Fluor Corporation v Science Developments Pty Ltd
[2025] ATMO 170
•29 August 2025
TRADE MARKS ACT 1995
DECISION OF A DELEGATE OF THE REGISTRAR OF TRADE MARKS WITH REASONS
Re:Opposition by Fluor Corporation to registration of trade mark application number 2362534 (classes 11 & 40) - FLUROFIX - in the name of Science Developments Pty Ltd
Delegate:
Tracey Berger
Representation:
Opponent: No appearance
Applicant: Griffith Hack
Decision:
2025 ATMO 170
Trade Marks Act 1995 (Cth) – opposition under section 52 – ss 42(b), 44, 58A and 60 considered – no grounds established – trade mark to proceed to registration
Background
1. This is a decision on the opposition by Fluor Corporation (‘Opponent’) under s 52 of the Trade Marks Act 1995 (Cth)[1] to registration of the trade mark detailed below filed in the name of Science Developments Pty Ltd (‘Applicant’):
[1] Unless otherwise indicated, any references to sections or regulations, below, are references to sections or regulations of the Trade Marks Act 1995 (Cth) (‘Act’) or the Trade Marks Regulations 1995 (Cth) (‘Regulations’), respectively.
Trade Mark: FLUOROFIX (‘Trade Mark’)
Number:2362534 (‘Application’)
Filing Date: 15 June 2023 (‘Relevant Date’)
Specification: Class 11: Machines for the treatment (purification) of water; Reverse osmosis membrane filters for water treatment; Installations for the treatment of industrial waste water; Waste water treatment apparatus; Waste water treatment installations; Water treatment apparatus for water purification; Water treatment filters; Water treatment units; Installations relating to membrane filtration technology; Membrane filtration units for water treatment apparatus; Electrostatic filters for water filtration; Installations for water filtration; Membranes for the filtration of water; Water filtration apparatus; Water filtration installations; Water filtration units; Portable filtration apparatus for filtering water (other than machines)
Class 40: Treatment (purification) of water; Treatment of waste water; Waste water treatment services; Water treatment services; Filtration services; Water pollution control (treatment of materials)
(‘Applicant’s Goods and Services’)
2. Following the advertisement of acceptance of the Application for possible registration, the Opponent filed a Notice of Intention to Oppose on 10 January 2024, followed by a Statement of Grounds and Particulars (‘SGP’) on 12 February 2024. The Applicant filed a Notice of Intention to Defend on 29 February 2024.
3. The parties then had an opportunity to file evidence in accordance with the Regulations. The Opponent filed evidence in support (‘EIS’) on 4 June 2024. The Applicant filed its evidence in answer (‘EIA’) on 6 September 2024. No evidence in reply was filed.
4. Once the time for filing evidence had ended, the parties had an opportunity to request a hearing. The Applicant requested a hearing by way of written submissions and the Opponent did not ask to be heard. The Applicant filed its written submissions on 1 July 2025. I am a delegate of the Registrar of Trade Marks and this matter has been allocated to me to determine. I do so based on the aforementioned materials.
Grounds and onus
5. In its SGP, the Opponent nominated grounds of opposition under ss 42(b), 44/reg 4.15A, 58A and 60.
6. The Opponent bears the onus of establishing at least one of the nominated grounds of opposition.[2] The standard of proof is the ordinary civil standard on the balance of probabilities.[3] The rights of the parties are to be determined at the Relevant Date, being both the filing date and priority date of the Trade Mark.
[2] Food Channel Network Pty Ltd v Television Food Network GP [2010] FCAFC 58, [32] (Keane CJ, Stone and Jagot JJ).
[3] Telstra Corporation Limited v Phone Directories Company Pty Ltd [2015] FCAFC 156, [133] (Besanko, Jagot
and Edelman JJ).
Evidence
7. The following evidence was filed:
8. Declarant and Position
Date
Exhibits/Annexures
EIS
Eric P. Helm of the Opponent (‘Helm’)
3 June 2024
1 to 12
EIA
Heath Roberts, Company Secretary & General Counsel for the Applicant (‘Roberts’)
6 September 2024
1 to 13
Florence Lundon-Moore, lawyer at Griffith Hack Lawyers, representatives of the Applicant (‘Lundon-Moore’)
6 September 2024
1 to 4
Opponent’s evidence
9. Helm states that the Opponent, founded in 1912, specialises in design, engineering, procurement, construction, project management, and related services such as waste and water treatment (‘Opponent’s Services’). The Opponent operates across the full project lifecycle from conceptual design to facility operation and maintenance. It focuses on large-scale industrial projects worth tens to hundreds of millions of dollars. The Opponent manages complex global projects for clients including government agencies, major energy, chemical and mining companies, manufacturers, and life science firms. In 2023, it ranked 303 on the Fortune 500 list.
