Garford Pty Ltd v Rock Engineering (Aust) Pty Ltd

[2005] ATMO 62

TRADE MARKS ACT 1995

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

Re:Opposition by Garford Pty Ltd to registration of trade mark application 936284 (6) Rock Bulb proceeding in the name of Rock Engineering (Aust) Pty Ltd.

Delegate:

Ian Thompson

Representation:

Opponent
Kelvin Lord of Lord & Company
Applicant
Stephen Friend of Wray & Associates.

Decision:

1.s52 opposition: section 58 – opposition established

2 Costs ordered against applicant.

Background

1.   Rock Engineering (Aust) Pty Ltd ('the applicant') of Welshpool, Western Australia has filed application to register a trade mark, current details of which are:

App No:  936284
Filing Date:  2 December 2002
Acceptance Date:  8 May 2003

Services:Class: 6 Common metals and their alloys; metal building materials; materials of metal for railway tracks; non-electric cables and wires of common metal; ironmongery, small items of metal hardware; pipes and tubes of metal; safes; goods of common metal not included in other classes; cable bolts, rock bolts, threaded bar, plates and fixings, wire mesh

Trade Mark:  ROCK BULB

2.   On 8 August 2003, Garford Pty Limited ('the opponent') of Wangara, Western Australia, filed Notice of Opposition (‘the Notice’) to the registration of the trade mark.  The Notice cites most of the grounds available under the Trade Marks Act 1995.

3.   Evidence in support was served and filed, as was evidence in answer and evidence in reply, as allowed by the Act and Regulations thereto. 

4.   A hearing was held before me, as a delegate of the Registrar of Trade Marks, in Perth, on 19 August 2005.  Kelvin Lord of Lord & Company represented the opponent.  Stephen Friend of Wray & Associates represented the applicant.

Evidence

5.   The evidence comprises the following declarations:

Declarant	Position Known as	Date Made	Exhibits
Evidence in Support
Neville Hedrick	Managing Director of opponent Hedrick	3 December 2003	NH-1 to NH-5
Evidence in Answer
Stephen Robert Friend	Attorney for applicant Friend	5 March 2004	SCF-1 to SRF-6
Douglas Bruce Minchin	General Manager of applicant Minchin	4 August 2004	DM-1
David Finn	Geotechnical Engineer with Placer Dome Asia Pacific Finn	14 October 2004
Peter Alois Mikula	Geotechnical Engineer with Kalgoorle Consolidated Gold Mines Pty Ltd Mikula	14 September 2004
Robin Salter	Proprietor of Robin Salter & Associates Salter	8 September 2004
Nicholas Savage	Underground Engineer of Macmahon Savage	14 September 2004
Ian Clarke	Director of Reynolds Soil Technologies Underground Pty Ltd Clarke	9 September 2004
Trevor Scott Land	Technical representative of Phoenix Metal Form Land	23 September 2004
Michael Harry Turner	Geotechnical engineer for AMC Consultants Pty Ltd Turner	5 October 2004
Jeffrey Bruce Phillips	Commercial Manager Cook’s Construction Phillips	5 October 2004
Tony Leo Sorgiovanni	Key Accoutn Manager for Atlas Copco Aust Pty Ltd Sorgiovanni	5 October 2004
Matthew Berry	National Sales Manager of Minova Australia Pty Ltd Berry	20 September 2004
Evidence in Reply
Neville Hedrick	Managing Director of opponent Hedrick 1	18 March 2005

The Evidence

1. This decision concerns an anchor or bolt which is used in the mining industry to stabilize loose rock walls – screes.  The opponent uses the term ‘bulb’ in relation to its anchor or bolt and claims that following its invention of the Garford Bulb, the term ‘bulb’ has only been associated with its anchor or bolt and so the use of the term ‘bulb’ by the applicant would be deceptive in terms of section 60.  In the alternative, the opponent states that, if I find that the term ‘bulb’ has not functioned as a trade mark on behalf of the opponent’s bolt, the term has become a generic of a particular kind of bolt and that the opposed trade mark thus lacks inherent distinctiveness.

