Fisi Fibre Sintetiche S.p.A. v NZ Merchants Limited

[2017] ATMO 91

TRADE MARKS ACT 1995

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

Re:Opposition by Fisi Fibre Sintetiche S.p.A.to registration of trade mark application 1702203 (24) - THERMOSOFT - in the name of NZ Merchants Limited

Delegate:

Nicholas Smith

Decision on the Written Record

Decision:

2017 ATMO 91

Trade Marks Act 1995 (Cth) - Section 52 opposition: ss 42(b) 44, 59, 60 and 62A considered – s44(1) established in relation to a limited range of goods – Amendment of mark to remove goods not made - registration refused

Background

1.  This is an opposition brought by Fisi Fibre Sintetiche S.p.A. (‘Opponent’) pursuant to s 52 of the Trade Marks Act 1995 (Cth) (‘Act’) to the registration of the trade mark which is the subject of the application detailed below in the name of NZ Merchants Limited (‘Applicant’): 

Application Number:	1702203
Filing Date:	23 June 2015
Goods:	Class 24: Textiles and textile goods not included in other classes; curtains; curtain fabrics; curtains of textile or plastic; draperies; indoor and outdoor curtains; window and door curtains; curtain loops and curtain holders (textile material); bed blankets; bed clothes; bed sheets; bed covers; bed linen; bedspreads; bath linen; eiderdowns; household linen; mattress covers; pillow shams; pillowcases; textile place mats; quilts; duvets; rugs; blankets; tablecloths; table linen; towels; continental quilts; none of the foregoing being sleeping bags (sheeting) (‘Applicant’s Goods’)
Trade Mark:	THERMOSOFT	(‘Trade Mark’)

2.  Following the advertisement on 10 December 2015 in the Australian Official Journal of Trade Marks of the application’s acceptance for possible registration, the Opponent filed a Notice of Intention to Oppose on 8 February 2016.  The Opponent then filed a Statement of Grounds and Particulars (‘SGP’) on 3 March 2016. The SGP was assessed by this office as adequate. The Applicant filed a Notice of Intention to Defend on 15 April 2016. The SGP raised grounds of opposition under ss 42(b) 44, 59, 60 and 62A of the Act.

3. The SGP also sought the refusal of the registration of the Trade Mark on the basis of the ‘exercise of the Registrar’s discretion, by reason of the conduct of the Applicant and/or the nature of the Trade Mark and/or its use and/or such other grounds as the Registrar, or the court of appeal, may see fit to allow. Section 52(4) of the Act provides that ‘The registration of a trade mark may be opposed on any of the grounds specified in this act and on no other grounds’. As the statement set out above does not refer to any specified grounds it does not raise a valid ground of opposition specified in the Act and to the extent necessary, I dismiss it.

Evidence and Submissions

4.  Neither Party chose to file any evidence in this matter.  As such I have no evidence before me regarding the background or business engaged in by either the Applicant or the Opponent. Once the time allowed for filing evidence had ended the parties were given an opportunity to request a hearing or to file written submissions.  Neither party chose to avail themselves of these opportunities.  By letter issuing from IP Australia on 11 January 2017 the parties were notified that as neither party had requested a hearing the matter would be given to a delegate of the Registrar for a decision based on the written record.  The letter indicated that the parties had one month from the date of the letter to file any written submissions they wished to reply upon.  Neither party chose to file submissions in this matter.

5. I am a delegate of the Registrar of Trade Marks and I am to decide the opposition as required by s 55 of the Act which provides that, unless the proceedings are discontinued, dismissed, or have lapsed under s 54A the Registrar must, at the end, decide on the basis of the written record, comprised of the materials mentioned in the preceding paragraphs:

(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.

Grounds of Opposition, Onus and Standard of Proof

6. As indicated above in the SGP the Opponent nominated grounds of opposition under ss 42(b) 44, 59, 60 and 62A. To successfully oppose the application the Opponent needs to establish at least one of those grounds. The onus of proof in an opposition rests upon the Opponent.[1]  The relevant standard of proof is the ordinary civil standard based on the balance of probabilities.[2]

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

[2] Following Pfizer Products Inc v Karam (2006) 70 IPR 599, [6]-[26], and Telstra Corporation Limited v Phone Directories Company Pty Ltd [2015] FCAFC 156, [133].