10. The Opponent has provided its services under the mark FLUOR (‘Opponent’s Mark’), named after its founder, for over 110 years. It currently operates in over 60 countries, including Australia, and employs 30,000 people worldwide. Helm describes the Opponent as one of a few global firms capable of executing large-scale engineering, procurement and construction (‘EPC’) projects in processing and renewable fuels, and notes its numerous awards.
11. Helm states that the Opponent operates in Energy Solutions, Urban Solutions, and Mission Solutions, serving industries like chemicals, energy transition, fuels, government, infrastructure, manufacturing, mining, metals, and technology. The Opponent’s Services include designing and installing waste water treatment and reverse osmosis systems, engaging specialist contractors, procurement, site installation and commissioning of waste water treatment plant and equipment, and providing utilities such as cooling water, steam generation, water systems, fire systems, piping, tankage, and storage (atmospheric, pressure and refrigerated). A notable example is the decontamination of over 10 million square feet of United States Department of Energy’s gaseous diffusion plant in Ohio, involving a 1,000-person workforce and the construction of a new waste water treatment plant.
12. In 1961, the Opponent’s Australian subsidiary Fluor Australia Pty Ltd was established to deliver the Opponent’s Services in Australia under the Opponent’s Mark which it is licensed to use. Hereinafter, references to the Opponent include Fluor Australia Pty Ltd. Helm declares that the Opponent’s Mark has been used in Australia for the Opponent’s Services since at least July 1969 and it has been providing waste/water management services here since 1976. It provides the Opponent’s Services across the Australian mining and metals industry. The approximate annual revenue for services provided under the Opponent’s Mark from 2012 to 2024 is provided. The annual revenue generated is considerable. Helm declares that based on the Opponent’s records, about 1% of the revenue is generated from providing waste /water management services and that the Opponent has about 2% of the EPC market in Australia.
13. The Opponent promotes the Opponent’s Services in Australia and overseas at trade exhibitions, client events, industry events, and by way of catalogues and books, promotional videos, print and online articles, brochures, advertisements, social media, volunteering, Reconciliation Australia, merchandise and promotional items and corporate stationery/emails. The Opponent’s annual advertising expenditure for 2012 to 2024 in Australia and globally is provided. Examples of the Opponent’s promotional activities are also listed in and exhibited to Helm.
14. Helm states that the Opponent’s Services have also been promoted on its website at (‘Opponent’s Website’) since at least 1995 and it holds the domain name <fluor.com.au> which redirects users to the Opponent’s Website. Helm declares that the Opponent’s Website receives 1200-4000 hits from Australian IP addresses each month. Current and historical printouts of the Opponent’s Website are exhibited (‘Opponent’s Website extracts’).
15. The Opponent’s Mark is registered in over 50 countries including Australia as detailed below:
Australian Trade Mark Number
Trade Mark
Priority Date
Specification
326633
FLUOR
1/2/1979
Class 37: Construction and erection services for the construction and erection on a custom basis of plant buildings, facilities, wells equipment and related structures for the petroleum, petrochemical, natural gas, chemical, nuclear energy, offshore petroleum, mining, electrical power generating, and material processing industries
326634
FLUOR
1/2/1979
Class 42: Engineering and design of plant processes, buildings, equipment, structures and related facilities and processes, for the petroleum, petrochemical, natural gas, chemical, nuclear energy, offshore petroleum, mining, electrical power generating and material processing industries
918570
(’70 Mark’)
FLUOR
2/7/2002
Class 40: Material treatment services, including waste treatment services, recovery of hydrocarbon from gas; gas processing services; and petrochemical refining services
1346822
(’22 Mark’)
11/9/2009
Class 37: Construction, maintenance and/or repair services on a custom basis for buildings, plants, structures, operating and processing facilities, wells, laboratories, pilot plants and equipment for the aerospace, automotive, biotechnology, chemical, electrical power generating, electronics, environmental, general commercial, manufacturing, material processing, metallurgical mining, natural gas, nuclear energy, offshore petroleum, petrochemical, petroleum, pharmaceutical, plastics, pulp/paper telecommunication, thermal energy and transportation industries; consultation services on a custom basis relating to disposal of hazardous waste and environmental pollutants (cleaning)
Class 40: Waste management services including disposal of hazardous wastes and environmental pollutants (recycling, treatment and destruction); consultation services on a custom basis relating to disposal of hazardous waste and environmental pollutants (recycling, treatment and destruction)
Class 42: Architectural and engineering services on a custom basis for the design of buildings, plants, structures, operating and processing facilities, wells, laboratories, pilot plants and equipment, and related structures for aerospace, automotive, biotechnology, chemical, electrical power generating, electronics, environmental, general commercial, manufacturing, material processing, metallurgical mining, natural gas, nuclear energy, offshore petroleum, petrochemical, petroleum, pharmaceutical, plastics, pulp/paper, telecommunication, thermal energy and transportation industries; consultation services on a custom basis relating to the abatement and control of hazardous wastes and environmental pollutants
1378491
FLUOR CARES
13/8/2010
Class 35: Charitable services, namely, organizing and conducting volunteer programs and community service projects