2. I will set out what my understanding of the evidence is as it relates to the grounds under sections 41 and 60.

3. Rock anchors are multi-strand steel wires or ‘tendons’ inserted down bore holes in a scree. The bond lengths are grouted – cemented into the bore hole, and a plate attached to the tendon. The tendon is then stressed; the plate bears upon the scree and thereby stabilises the scree.

4. By unraveling the strands of wire in a tendon, the surface area of the tendon in contact with the cement is increased and this more securely embeds the tendon in the cement.

5. The opponent invented a new way of unraveling and spreading the strands within a multi-strand steel rope to form what it has called a bulb.

6. The term ‘bulb’ is used in the description of the opponent’s invention in its patent PCT/AU/89/00486 (of 1989) and in its contemporaneous and subsequent promotional literature that advertises its product.

7. In evidence in answer, Mr Friend exhibits an Internet search to his declaration which shows that the term ROCK BULB (used in relation to the goods of interest) was not located by the Google Search Engine either on domain ‘.au’ websites or, indeed, anywhere else on the World Wide Web.

8. Mr Friend also exhibits an article (The Performance of Grouted Split Tube Rock Bolt Systems) from the journal Rock Technology by Alan Thompson and David Finn which refers to “a grouted split tube and bulbed strand reinforcement system”.

9. The Minchin declaration attests to the coining of the term ROCK BULB by Mr Minchin of the applicant company and explains that a “BULB [is] a type of cable anchor or cable bolt.  Cable anchors and cable bolts are type of rock bolt.”

10. The Finn, Mikula, Salter, Savage, Clarke, Land, Turner, Phillips, Sorgiovanni and Berry declarations are by those who have had some dealings with the applicant over some years and attest in more-or-less common form that the applicant is known in the trade by the contraction of its name to ‘Rock’ or ‘Rock Eng’.

    Comment

11. I will further discuss the evidence as is necessary in the course of my reasoning and discussion.

12. The logical sequence of the discussion of this opposition is to first consider the opposition in terms of section 41 – as to whether the opposed trade mark has the capacity to distinguish goods.  If the opposed trade mark does not have the capacity to distinguish goods, it is a fortiori true that the term ‘bulb’ is one which has become dedicated to public use and cannot have a reputation, in terms of section 60, as a trade mark of the opponent.

    Discussion

13. In Blount Inc v Registrar of Trade Marks [1998] 440 FCA (1 May 1998)Branson J said:

    Subsections (3) to (6) of s 41 of the Act are designed to control the process by which the Registrar is to reach a conclusion as to whether the trade mark for which registration is sought is capable of distinguishing the applicant's goods or services in respect of which the trade mark is sought to be registered ("the designated goods or services"). If the trade mark is not so capable, the application for its registration must be rejected (s 41(2)). Subsection (3) requires the Registrar first to "take into account the extent to which the trade mark is inherently adapted to distinguish the designated goods or services from the goods or services of other persons". Having taken such matter into account, it is theoretically open to the Registrar to conclude:

    (a) that the trade mark is inherently adapted to distinguish the designated goods or services from the goods or services of other persons and capable, on that basis alone, of so distinguishing the designated goods or services; or

    (b) that the trade mark is not to any extent inherently adapted to distinguish the designated goods or services from the goods or services of other persons; or

    (c) that the trade mark is to some extent inherently adapted to distinguish the designated goods or services from the goods or services of other persons, but there is uncertainty, on that basis alone, that the trade mark is actually capable of so distinguishing the designated goods or services.

    The structure of s 41 of the Act dictates that if the Registrar reaches conclusion (a) above, then he or she will decide the question whether or not the trade mark is capable of distinguishing the designated goods or services from the goods or services of other persons by reaching the answer that it is so capable by reason of its inherent adaptability to distinguish (s 41(2) and (3)). The Registrar will, in such circumstances, be required, by reason of the terms of s 33(1) of the Act, to accept the application unless he or she is satisfied that the application has not been made in accordance with the Act, or that there are grounds, independent of capacity to distinguish, for rejecting the application.