7. With the exception of ss 42(b) and 44 (discussed below), as the Opponent has filed no evidence and provided no submissions I have no hesitation deciding that the Opponent has not discharged the onus on it and has consequently not to any extent established any of the remaining grounds of opposition nominated in the SGP. The mere filing of the Notice of Opposition without any supporting evidence or submissions does not serve to place the onus on the Applicant to defend its application.[3]

[3] Medley Distilling Co v Croakers Gully Australia (2000) 53 IPR 430, 433.

8.  The date at which the rights of the parties are to be determined is 23 June 2015, being the filing date of the application in Australia (‘relevant date’) (except in circumstances, not present here in which a different priority date is provided for in the Act).[4]

[4] Southern Cross Refrigerating Co v Toowoomba Foundry Pty Ltd (1954) 91 CLR 592, 595, see also s 29(1) Trade Marks Act 1995 (Cth).

Discussion

Section 44

1. The relevant provisions of the Act with respect to the ground pursuant to s 44 are reproduced below:

Section 44 - 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)it 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.

Note 1: For deceptively similar see section 10.

Note 2: For similar goods see subsection 14(1).

Note 3: For priority date see section 12.

Note 4: The regulations may provide that an application must also be rejected if the trade mark is substantially identical with, or deceptively similar to, a protected international trade mark or a trade mark for which there is a request to extend international registration to Australia: see Part 17A.

Section 10 - Definition of deceptively similar

For the purposes of this Act, 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.

1. To successfully oppose the application pursuant to s 44 of the Act the Opponent must establish the requirements of s 44(1), i.e. that at least one of the trade marks upon which it relies:

   ·     has a priority date which is earlier than that of the Trade Mark (‘the first requirement’);

   ·     is substantially identical with or deceptively similar to the Trade Mark (‘the second requirement’); and

   ·     is in respect of similar goods, and/or services which are closely related to, the Applicant’s Goods (‘the third requirement’).

2. In the event that each of these requirements are satisfied by the Opponent it may be possible for the Registrar to accept the application if the Registrar is satisfied that there has been honest concurrent use, other circumstances or that the Applicant has continuously used the trade mark beginning before the priority date of the Opponent’s relied upon mark, pursuant to ss 44(3) and s44(4) of the Act however as the Applicant has filed no evidence and made no submissions in respect of ss 44(3) and s44(4) of the Act I do not need to consider this.

3. The Opponent has particularised the ground of opposition in the SGP by reference to the Opponent’s Trade Marks set out below.  

Number	Trade Mark	Priority Date	Goods and Services
506209	7 March 1989	Class 20: Furniture; mirrors; frames; plastic articles, all being goods in this class; plastic furniture; metal furniture; camping furniture; spring mattresses; pillows; all other goods in this class
506210	7 March 1989	Class 22: Cords; strings; nets; tents; camping tents; padding materials not of rubber or plastics; fibre; feathers; unworked textile fibres; all being goods in class 22; all other goods in this class
506211	(‘Thermore Mark’)	7 March 1989	Class 24: Textiles and textile goods, not included in other classes; cloth in this class, curtains of textile or plastic, bed covers, bed clothes, blankets, tablecloths in this class; all other goods in this class
506212	7 March 1989	Class 25: Suits and dresses made of leather; clothing articles for men, women and children; shirts; skirts; coats; trousers; pants; vests; jerseys; pyjamas; shoes; socks and stockings; singlets; corsets; garters; drawers; petticoats; slippers; footwears in general; hats; scarves; foulards; neck-ties; rain-coats, overcoats; great-coats; bathing-costumes; sports overalls; wind-resistant jackets; ski-pants; belts; all other goods in this class
1484370	THERMOSOFT (‘Thermosoft Mark’)	2 February 2012	Class 20: Mattresses; pillows; cushions (‘Class 20 Goods’) Class 22: Raw textile fibers; padding materials, animal hair, kapok, feathers, seaweed (‘Class 22 Goods’) Class 25: Dresses made from skins; sports dresses; men's, ladies' and children's clothing; shirts; blouses; skirts; jackets; pants; shorts; undershirts; knitwear; pajamas; socks; jerseys; bodices; garter belts; bodysuits; slippers; shoes; hats; collar protectors; scarves; neckties; raincoats; overcoats; coats; bathing suits; sports suits; anoraks; ski pants; belts; padded clothing for cold climates (‘Class 25 Goods’)

1. Each of the Opponent’s Trade Marks has a priority date that is earlier than the priority date of the Trade Mark.  The first requirement is satisfied. 

Similar goods

1. Section 14 of the Act relevantly provides:

   14Definition 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.