16. The remainder of Helm contains submissions which are not necessary to summarise here.
Applicant’s evidence
17. Roberts declares that the Applicant was founded in 1979 and in 2017 became a wholly owned subsidiary of SciDev Ltd (‘SciDev’), an ASX listed company. A reference to SciDev in this decision includes the Applicant.
18. Roberts attests that SciDev is a world-leading environmental solutions provider for water-intensive industries. SciDev designs and delivers specialised and customised water treatment solutions to remove harmful contaminants from groundwater, surface water and industrial liquid waste, allowing water to be reused or safely discharged back to the environment. SciDev’s water treatment technologies provide clean water for processing, remediate historical contamination, and treat and recycle a wide range of contaminated waste streams. According to Roberts, SciDev is an industry leader in the development of compliant, sustainable and cost-effective treatment solutions for ‘forever chemicals’ (‘per- and poly-fluoroalkyl substances’ or ‘PFAS’).
19. The Applicant’s Goods and Services form a highly specialised PFAS treatment product provided under the Trade Mark which treat contaminated material so it can be safely discharged back into the environment and can be customised to clients’ needs and treatment objectives. Roberts attests that the average cost of the FLUROFIX product is $500,000-$1 million but is highly variable and may be significantly more for large projects. The Applicant’s Goods and Services provided under the Trade Mark are entirely procured through tender processes. According to Roberts, the Applicant has never encountered any confusion with the Opponent.
20. The Trade Mark has been used in relation to the Applicant’s Goods and Services since early 2024. The Trade Mark was adopted as ‘fluoro-’ suggests the fluorine atoms typically contained in PFAS substances. Roberts annexes an extract from SciDev’s website about the awards the product has won and also documents providing further information about the Applicant’s Goods and Services provided under the Trade Mark.
21. Lundon-Moore declares that she searched the Australian Trade Marks Register for pending and registered trade marks containing ‘FLUOR’ covering goods and/or services containing ‘water’ and annexes the results. Also annexed are copies of the Statements of Grant of Protection for the Trade Mark in the European Union and United Kingdom and extracts from the World Intellectual Property Organisation Global Brand Database of registrations for the Opponent’s Mark in the European Union and United Kingdom.
Discussion
Section 44
22. Section 44 relevantly provides:
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)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.
(2) Subject to subsections (3) and (4), an application for the registration of a trade mark (applicant’s trade mark) in respect of services (applicant’s services) 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 services or closely related goods; or
(ii) a trade mark whose registration in respect of similar services or closely related goods 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 services is not earlier than the priority date for the registration of the other trade mark in respect of the similar services or closely related goods.
To successfully oppose the Application pursuant to s 44, the Opponent must establish that a trade mark registered or application for by a person other than the Applicant:
· has a priority date which is earlier than that of the Trade Mark (‘the first requirement’);
· is in respect of goods and/or services which are similar or closely related to the Applicant’s Goods and Services (‘the second requirement’); and
· is substantially identical with or deceptively similar to the Trade Mark (‘the third requirement’).
24. In its SGP, the Opponent nominated the 70 Mark and 22 Mark as the basis for this ground of opposition. The 22 Mark is the subject of an International Registration designating Australia so the appropriate provision for this ground of opposition with respect to this mark is reg 4.15A rather than s 44. However, the provisions of reg 4.15A and s 44 are essentially the same and hence I will simply refer to s 44 throughout these reasons.