    If the Registrar reaches conclusion (b) or (c) above, he or she is, within the meaning of s 41(4) "unable to decide the question". That is, he or she is unable, simply by taking into account the extent to which the trade mark is inherently adapted to distinguish the designated goods or services, to answer the question whether or not the trade mark is capable of distinguishing the designated goods or services from the goods or services of other persons.

    If the Registrar reaches conclusion (b) above, then the provisions of paragraphs (a) and (b) of s 41(6) are brought into operation. If the applicant establishes that, because of the extent to which the applicant has used the trade mark before the filing date of the application, the trade mark does distinguish the designated goods or services as being those of the applicant, the Registrar will not reject the application pursuant to s 41(2). The Registrar will, in such circumstances, accept the application unless he or she is satisfied that the application has not been made in accordance with the Act, or that there are grounds, independent of capacity to distinguish, for rejecting the application (s 33(1)). If the applicant fails to establish that because of the extent to which the applicant has used the trade mark before the filing date of the application, the trade mark does distinguish the designated goods or services as being those of the applicant, the Registrar must reject the application pursuant to s 41(2).

    If the Registrar reaches conclusion (c) above, then the provisions of paragraphs (a), (b) and (c) of s 41(5) are brought into operation. If the Registrar, having considered the combined effect of the matters listed in subparagraphs (i), (ii) and (iii) of s 41(5)(a), is satisfied that the trade mark does or will distinguish the designated goods or services as being those of the applicant, he or she will not reject the application pursuant to s 41(2). The Registrar will, in such circumstances, accept the application unless he or she is satisfied that the application has not been made in accordance with the Act, or that there are grounds, independent of capacity to distinguish, for rejecting the application (s 33(1)). If the Registrar, having considered the combined effect of the matter listed in subparagraphs (i), (ii) and (iii) of s 41(5), is not satisfied that the trade mark does or will distinguish the designated goods as being those of the applicant, the Registrar must reject the application (s 41(2)).

    19.     Branson J also stated, concerning section 33(1) and the 'presumption of registrability' of trade marks:

    The above examination of subsections (3) to (6) of s 41 of the Act demonstrates that the section limits the scope of operation of s 33(1) of the Act so far as the question of capacity to distinguish is concerned. Subsection (4) has the effect that unless the Registrar, having taken into account the extent to which the trade mark is inherently adapted to distinguish the designated goods or services from the goods or services of other persons, is able to answer positively the question whether or not the trade mark is capable of distinguishing the designated goods or services from the goods or services of other persons, then he or she must apply the provisions of either subsection (5) or (6). Subsection (5) has the effect that an application must be rejected pursuant to s 41(2) unless the Registrar is satisfied that the trade mark does or will distinguish the designated goods or services as being those of the applicant. Subsection (6) has the effect that an application must be rejected pursuant to s 41(2) unless the applicant establishes that because of its use of the trade mark, the trade mark does distinguish the designated goods or services as being those of the applicant. The applicant will so "establish" by placing before the decision maker material upon which he or she is persuaded, on the balance of probabilities, that, because of its use of the trade mark, the trade mark does distinguish its goods and services from those of other persons.

14. A trade mark’s inherent capacity to distinguish goods or services of a trader is not one which is altered by use, or by the effects of registration as a trade mark.  The  trade mark’s inherent qualities are to be assessed according to the test in Clark Equipment Co v Registrar of Trade Marks (1964) 111 CLR 511 at 514: The question whether a mark is inherently adapted to distinguish must, in Kitto J’s words:

    “…be tested by reference to the likelihood that other persons, trading in goods of the relevant kind and be actuated only by proper motives - in the exercise, that is to say, of the common right of the public to make honest use of words forming part of the common heritage, for the sake of the signification which they ordinarily possess - will think of the word and want to use it in connexion with similar goods in any manner which would infringe a registered trade mark granted in respect of it.”