2. McCormick & Company Inc v McCormick summarises the legal principles applicable when determining if the goods for which the Opponent’s Trade Marks are registered are goods of the same description as the Applicant’s Goods as follows:

   Whether the relevant goods are of the same description is essentially a question of fact.

   The authorities establish that there are three principal factors to be considered in this regard.  They are:  (1) the nature of the goods, including their origin and characteristics; (2) the uses made of them, including their purpose; and (3) the trade channels through which the goods are bought and sold.  As to the last-mentioned matter, it may be relevant to consider whether the goods being compared are produced by the same manufacturer or distributed through the same channels; whether they are sold in the same shops; whether they are sold to the same sort of customers; and whether those engaged in the manufacture and distribution of the goods are considered as belonging to the same trade:  see In Re Jellinek’s Application (1946) 63 RPC 59 at 70-72; In Re John Crowther & Sons (Milnsbridge) Ltd’s Application (1948) 65 RPC 369 (“Crowther’s Application”) at 372; In Re Frank George Whiting’s Application (1952) 69 RPC 219 at 221; and Reckitt & Colman (Australia) Ltd v Boden (1945) 70 CLR 84 at 94. As the High Court stated in Southern Cross Refrigerating Co v Toowoomba Foundry Pty Ltd (1954) 91 CLR 592 (“Southern Cross”) at 606-607:

   The fact that examination of the nature of the applicant’s goods may, by itself, induce an observer to conclude that they are different in character from those of an opponent, and designed to serve different purposes, is by no means conclusive.  Nor is the fact that the applicant’s goods are not specified by the regulations as being within the same class of goods:  see In re The Australian Wine Importers Ltd (1889) 41 Ch D 278, at p 291 and Reckitt & Colman (Australia) Ltd v Boden (1945) 70 CLR 84, at p 90 per Latham CJ. There may be many matters to be considered apart from the inherent character of the goods in respect of which the application is made and some indication of what matters are relevant to this inquiry was given by Romer J in In re Jellinek’s Application (1946) 63 RPC 59. Romer J thought it necessary to look beyond the nature of the goods in question and to compare not only their respective uses but also to examine the trade channels through which the commodities in question were bought and sold. Shortly after the decision in Jellinek’s Case … the Assistant-Comptroller elaborated on the observations of Romer J in the following manner:  ‘In arriving at a decision upon this issue the reported cases show that I have to take account of a number of factors, including in particular the 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 …, 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.  No single consideration is conclusive in itself, and it has further been emphasized that the classifications contained in the schedules to the Trade Marks Rules are not a decisive criterion as to whether or not two sets of goods are “of the same description”’:  Inre an Application by John Crowther & Sons (Milnsbridge) Ltd (1948) 65 RPC 369, at p 372. Much the same considerations are evident in the observation of Dixon J (as he then was) in Reckitt & Colman (Australia) Ltd v Boden (1945) 70 CLR 84 when he said: ‘What forms the same description of goods must be discovered from a consideration of the course of trade or business. One factor is the use to which the two sets of goods are put. Another is whether they are commonly dealt with in the same course of trade or business. In the present case, the goods are quite different, their uses are widely separated and they are not commonly sold in the same kinds of shops or departments’ (1945) 70 CLR, at p 94.

On the one hand, goods are not necessarily of the same description simply because they are sold for human consumption and in common trade channels: see, for example, In Re J & J Colman Ltd’s Application (1929) 46 RPC 126, where mustard and semolina were held not to be goods of the same description. See also G Wood, Son & Co Ltd v McVitty & Co Pty Ltd (1964) 34 AOJP 2601 and In Re Chan Li Chai Medical Factory (HK) Ltd’s Application (1990) 19 IPR 140 at 144. On the other hand, the expression “goods of the same description” is not construed restrictively and regard is paid to the commercial context in which the goods in question are bought and sold: see Rowntree plc v Rollbits Pty Ltd (1988) 10 IPR 539 at 546 and Dinning v New Balance Athletic Shoe Inc (1992) AIPC 38,719 at 38,725. [5] 

[5] [2000] FCA 1335 [17].

1. I find that the Theremore Mark is registered in respect of similar goods to the Applicant’s Goods as its registration for ‘all other goods’ in class 24 encompasses the Applicant’s Goods.  The third requirement is thus satisfied for the Thermore Mark and, as the Thermore Mark is identical to the marks numbered 506209, 506210 and 506212 it is not necessary to consider these marks (since a finding that the above marks are registered in respect of similar goods does not change the outcome of the Opposition in any way).