25. Both the marks relied on by the Opponent are in the name of someone other than the Applicant and have an earlier priority date satisfying the first requirement.
26. I turn now to a consideration of whether the Applicant’s Goods and Services are similar or closely related to the services of the 70 Mark and 22 Mark. Helm declares that the Opponent’s Services, particularly its waste/water management and treatment services are ‘highly similar’ to the Applicant’s services, have similar distribution channels and are in direct competition.
27. Essentially, the Opponent’s 70 Mark and 22 Mark cover various construction, maintenance and repair services, consultation services relating to disposal of hazardous waste and environmental pollutants in class 37; material treatment services, gas processing services, petrochemical refining services and waste management services in class 40 and a range of architectural and engineering services in class 42. (‘Opponent’s Registered Services’). In my view, the Opponent’s Registered Services clearly encompass the Applicant’s Services all of which fall within the term ‘material treatment services’ in the 70 Mark and waste management services (including recycling, treatment and destruction of environmental pollutants) covered by the 22 Mark.
28. In relation to whether the Applicant’s Goods are closely related to the Opponent’s Registered Services, the words ‘closely related’ are not defined in the Act. Justice French noted in Registrar of Trade Marks v Woolworths Ltd:
The term “closely related” recognises that goods and services are different things. There will be classes of goods which are similar to each other. There will also be classes of services which are similar to each other. But the word “similar” does not apply as between goods and services. So there must be some other form of relationship between the services covered by one mark and the goods covered by another to enable the goods or services in question to be described as “closely related” … it is a term of wider import than “similar” and can apply to the relationships between competing services as well as between goods and services.[4]
[4] Registrar of Trade Marks v Woolworths Ltd [1999] FCA 1020, [37] (French J) (‘Woolworths’).
29. The evaluation as to whether specific goods and services are closely related is likely to depend on evidence.[5] Although the Opponent claims in its SGP that the Applicant’s Goods are closely related to the services of the Opponent’s Marks, the Opponent has not otherwise argued this point and Helm does not include any documentary evidence that the Opponent, or other traders providing similar services, manufacture or provide the Applicant’s Goods or similar products.
[5] Ragopika Pty Ltd v Padmasingh Isaac trading as Aachi Spices and Foods [2023] FCA 487, [48] (Kennett J).
30. The delegate in Re Aussat Pty Ltd[6] noted a number of questions to be considered in deciding whether goods and services are closely related including:
[6] [1993] ATMO 55 (Hearing Officer I. Thompson).
·are the goods and services of matching technical complexity?
·is the technical training of the people who make the goods or provide the services the same?
·do the people who make the goods or provide the services belong to the same unions or associations?
·are there personnel who are implicit in the provision of the service, or a necessary ancillary to the provision of it, who are viewed by the ordinary person as having the essential expertise in common to the provision of either the goods or services?
·do the goods usually have this service as a related service agreement or package?
·is the nature of the goods or the service such that they would cease to exist without each other, thus creating an expectation of a common source?
·does the service consist of altering, matching and/or installing the goods to a customer's or client's requirements?
·are the goods and services commonly offered by the one company or organisation?
·are the goods a necessary adjunct to a particular service or the only tangible result of it?
31. The Applicant’s Goods are essentially water treatment machines and water filtration apparatus. Whilst it seems to me that it is possible that businesses offering water treatment services would generally either sell or supply the related equipment and consumers would expect the same provider to offer both the water treatment equipment and water treatment services, there is no evidence before me or submissions from the Opponent that this is the case. In the circumstances, I am not satisfied that the Applicant’s Goods are closely related to the Opponent’s Services. Nevertheless, the second requirement is met with respect to the Applicant’s Services.
The only outstanding question is whether the Trade Mark is substantially identical with or deceptively similar to the Opponent’s Mark. Justice Windeyer outlined the test for substantial identity in Shell Company of Australia Limited v Esso Standard Oil (Australia) Limited (‘Shell’) as follows:
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.[7]
[7] [1963] HCA 66; (1963) 109 CLR 407, 415 (‘Shell’).
