of earlier use in the any of the four Exhibits to McDuff 1. In fact, Mr McDuff states that the Opponent’s Trade Marks were not used in relation to its goods and services until at least early 2015.

22. It is clear that the Applicant began using the Evo Trade Marks in the course of trade in respect of the claimed services before the Opponent adopted the Opponent’s Trade Marks. The provisions of s 44(4) apply.

23. The s 44 ground of opposition is not established.

    Section 58

24. Section 58 of the Act provides:

    The registration of a trade mark may be opposed on the ground that the applicant is not the owner of the trade mark.

25. It is well established that in the absence of fraud, the owner of a trade mark is taken to be the first person to use it or another trade mark substantially identical to it,[11] in the course of trade in Australia in relation to the designated goods or services[12] or in relation to goods or services considered to be the ‘same kind of thing’ as the designated goods or services.[13]

    [11] Carnival Cruise Lines Inc v Sitmar Cruises Ltd [1994] FCA 936.

    [12] Seven Up Co v OT Ltd [1947] HCA 59.

    [13] Re Hicks’ Trade Mark (1897) 3 ALR 75.

26. The Opponent caries the burden of proof and while it is evident from the written record that the trade marks and, at least the services of each party, are requisitely similar for the purposes of s 58, as I prefaced under the s 44 discussion, the Opponent has failed to file evidence of use earlier than the Applicant’s first use which predates the Relevant date by almost 5 years.

27. Accordingly, this ground has not been established.

    Section 60

28. Section 60 of the Act 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.

29. To succeed under this ground of opposition, the Opponent must show that a reputation existed in another trade mark in Australia amongst a significant or substantial number of people[14] at the relevant date. The second limb of this ground of opposition requires the Opponent to then establish that because of this reputation use of the Trade Mark would be likely to deceive or cause confusion.

    [14] Renaud Cointreau & Cie v Cordon Bleu International Ltee [2001] FCA 1170; ConAgra Inc. v McCain Foods (Aust) Pty Ltd (‘Conagra’) [1992] FCA 159.

30. I turn to consider the first limb of the Opponent’s opposition under s 60, that is, whether the Opponent, at the Relevant date had acquired the requisite reputation in the Opponent’s Trade Marks.

31. Reputation is to be assessed according to the test set out in McCormick & Company Inc v McCormick (‘McCormick’)[15] by Kenny J:

    What is intended by the word “reputation” in s 60? The word is defined in The Macquarie Dictionary as follows:

    reputation ... 1. the estimation in which a person or thing is held, esp. by the community or the public generally; repute ... 2. favourable repute; good name ... 3. A favourable and publicly recognised name or standing for merit, achievement, etc. ... 4. The estimation or name of being, having done, etc, something specified.Cf. The Oxford English Dictionary.

    In s 60, the word is, I think, apt to refer to “the recognition of the McCormick & Co marks by the public generally”.

    [15] McCormick & Company Inc v McCormick [2000] FCA 1335 [81] (‘McCormick’).

32. The Opponent’s evidence shows use of the Opponent’s Trade Marks from at least February 2015. Exhibit SM-1 is a copy of a technical catalogue. The Opponent’s Trade Marks appear in this catalogue.

33. A copy of the Opponent’s company pricelist is provided in Exhibit SM-2 and is dated February 2015. The Opponent claims these pricelists are widely distributed to actual and potential customers.

34. The Opponent also claims the Opponent’s Trade Marks appear on its signage in product showrooms operated by the Opponent and in some operated by its customers. Exhibit SM-3 are copies of photographs of a showroom and the Opponent’s Trade Marks can be clearly identified.

35. Exhibit SM-4 are copies of 16 tax invoices which show the Opponent’s Trade Marks. The earliest date on these invoices is 12 May 2015.

36. No revenue or marketing figures have been provided.

37. Taking the Opponent’s evidence at its highest, it falls considerably short of demonstrating the kind of reputation McCormick requires for s 60.

38. In the words of Hearing Officer Thompson in Hugo Boss AG v Jackson International Trading Co Kurt D Bruhl GmbH & Co KG:

    As regards a trade mark, its reputation derives both from the quantum of sales under that mark and also the esteem, or image, projected by that trade mark. The quantum of sales, advertising and promotion contributes to the 'recognition' component of the trade mark's reputation. The credit, image and values projected by a trade mark attaches to the 'esteem' component of the reputation as do the public events and other trader's marks with which owner of the trade marks in question choses 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.[16]

    [16] Hugo Boss AG v Jackson International Trading Co Kurt D Bruhl GmbH & Co KG [1999] ATMO 23 (25 March 1999).

39. I am not satisfied that the use of the Opponent’s Trade Marks prior to the Relevant date is sufficient to establish the requisite reputation under s 60. Accordingly, I have no need to consider the second limb of s 60.

40. The s 60 ground of opposition has not been established.

    Section 42

41. Section 42(b) of the Act relevantly provides:

    An application for the registration of a trade mark must be rejected if:

    […]

    (b) its use would be contrary to law.

42. Under the s 42 (b) ground of opposition the Opponent must demonstrate that use of the Trade Mark would not could be contrary to law.[17]

    [17] Advantage-Rent-A-Car Inc v Advantage Car Rental Pty Ltd [2001] FCA 683 [28].