2. With respect to the Thermosoft Mark it is necessary to compare the various classes of goods for which it is registered to the Applicant’s Goods.  The Applicant’s Goods can be broadly categorized as textiles and linin (or manchester).  In particular:

   ·     The Applicant’s Goods are not goods of the same description as the Class 25 Goods.  In this case I reach the same conclusion as the Registrar’s Delegate in Wilder Days Pty Ltd v Karhugh Properties Pty Ltd[6] Clothing and manchester are generally sold through different departments of larger stores or separate smaller stores.  They are used for different purposes.  The people engaged in their manufacture and distribution of clothing and Manchester are not generally regarded as belonging to the same trade.  

   ·     The Applicant’s Goods are not goods of the same description as the Class 22 Goods.   While the decision as to whether the goods are goods of the same description is a factual one dependant on the circumstances of the case, I note that there is some authority that when one of the compared goods is a raw material used in the manufacture of the other, it is not for that reason alone goods of the same description.[7]  In the present case I have been provided with no evidence or submissions to suggest, when considering the nature of the goods, the uses of the goods and the trade channels through which they are bought and sold, that linin/manchester are goods of the same description as ‘raw textile fibers’ or the reminder of the Class 22 goods.

   ·     I find that the Class 20 Goods are goods of the same description as a subset of the Applicant’s Goods being goods that are directly complementary to mattresses, pillows and cushions, for example pillow cases and mattress covers.  While the origin of these goods may be different (particular with respect to mattresses, which require specialist manufacturing), such goods are used together to provide (in the case of mattresses and mattress covers, for example) a bedding solution.  Furthermore it is not unusual for mattresses, pillows and cushions to be sold with covers, quilts, bedsheets or related bedding products, from the same stores or over the same counter to the same classes of customer, sometimes even as a single package.  Indeed it would not be unusual for a customer, seeking a bedding solution, to visit a specialist store and buy a mattress, pillows, cushions, pillow covers, mattress cover and mattress linin at the same time from the same store.  Equally I note that the Applicant’s Goods that amount to a broad categorisation of goods that include pillow cases and mattresses covers are goods of the same description.  I consider that:

   othe following Applicant’s Goods are goods of the same description as the Class 20 Goods: Textiles and textile goods not included in other classes; bed blankets; bed sheets; bed covers; bed linen; bedspreads; eiderdowns; household linen; mattress covers; pillow shams; pillowcases; quilts; duvets; rugs; blankets; continental quilts; and

   othe remaining Applicant’s Goods are not goods of the same description as the Class 20 Goods being: curtains; curtain fabrics; curtains of textile or plastic; draperies; indoor and outdoor curtains; window and door curtains; curtain loops and curtain holders (textile material); bed clothes; bath linen; textile place mats; tablecloths; table linen; towels; none of the foregoing being sleeping bags (sheeting).

   [6] (1993) 27 IPR 473.

   [7] See Hermes Sweeteners Ltd v Hermes (1990) 17 IPR 382 (Reg); Leroy SA v Regal Grange Pty Ltd (2001) 51 IPR 199 (Reg).

1. The third requirement is thus satisfied for the Thermore Mark and satisfied for a subset of the Applicant’s Goods for the Thermosoft mark.

Substantially identical or deceptively similar?

1. I will now address the first element of the second requirement, namely whether the Trade Mark is substantially identical to the Thermosoft or Thermore Mark.  When considering ‘substantial identity’ in Shell Co of Australia Ltd v Esso Standard Oil (Australia) Ltd Windeyer J said:

   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.[8]

   [8] (1963) 109 CLR 407, [12].

2. The Trade Mark is substantially identical to the Thermosoft Mark; indeed it is identical.

3. On a side by side comparison there are clear differences between Trade Mark and the Thermore Mark.  The latter is a graphic mark that shares the prefix ‘Thermo’ but not suffix and contains additional graphic elements not replicated in the Trade Mark.  These differences are significant and are sufficient for me to conclude that the respective trade marks are not substantially identical.  I move on then to consider whether the Trade Mark and the Thermore Mark are deceptively similar.

4. The principal authority for guidance in determining whether trade marks are deceptively similar also comes from the judgment of Windeyer J in Shell Co (Aust) Ltd v Esso Standard Oil (Aust) Ltd:

   On the question of deceptive similarity, a different comparison must be made from that which is necessary when substantial identity is in question. 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 [trade mark].[9]

   [9] Ibid [13].