32. The marks in question in this case are shown below:
Trade Mark
Opponent’s 70 Mark and 22 Mark
FLUOROFIX
FLUOR
33. There are clear differences between the Trade Mark and both the 70 Mark and 22 Mark when compared side by side. The Trade Mark is longer and includes the additional letters ‘-OFIX’. In my view, these differences are such that there is not a total impression of resemblance between the Trade Mark and the Opponent’s 70 Mark and 22 Mark. Hence, the marks are not substantially identical.
34. Therefore, I must now decide whether the Trade Mark is deceptively similar to either of the Opponent’s Marks. Section 10 provides that ‘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’.
35. In Shell, Windeyer J made the following comments with respect to deceptive similarity:
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].[8]
[8] Ibid (n 7) [13] (Windeyer J).
36. As the High Court explained in Self Care IP Holdings Pty Ltd v Allergan Australia Pty Ltd:
The essential task is one of trade mark comparison; the resemblance between the two marks must be the cause of the likely deception or confusion. In evaluating the likelihood of confusion, the marks must be judged as a whole, taking into account both their look and their sound.[9]
[9] (2023) 277 CLR 186, [26] (Kiefel CJ, Gageler, Gordon, Edelman and Gleeson JJ).
37. It was stated in Clark v Sharp:
One must bear in mind the points of resemblance and the points of dissimilarity, attaching fair weight and importance to all, but remembering that the ultimate solution is to be arrived at, not by adding up and comparing the results of such matters, but by judging the general effect of the respective wholes.[10]
[10] (1898) 15 RPC 141, 146 (Byrne J).
38. Regarding the risk of deception or confusion, Kitto J noted in Southern Cross Refrigerating Co v Toowoomba Foundry Pty Ltd:
While a mere possibility of confusion is not enough - for there must be a real, tangible danger of its occurring - it is sufficient if the result of the user of the mark will be that a number of persons will be caused to wonder whether it might not be the case that the two products come from the same source. It is enough if the ordinary person entertains a reasonable doubt.[11]
[11] (1954) 91 CLR 592, 594 (‘Southern Cross’).
39. What must be considered is the overall impression that the notional buyer, being a person of ordinary intelligence and memory, would likely have of the Trade Mark and each of the Opponent’s Marks, having regard to the look, sound, and ideas conveyed by the respective marks, and allowing for imperfect recollection. The notional buyer does not possess any knowledge about the actual use of the prior marks, the business of the owner of the prior marks, the goods produced by the owner of the prior marks, or any reputation associated with the prior marks.[12]
[12] C A Henschke & Co v Rosemount Estates Pty Ltd (2000) 52 IPR 42, [43] (Ryan, Branson and Lehane JJ).
40. The Applicant argues in its written submissions that the fact that the two marks share the prefix element ‘FLUOR’ is not sufficient to render them deceptively similar. The Applicant says that this is particularly so given that the common element ‘FLUOR’ has a ‘descriptive tinge’ in relation to the respective goods and services, is commonly used by other traders and is contained in 10 other registered marks covering ‘water’ related goods or services. Further, the Applicant contends that the suffix ‘-OFIX’ in the Trade Mark creates significant visual and aural differences. In addition, the respective marks also co-exist in the United States[13] and European Union and despite having already filed this opposition, the Opponent did not oppose registration of the Trade Mark in either the United Kingdom or the European Union. Moreover, the significant cost of both the Applicant’s Goods and Services and the Opponent’s Services also reduces any likelihood of confusion.
[13] The reference to the Trade Mark being registered in the United States appears to be a typographical error and it appears that this should be a reference to the United Kingdom.
41. There is no general rule that one trade mark cannot contain another trade mark. In my view, the addition of the suffix ‘-OFIX’ substantially alters the effect of the element ‘FLUOR-’ in the Trade Mark. Visually, the addition of the suffix makes the Trade Mark one whole entity, which is quite different from the Opponent’s Marks. It also changes the pronunciation as the Applicant’s Mark would, in my view, most likely be pronounced as three staggered syllables: ‘flu-ro-fix’. In contrast, the Opponent’s Marks appear more like an invented word and in my view the pronunciation is not obvious with consumers perhaps pronouncing the mark as ‘flu-or’ or ‘floor’. The meaning and overall idea of the Opponent’s Marks and the Trade Mark are different as the Opponent’s Marks suggest an unknown word whereas the Trade Mark suggests that the Applicant’s Goods and Services are a ‘fix’ for flouride derivative chemicals. In the context of the respective goods and services, I am of the view that consumers are unlikely to be confused between the Opponent’s Mark and the Trade Mark. The relevant goods and services involve considerable costs and are likely to be purchased by discerning consumers with technical expertise who conduct appropriate research before engaging a company to supply the relevant goods/services. Taking this into account and given the overall differences in the marks, I am not satisfied that the Trade Mark is deceptively similar to either the 70 Mark or 22 Mark.