43. The Statement of Grounds and Particulars claims that the Opponent relies on ss 18 of Schedule 2 to the Australian Consumer Law (‘ACL’) of the Competition and Consumer Act 2010. The Opponent also claims that use of the EVO Trade Marks would also amount to the tort ‘passing off’.

44. The Opponent has failed to establish a ground of opposition under s 60 of the Act. It is well-establish that this predicates the outcome for the Opponent under the s 42(b) ground because the test for misleading or deceptive conduct under s 18 of the ACL is a more stringent test than that for deception or confusion under s 60 and passing off.[18]

    [18] Parkdale Custom Built Furniture Pty Ltd v Puxu Pty Ltd (1982) 149 CLR 191, 198 (Gibbs CJ).

1. Furthermore, if a trade mark does not meet the requirements of s 18 of the ACL it will not constitute the tort ‘passing off’.[19]

   [19] Pacific Publications Pty Ltd v IPC Media Pty Ltd [2003] FCA 104, [107] (Beaumont J); Re Equity Access Pty Ltd v Westpac Banking Corporation [1989] FCA 506, [40] (Hill J).

2. Accordingly, the s 42(b) ground of opposition has not been established.

   Decision

3. The Opponent has not established a ground of opposition.

4. Accordingly, I decide that Trade Marks 1791912, 1791913 and 1791914 may proceed to registration one month from the date of this decision.[20] The provisions of s44(4) should be applied.

   [20] Trade Marks Act 1995, s 55.

5. If the Registrar is served with a notice of appeal before that time, I direct that registration shall not occur until the appeal has been decided or discontinued and that the disposition of the application(s) should otherwise be in accordance with the Court’s order or direction.

   Costs

6. The Applicant sought costs. As the successful party, the Applicant is so entitled.

7. I award costs against the Opponent as per Schedule 8 of the Trade Marks Regulations 1995.

   Cristy Condon
   Hearing Officer
   Oppositions and Hearings
   Trade Marks and Designs

   22 April 2020

   Annexure A – The Opponent’s Goods and Services

   Trade Mark No 1663959

   Class 6: Aluminium doors; Aluminium residential doors; Armoured doors of metal; Assemblies of metal doors adapted to fold; Assemblies of metal doors adapted to slide; Automatic closers of metal for doors; Burglary protection units of metal for doors; Doors of metal; Doors of metal for buildings; Doors of metal for security purposes; Doors of metal for strong rooms; Doors of metal for use in industrial buildings; Fire doors of metal; Fire resistant doors of metal; Fireproof doors of metal; Fittings of metal for doors; Fittings of metal for mounting doors; Frames of metal for doors; Lift-up doors of metal; Lift-up metal doors; Mechanisms of metal (non-electric) for sliding doors; Non-electric control apparatus of metal for closing doors; Non-electric locking devices of metal for doors; Runners of metal for sliding doors; Sliding doors of metal for buildings; Tiltable doors of metal for buildings; Tiltable metal doors for buildings; Aluminium windows; Armoured windows having metal frames; Casement windows of metal; Clamps of metal for fixing windows; Glazed windows (metal frame); Mechanisms of metal (non-electric) for lifting windows; Mechanisms of metal (non-electric) for sliding windows; Metal casement windows; Metal fitted windows; Metal fittings for windows; Metal mountings for windows; Metal rollers for sliding windows; Metal sash fasteners for windows; Metal sash windows; Metal skylight windows; Metal windows; Metallic frames for windows; Metallic windows; Ready made windows made of metal; Safety fittings of metal for windows (non-electric); Sash balances of metal for windows; Sash fasteners of metal for windows; Windows of metal

   Class 19: Doors made of glass for buildings; Doors made of plastic for buildings; Doors made of wood for buildings; Doors, not of metal; Fire doors, not of metal; Fireproof doors, not of metal; Folding doors, not of metal; Glass doors; Glass-reinforced plastic doors; Glazed doors (non-metallic frame); Insulating doors of non-metallic materials; Lift-up doors, non-metallic; Non-metallic doors; Non-metallic external doors; Non-metallic frames for doors; Non-metallic frames for glazed doors; Non-metallic laterally opening doors; Non-metallic sliding doors (other than for furniture or for vehicles); Prefabricated doors of wood (other than for furniture); Ready made doors made of plastic; Ready made doors made of polyvinylchloride; Ready made doors made of wood; Shaped sheets of wood for use in the construction of doors; Wooden doors; Casement windows, not of metal; Fitted windows made of non-metallic materials; Mounts of plastic for roof windows; Mounts of plastic for skylight windows; Mounts of wood for roof windows; Mounts of wood for skylight windows; Non-metallic frames for glazed windows; Non-metallic frames for windows; Non-metallic sash balances for windows; Non-metallic shaped sections for use in the construction of windows; Ready made windows made of plastic; Ready made windows made of polyvinylchloride; Ready made windows made of wood; Skylights (windows) of non-metallic materials for use in buildings; Skylights not of metal (windows); Windows, not of metal

   Class 37: Installation of doors and windows; Installation of fittings for buildings; Installation of glass

   Trade Mark 1680114

   Class 35: Retailing and wholesaling of windows, doors, parts of windows, parts of doors, door hardware, window hardware, window systems, door systems, automatic door systems, automatic window systems, cleaning agents for PVC, timber and aluminium, glazing lifters, glazing packers, sealants and silicones; import services (not being transport service); distribution of goods (not being transport services) (agent, wholesale, representative services, by any means); none of the foregoing services being provided in relation to hair or beauty products of any kind