15. In FH Faulding & Co Ltd v Imperial Chemical Industries of Australia and New Zealand Ltd (1965) 112 CLR 537 at 555, Kitto J again referred to the general principle:

    “…that the question to be asked in order to test whether a word is adapted to distinguish one trader’s goods from the goods of all others is whether the word is one which other traders are likely, in the ordinary course of their businesses and without any improper motive, to desire to use upon or in connexion with their goods.”

16. I think that the evidence shows the opposed trade mark is to some extent inherently adapted to distinguish the designated goods or services from the goods or services of other persons, but there is uncertainty, on that basis alone, that the trade mark is actually capable of so distinguishing the designated goods or services.

17. My reasons for this are as follows.

18. My understanding is that the opponent’s ‘bulb’ is a development of the pre-existing technology in which wires in a steel rope were splayed around the central strand: this splaying of the surrounding wires around a central strand is called a ‘birdcage’.  The ‘bulb’ is a development of the birdcage as, in the ‘bulb’, the central wire is also deformed resulting in a higher strength bond within the hole into which it is cemented.

19. I have not seen, nor was it suggested at the hearing, that there is any other description for steel wires with all strands deformed, including the central strand, other than the word ‘bulb’.  It is one which is used in the technical papers and patent documentation filed as evidence.  I would conclude that the term is generic.

20. To next examine the question from the opponent’s perspective, it has used the terms TWIST BULB ANCHOR, BULB ANCHOR and GARFORD BULB prominently in its brochures.  There is good argument in terms of the rationale applied in PB Foods Ltd v Malanda Dairy Foods Ltd [1999] FCA 1602 (17 November 1999) or in Coca Cola Co of Canada v Pepsi Cola Co of Canada (1940) 59 RPC 127 that after discounting has been applied to those terms which are more obviously generic and/or not shared with the opposed trade mark, the essential and common features of the expressions BULB ANCHOR or TWIST BULB ANCHOR of the opponent and that of the trade mark ROCK BULB is the word ‘bulb’.

21. Thus, in terms of the quotation, above, from Clark Equipment, above, there is at least one other trader who will ‘think of the word and want to use it in connexion with similar goods in any manner which would infringe a registered trade mark granted in respect of it.’

22. Another issue is that the word ROCK appears to naturally form parts of ordinary descriptions of goods of this type.  The evidence contains, for example, reference to rock bolts and rock anchors of which the bulb appears to be a sub-type.  The collocation of the words ROCK and BULB is not one of words without meaning in the trade, nor does it appear that the expression as a whole is one without meaning in relation to the goods of interest.  I do not think that it is of any significance that the word ‘rock’ appearing in the opposed trade mark is said to be a foreshortening of the applicant’s name.  A foreshortening of the putative company name ‘Paper Australia United Pty Ltd’, to ‘Paper’, and its subsequent use in the expression ‘paper towel’ would hardly render that expression prima facie capable of distinguishing in respect of paper towels.

23. The evidence filed by the applicant contains no specific sales or advertising figures and, indeed Mr Minchin states that after an initial period of use, the use of the trade mark by the applicant ceased.  There is thus no evidence for me to asses in terms of subsection 41(5) of the Act.

24. Accordingly, I find that the trade mark ROCK BULB is not capable of distinguishing the applicant’s goods from the similar goods of other traders in terms of subsection 41(5) of the Act. 

25. The opponent has established its opposition in terms of section 41 of the Act.

26. There is no need for me to consider the opposition in terms of section 60 of the Act, and, in view of my analysis of the evidence, the opponent could not establish grounds under section 60.

    Decision

    33.  Section 55 of the Act provides:

    55. Unless the proceedings are discontinued or dismissed, 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.

    34.  I refuse to register application 936284.

    Costs

    35.  Costs may follow the event and I order costs against the applicant at the official scale.

    Ian Thompson
    Hearing Officer
    Trade Marks Hearings
    7 November 2005