42. The s 44 ground of opposition is unsuccessful.
Section 58A
43. Section 58A states:
58A Opponent’s earlier use of similar trade mark
(1) This section applies to a trade mark (section 44 trade mark) the application for registration of which has been accepted because of:
(a) subsection 44(4); or
(b) a similar provision of the regulations made for the purposes of Part 17A.
(2) The registration of the section 44 trade mark may be opposed on the ground that the owner of the substantially identical or deceptively similar trade mark (similar trade mark) or the predecessor in title:
(a) first used the similar trade mark in respect of:
(i) similar goods or closely related services; or
(ii) similar services or closely related goods;
before the owner of the section 44 trade mark or the predecessor in title in relation to the section 44 trade mark first used the section 44 trade mark; and
(b) has continuously used the similar trade mark in respect of those goods or services since that first use.
44. For s 58A to apply, the trade mark must have been accepted for registration under the provisions of s 44(4), or during an opposition there is a finding that it is appropriate to apply the provisions of s 44(4). In this matter the Trade Mark was not accepted by the examiner under the provisions of s 44(4) and the Applicant does not allege use of the Trade Mark before the Relevant Date. Accordingly, this ground of opposition is not available.
Section 60
45. Section 60 provides:
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.
46. The Opponent particularised this ground of opposition in its SGP as follows:
The Opponent is a market leader in the provision of engineering, procurement and construction services and related services (“the Services”). It has been providing the Services for more than 110 years and currently has over 40,000 employees worldwide. Last year, the Opponent was ranked 303 among the Fortune 500 companies.
The Opponent is the owner of FLUOR trade marks in over 50 jurisdictions around the world, including Australia.
The Opponent and/or its predecessor in title have been using the FLUOR trade mark since 1912 and first used the mark in Australia in 1969. The Opponent uses its FLUOR trade mark in Australia in relation to the Services, as well as waste / water management and treatment services.
As a result of the Opponent's extensive reputation in Australia (as a result of significant exposure and/or use of the FLUOR trade mark in Australia since as early as 1969), consumers are likely to be deceived or confused into believing that the goods and services sold under the FLUOROFIX trade mark are the Opponent's goods and services, somehow associated or affiliated with the Opponent or endorsed by or sponsored by the Opponent, when that is not the case. The likelihood of deception or confusion occurring is increased because the FLUOR trade mark is wholly encompassed by the Applicant's Trade Mark. The Opponent’s waste / water management and treatment services are identical to or similar to the class 40 services of the Opposed Mark and closely related to its goods in class 11 which are apparatus used in the provision of the class 40 services.
The Opponent also has a history of using FLUOR-formative marks and the Opposed Mark may be seen as another variation of those FLUOR-formative marks.
47. Accordingly, I must first decide whether there was a reputation in the Opponent’s Mark in Australia at the Relevant Date and if so, whether as a result of that reputation, use of the Trade Mark is likely to deceive of cause confusion.
48. It is not entirely clear from the SGP whether the Opponent is only claiming a reputation in the mark FLUOR or also in other FLUOR- formative marks. The Opponent must establish a reputation in each of the marks on which it relies.[14] Helm does not establish use of any FLUOR- formative marks and shows only use of the Opponent’s Marks. In my view, the Opponent’s Marks are substantially identical and hence I will only consider if the Opponent has established a reputation in the mark FLUOR taking into consideration any use of the 22 Mark is relevant to this question.
[14] Qantas Airways Ltd v Edwards (2016) 338 ALR 134, [160] (Yates J)
49. I further note that there is no requirement that the Opponent’s Mark is deceptively similar to the Trade Mark for the Opponent to succeed on this ground.
Reputation
50. The meaning of reputation was considered by Kenny J in McCormick & Co Inc v McCormick (‘McCormick’) to refer to ‘the recognition of the [trade mark] by the public generally’.[15]For the purposes of s 60, reputation must be established as a matter of fact by the Opponent[16] and must be amongst a ‘significant’ or ‘substantial’ number of Australian consumers[17] although this is tempered by the nature of the relevant market.
[15] [2000] FCA 1335, [81] (‘McCormick’).