5. Jacobson J in Millennium & Copthorne International Limited v Kingsgate Hotel Group Pty Ltd summarised the principles of deceptive similarity with reference to the authorities as follows:

   Without seeking to reformulate the various statements of principle stated in the Full Court authorities, it is sufficient for present purposes to identify the critical elements which seem to me to inform the issue of deceptive similarity in the present case. There are nine elements.

   First, the judgment of likelihood of deception is a practical one. It requires an assessment of the effect of the challenged mark on the minds of potential customers: Woolworths[10] at [49]; Australian Woollen Mills[11] at 658.

   Second, the question of deceptive similarity is not to be decided by a side-by-side comparison. It is to be determined by a comparison of the impression based on recollection of the opponent’s mark that persons of ordinary intelligence and memory would have, and the impression that those persons would get from the opposed trade mark: Crazy Ron’s[12] at [73]; Shell Company of Australia Ltd v Esso Standard Oil (Australia) Ltd [1963] HCA 66; (1963) 109 CLR 407 at 415 per Windeyer J.

   Third, allowance must be made for imperfect recollection: Crazy Ron’s at [74].

   Fourth, the effect of the spoken description must be considered: Woolworths at [49]; Crazy Ron’s at [75]; Australian Woollen Mills at 658.

   Fifth, it is necessary to show a real tangible danger of deception or confusion: Woolworths at [43] and [50]; Crazy Ron’s at [76]; Southern Cross Refrigerating[13] at 594 – 595.

   Sixth, 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 the two products come from the same source: Woolworths at [50]; Southern Cross Refrigerating Co at 595. This test sets a lower threshold than that which is required to establish that conduct is likely to mislead or deceive under s 18 of Schedule 2 of the Competition and Consumer Act 2010 (Cth): see McWilliam's Wines Pty Ltd v McDonald's System of Australia Pty Ltd [1980] FCA 159; (1980) 33 ALR 394 at 398 per Smithers J.

   Seventh, all surrounding circumstances must be taken into consideration. The circumstances include those in which the marks will be used, and in which the goods or services will be bought and sold, as well as the character of the probable acquirers of the goods and services: Woolworths at [50]; Crazy Ron’s at [86] – [89]; Southern Cross Refrigerating at 595.

   Eighth, the question of whether there is a likelihood of confusion is not to be answered by reference to the manner in which a party has used the mark, but by reference to what an applicant can do. That is to say, the use to which it can properly put the mark if registration is obtained: Woolworths at [50]; Berlei Hestia Industries Ltd v The Bali Company Inc [1973] HCA 43; (1973) 129 CLR 353 at 362 per Mason J.

   Ninth, if a registered trade mark includes words which can be regarded as an ‘essential feature’ of the mark, another mark that incorporates those words may cause a tangible danger of deception or confusion by reason of consumers retaining an imperfect recollection of those words: Crazy Ron’s at [79]. However, care must be taken to not too readily characterise words in a composite trade mark as an ‘essential feature’ because to do so may effectively convert a composite mark into something different: Crazy Ron’s at [100].[14]

   [10] Registrar of Trade Marks v Woolworths Ltd [1999] FCAFC 1020.

   [11] Australian Woollen Mills Ltd v FS Walton & Co Ltd [1937] HCA 51; (1937) 58 CLR 641.

   [12] Crazy Ron’s Communications Pty Ltd v Mobileworld Pty Ltd [2004] FCAFC 196; (2004) 209 ALR 1.

   [13] Southern Cross Refrigerating Co v Toowoomba Foundry Pty Ltd (1954) 91 CLR 592.

   [14] [2012] FCA 1022, [38]-[46].

6. While both the Trade Mark and the Thermore share the first 5 letters ‘therm’, I find that there are significant visual and aural differences between them when considered as a whole.  The Thermore Mark depicts the word ‘Thermore’ in a fancy font surrounded by an incomplete rectangle, elements not shared with the Trade Mark.  There are significant aural differences, with the Trade Mark likely to be pronounced ‘Therm-o-soft’ and the Thermore Mark likely to be pronounced as ‘Therm-ore’.  Given the term ‘therm’ is a common abbreviation of the word ‘thermal’ it is likely that a consumer viewing each of the marks would be drawn towards the distinctive elements of each of the marks, being the ‘osoft’ in the Trade Mark and ‘ore’ and the prominent font and square in the Thermore Mark.  Even allowing for imperfect recollection, it is in my view unlikely that the use of the Trade Mark will deceive or cause confusion because of any similarity it has to the Thermore Mark.