[16] ConAgra Inc v McCain Foods (Aust) Pty Ltd [1992] FCA 159, [77] (Lockhart J).
[17] See Renaud Cointreau & Cie v Cordon Bleu International Ltee [2001] FCA 1170, [75] (Moore, Tamberlin and Goldberg JJ).
51. The reputation of a trade mark may be demonstrated in a variety of ways. For example, it may be established by demonstrating a significant number of people are exposed to a trade mark,[18] or inferred from a high volume of sales,[19] advertising expenditure or other promotion.[20]
[18] Le Cordon Bleu BV v Cordon Bleu International Ltee [2000] FCA 1587, [91] (Heerey J).
[19] McCormick (n 15), [86].
[20] Ibid.
52. The Applicant is critical of the Opponent’s evidence and claims that it does not establish a reputation in the Opponent’s Mark. In particular, the Applicant claims that the Opponent has not provided:
·any evidentiary support of the claimed sales and advertising figures or evidence of sales channels in Australia;
·any invoices proving the provision of services in Australia;
· evidence that it offers its services in all states of Australia;
·other information that assists in discerning the nature and scope of the claimed reputation;
·evidence that the Opponent has provided waste water and water treatment services in Australia. None of the Opponent’s Website extracts make any reference to water treatment or waste water services being provided in Australia and the only documentary evidence of use for waste water and water treatment services is a single project in Ohio USA; and
·there is no documentary evidence supporting the Opponent’s claims that its Australian subsidiary has ‘extensively’ promoted the Opponent’s Services in Australia.
53. I agree with the Applicant that there are some deficiencies in the Opponent’s evidence. However, it is clearly a sizeable company having ranked in the Forbes 500 list in 2023 and has offered EPC services under the Opponent’s Mark for over 110 years. Although the Opponent has not provided invoices or other documents to support its revenue figures, I have no reason to doubt these figures and the Applicant offers no evidence to impeach them. The Opponent’s annual Australian revenue figures for services provided by reference to the Trade Mark from 2012 to 2024 are significant. I also note that Helm declares that waste/water management and treatment services in Australia account for about 1% of this revenue and that this estimate is based on a review of the Opponent’s records. Global revenue is also provided which is extremely substantial. Whilst the Opponent has not annexed proof of its promotional activities, it has listed specific industry conferences, client events, industry events and the publications in which it claims to have advertised. Also, Helm provides copies of articles referring to two projects it has undertaken in Australia.
54. As a result of the Opponent’s longstanding use and promotion of the Opponent’s Mark in a specialised field, I am satisfied that the Opponent’s Mark had acquired a reputation in Australia during the Relevant Period for EPC services for large-scale industrial projects. However, based on my assessment of Helm, I consider that the Opponent likely only provides waste water and water treatment services where required as part of these large-scale industrial projects, at least in Australia, perhaps by sub-contracting this part of the work. Exhibit 6 of Helm refers to courses available on Water Treatment courses available through its Operations & Maintenance Training Institute but there is otherwise no evidence that the Opponent promotes itself as providing waste water and water treatment services under its trade marks. Hence, I am not satisfied that the Opponent’s Mark had acquired a reputation in Australia for waste water or water treatment services.
Likelihood of deception or confusion
55. The likelihood of deception or confusion from the use of the opposed mark must arise because of the reputation of the other mark.[21] Regarding the risk of deception or confusion, Kitto J noted in Southern Cross Refrigerating Co v Toowoomba Foundry Pty Ltd:
While a mere possibility of confusion is not enough - for there must be a real, tangible danger of its occurring - it is sufficient if the result of the user of the mark will be that a number of persons will be caused to wonder whether it might not be the case that the two products come from the same source. It is enough if the ordinary person entertains a reasonable doubt.[22]
[21] Delfi Chocolate Manufacturing SA v Mars Australia Pty Ltd [2015] FCA 1065, [27] (Jessup J).
[22] (1954) 91 CLR 592, 594.
56. The assessment of the likelihood of deception or confusion is to be made with regard to the strength of the reputation of the relevant trade marks of the Opponent, the inherent distinctiveness of the respective trade marks and the degree of similarity between them, and the degree of connection between the respective goods and services.[23]
[23] Pottle ProductionsInc v Rute Ithalat Ve Ihracat Anonim Sirketi [2012] ATMO 124, [40] (Delegate I. Thompson).
57. The Applicant argues that the Opponent has not adduced any instances of confusion nor evidence from consumers or industry to show that consumers would consider the parties’ respective offerings to be similar or part of the same business. Furthermore, given the highly specialised nature of the parties’ goods/services, the differences between the marks would be appreciated by consumers.
58. I have already noted that there are a number of differences between the Opponent’s Mark and the Trade Mark which render the marks visually and aurally distinct. In my view, these differences will be obvious to consumers seeking the water treatment products and services of the sort covered by the Application. Further, whilst there may be some nexus between the EPC services in which the Opponent’s Mark has a reputation and the Applicant’s Goods and services, I believe that consumers are likely to research the various providers of waste water treatment products and services and are unlikely to confuse the marks or assume any connection between the Applicant’s Goods and Services and the EPC services provided under the Opponent’s Mark.
59. Accordingly, I am not satisfied that use of the Trade Mark will give rise to a likelihood of deception or confusion and therefore, the s 60 ground of opposition is not successful.
Section 42(b)
60. Pursuant to s 42(b), registration of a trade mark may be opposed on the basis that use of the mark would be contrary to law.
61. In its SGP, the Opponent claims that use of the Trade Mark would breach ss 18 and 29 of the Australian Consumer Law (‘ACL’), Schedule 2 of the Australian Competition and Consumer Act 2010 (Cth), and constitute passing off.
62. The Opponent bears the onus of establishing that use of the Trade Mark by the Applicant would rather than could be contrary to law on the balance of probabilities.[24]
[24] Advantage-Rent-A-Car Inc v Advantage Car Rental Pty Ltd [2001] FCA 683, [28] (Madgwick J).
63. Section 18 of the ACL requires that there be a likelihood that the relevant consumer would be misled or deceived as to the origin of the Applicant’s Services due to the conduct of the Applicant. Section 29 of the ACL concerns representations that are false or misleading. The expression ‘mislead or deceive’ in s 18 of the ACL is effectively equivalent to the expression ‘false or misleading’ in s 29 of the ACL.[25]
[25] Australian Competition and Consumer Commission v Coles Supermarkets Australia Pty Ltd [2014] FCA 634, [40] (Allsop CJ).
64. The test for conduct contravening the ACL is a stricter one than the test under s 60, which requires only that consumers would be likely to be deceived or confused. Since I am not satisfied that the s 60 ground of opposition is established, it follows that on the stricter test to be applied under the ACL I am not satisfied that the Applicant’s use of the Trade Mark would be likely to mislead or deceive, or amount to a false or misleading representation under the ACL.
65. Passing off involves similar considerations to misleading and deceptive conduct in that there must be:
·reputation in the relevant mark or indicia;
·misrepresentation leading to deception; and
·damage to goodwill, or the likelihood thereof.
66. Where a trade mark does not contravene the ACL, it is unlikely to amount to passing off. Justice Hill noted in Re Equity Access Pty Ltd v Westpac Banking Corporation that:
The scope for the operation of s.52 will thus be broader than that involved in the tort of passing off so that in a case such as the present where the claim is for the protection of the reputation in a name against the use of that name by another, failure to succeed under s.52 or s.53 will invariably mean that proceedings for passing off would likewise fail.[26]
[26] Re Equity Access Pty Ltd v Westpac Banking Corporation [1989] FCA 771, [40].
67. Sections 52 and 53 of the Trade Practices Act 1974 (Cth) were the antecedents of sections 18 and 29 of the ACL. Given my findings in relation to sections 18 and 29 of the ACL, I am also satisfied that use of the Trade Mark would not constitute passing off.
68. For the above reasons, the ground of opposition under section 42(b) has not been established.
Decision
69. Section 55 relevantly provides:
55 Decision
(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.
70. The Opponent has not established any of the nominated grounds of opposition and accordingly, I direct that the Trade Mark may proceed to registration under application number 2362534 not less than one month from the date of this decision.
71. If the Registrar is served with a notice of appeal before that time, I direct that registration shall not occur until either the appeal is withdrawn or discontinued. Otherwise, the disposition of the Application should be in accordance with the Court’s order or direction.
72. The Applicant has sought an award of costs and I see no reason to depart from the general rule that costs follow the event. Accordingly, I award costs against the Opponent under s 221 in the relevant amounts under Schedule 8 of the Regulations.
Tracey Berger
Hearing Officer
Delegate of the Registrar of Trade Marks
29 August 2025
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