7. I find that the Opponent has establish the ground of opposition under s 44 with respect to the Thermosoft Mark which is registered for goods that are the same description as the following goods for which the Applicant seeks to register the Trade Mark, Textiles and textile goods not included in other classes; bed blankets; bed sheets; bed covers; bed linen; bedspreads; eiderdowns; household linen; mattress covers; pillow shams; pillowcases; quilts; duvets; rugs; blankets; continental quilts (‘Conflicting Goods’), but has not established it for the remaining Applicant’s Goods.

Section 42

1. Section 42 of the Act is reproduced below:

   42 Trade mark scandalous or its use contrary to law

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

   (a) the trade mark contains or consists of scandalous matter; or

   (b) its use would be contrary to law.

2. The Opponent particularised this ground of opposition solely on the basis that the use of the Trade Mark would be contrary to law (s 42(b)).  The onus is on the Opponent to establish that use of the Trade Mark by the Applicant would be, rather than could be, contrary to law on the balance of probabilities.[15]  The relevant time for assessing whether an application is contrary to law is at the relevant date but ‘looking forward to prospective conduct after registration’.[16]

   [15] Advantage Rent-a-Car Inc v Advantage Car Rental Pty Ltd [2001] FCA 683.

   [16] Time Warner Entertainment Co LP v Stepsam Investments Pty Ltd [2004]  59 IPR 343, 353.

3. The ground of opposition pursuant to s 42 of the Act was particularised in the SGP as follows:

   Based on the Opponent’s reputation in its Trade Marks THERMOSOFT and THERMORE, consumers are likely to be mislead or deceived into believing that the goods and services offered under or by reference to the Opposed Trade Mark are those of the Opponent or somehow associated or affiliated with the Opponent in breach of section 18 of the Australian Consumer Law 2010.

   Offering the goods for which the registration is sought under or by reference to the Opposed Trade mark also suggests that the Trade Mark Applicant and its goods are associated or affiliated with the Opponent or that the Applicant has obtained the Opponent’s sponsorship or approval to use the opposed Trade Mark, when this is not the case.  This conduct would be in breach of section 29 of the Australian Consumer Law 2010.

   Due to the Opponent’s reputation in connection with its Trade Marks, there is a risk that any use by the Applicant of the Opposed Trade Mark would be likely to mislead the general public and thereby cause damage to the Opponent’s reputation and goodwill in connection with its Trade Marks and be actionably under the common law tort of Passing Off.

   Therefore, use by the Applicant for the opposed Trade mark in relation to the specification of goods therein is contrary to law and contrary to section 42(b) of the Act.

4. For the Registrar to be satisfied that the use of the Trade Mark would be in breach of ss 18 and/or 29 of the ACL or passing off (as particularised in the SGP), the Opponent would need to show, at the very minimum, that a reputation existed in the trade marks nominated in the SGP as at the relevant date. The Opponent has provided no evidence or submissions as to the existence of any registration in any of the Opponent’s Trade Marks as at the relevant date. Given the absence of any reputation held by the Opponent in the Trade Mark as at the relevant date, I am not satisfied that the Opponent has met this burden. Therefore, the Opponent has failed to establish the ground of opposition under s 42(b).

Decision

1. Section 55 of the Act relevantly provides:

   55Decision

   (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.

   Note:For limitations see section 6.

2. The ground under s 44 of the Act has been established in respect of the Conflicting Goods but not with respect to the remaining Applicant’s Goods. In Apple Inc. v Registrar of Trade Marks[17] Yates J stated that:

   My finding that the application for registration of APP STORE for the designated services in Class 35 must be rejected determines the fate of the application as a whole. This is because there are no separate applications for registration of the mark for the designated services Classes 38 and 42. There is but one application covering registration of the mark for all the services that have been specified. If the application fails in one respect, it fails as a whole. In these circumstances, is not necessary for me to proceed to determine the registrability of APP STORE for the designated services in Class 38 or Class 42.[18]

   [17] [2014] FCA 1304, [232]-[239].

   [18] Ibid [232].

3. The Applicant has been provided with the opportunity to amend the Applicant’s Goods and Services to remove the Conflicting Goods, allowing the Trade Mark to proceed to registration for the remaining Applicant’s Goods. The Applicant has chosen not to take up this opportunity. I therefore find that the Opponent has established the ground of opposition it raised pursuant to s 44 of the Act. As the Delegate of the Registrar I accordingly refuse to register the Trade Mark.

Nicholas Smith

Hearing Officer

Trade Mark and Designs Hearings

23 August 2017