General Electric v Galvin Enginering Pty Ltd

[2013] ATMO 32

TRADE MARKS ACT 1995

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

Re:Opposition by General Electric Company to registration of trade mark application 1123112(11,37) – GE Logo - filed in the name of Galvin Engineering Pty Ltd.

Delegate:	Debrett Lyons
Representation:	Opponent: Written submissions by Chrysiliou IP, Patent & Trade Mark Attorneys Applicant:  Mr Ron Webb QC of Counsel instructed by Griffith Hack, Patent & Trade Mark Attorneys
Decision:	2013 ATMO 32 s52 opposition to registration: sections 42(b), 43, 44, 58, 60 and 62A argued – section 44 established, trade marks deceptively similar – no prior use – application refused

Background

1. This matter is an opposition under section 52 of the Trade Marks Act 1995 (‘the Act’) to the registration of the trade mark filed by Galvin Engineering Pty Limited (‘the Applicant’) details of which appear below:

Application No:         1123112
Priority Date:             11 July 2006

Goods:Class: 11 Taps (faucets)

Class: 37 Plumbing

Trade Mark:

(‘the Trade Mark’)

1. The application was examined in compliance with section 31 of the Act and advertised as accepted for possible registration in the Australian Official Journal of Trade Marks on 9 November 2006.

2. On 9 February 2007, General Electronic Company (‘the Opponent’) filed Notice of Opposition (‘the Notice’) to registration of the Trade Mark. 

3. The hearing was before me as a delegate of the Registrar of Trade Marks in Sydney on 14 February 2013.  The Opponent relied on written submissions by its attorney, Andros Chrysiliou of Chrysiliou IP, Patent and Trade Mark Attorneys.  Mr Ron Webb QC of Counsel, instructed by Griffith Hack Patent & Trade Mark Attorneys, appeared for the Applicant.

Evidence

1. The parties have served and filed evidence in support, evidence in answer and evidence in reply as allowed by the Trade Marks Regulations 1995.  This evidence was then followed by applications by both sides to file and serve Further Evidence.  However for reasons which are soon explained, a large part of the not insubstantial evidence has no bearing on my decision.  It has only been necessary to refer to those parts of the evidence relevant to the one ground of opposition which proved to be dispositive of the matter.  For that reason it has become both unnecessary and unhelpful to fully list out all of the evidence.

Grounds of opposition

1. Opposition to registration of a trade mark is regulated by Part 5 of the Act. The Opponent’s written submissions rely on sections 43, 44, 58 and 60 which are contained in that part of the Act. The Opponent acknowledges that it bears the onus of establishing at least one of those ground on the balance of probabilities.

2. The Notice is couched in broad terms and includes grounds which were not argued in the written submissions made by Mr Chrysiliou.  I find that those grounds have not been established but note that they might be relied upon should my decision be appealed to the Court where the matter will be considered de novo.

3. Something more must be said of the Notice and the grounds of opposition. The application to register the Trade Mark was filed before amendments to Part 5 of the Act introduced by the Trade Marks Amendment Act 2006 (‘the Amendment Act’) came into force. On the other hand, Trade Mark was also advertised as accepted after those amendments came into force and the Notice was filed after those amendments came into force.

4. Those facts are significant for two reasons. Firstly, paragraph V of the Notice relies on section 60 of the Act but adopts the section’s pre-amendment wording. The amendment to sub-paragraph (a) of section 60 was made on 23 October 2006. The Amendment Act did not have a transitional provision applicable to section 60 and for reasons which have been spelt out at length elsewhere, the law to be applied in this opposition is section 60 as it stood in its unamended form prior to 23 October 2006 and so the Notice is correct to reproduce the repealed formulation.

10.   Secondly, paragraph IX of the Notice reads:

The Opposed Trade Mark offends, or is contrary to, the requirements for registration stipulated in, or the policy of the provisions contained in, the Trade Marks Act 1995.

11. Part 5 of the Act does not include a ground of opposition couched in those terms. The passage in the Opponent’s written submissions to which it can most likely be linked is reproduced in part below:

The trade mark offends the policy of the provisions contained in the Trade Marks and the application was made in bad faith. 

The policy of good faith is a basis for a number of provisions contained in the Trade Marks Act or law applicable thereto. Historically, equitable relief was granted only in courts of equity which tended to resolve matters on principals of fairness and justice. This, no doubt, is the underlying policy for use of such terms as “bona fide”, “good faith” and “bad faith” in trade mark law. It is about parties acting in good faith and not acting in an underhanded or deceptive manner. The intention to use stipulated under the Trade Marks Act must be in good faith (see Hunter Douglas v Perma Blinds (1970) 122 CLR 49). This is also reflected by the non-use provisions in s.92 (4) (a) and the s.62A ground relating to making an application in bad faith.

… 

Good faith, bad faith or bona fides all incorporate the notion of honesty of intention and purpose and revolve around the notion of not taking a course for the purpose of gaining an advantage from or trading off the goodwill of another party. 

12. Section 62A of the Act now operates to provide a ground of opposition to applications which are shown to have been made in bad faith. It was introduced into Part 5 by the Amendment Act on 23 October 2006 but, unlike section 60, it was subject to an “application” provision which stated that the new section 62A applied to (a) trade mark applications filed after 23 October 2006, and (b) applications for registration of trade marks pending but not accepted at that date.

13. Accordingly, the Trade Mark is open to opposition under section 62A and I am prepared to find that the combined effect of paragraph IX of the Notice and the Opponent’s related submissions are enough to support the inclusion of that ground.

Submissions and reasoning

Section 44

14. Subsection 44 of the Act provides:

44Identical 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.

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.

(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.

Note 1:For deceptively similar see section 10.

Note 2:For similar services see subsection 14(2).

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.

(3)If the Registrar in either case is satisfied:

(a)that there has been honest concurrent use of the 2 trade marks; or

(b)that, because of other circumstances, it is proper to do so;

the Registrar may accept the application for the registration of the applicant’s trade mark subject to any conditions or limitations that the Registrar thinks fit to impose. If the applicant’s trade mark has been used only in a particular area, the limitations may include that the use of the trade mark is to be restricted to that particular area.

Note:For limitations see section 6.

(4)If the Registrar in either case is satisfied that the applicant, or the applicant and the predecessor in title of the applicant, have continuously used the applicant’s trade mark for a period:

(a)beginning before the priority date for the registration of the other trade mark in respect of:

(i)the similar goods or closely related services; or

(ii)the similar services or closely related goods; and

(b)ending on the priority date for the registration of the applicant’s trade mark;

the Registrar may not reject the application because of the existence of the other trade mark.

Note 1:An authorised use of the trade mark by a person is taken to be a use of the trade mark by the owner of the trade mark (see subsection 7(3)).

Note 2:For predecessor in title see section 6.

Note 3:For priority date see section 12.

15.  For the purposes of sections 44(1) and (2), the Opponent relies on three of its own registrations however I need only refer to two of them, details of which are set out below:

Regn. No.	Trade mark	Goods / Services	Priority date
724059	GE	Class: 37 Installation, maintenance and repair of machines, motors, generators and engines; maintenance and repair of land vehicles including railway electric trains, diesel electric locomotives and trucks; repair of power generating plants; installation, maintenance and repair of mechanical, electrical and electronic apparatus, appliances, instruments and articles including but not limited to radio and wireless instruments and apparatus, sound recording and reproducing apparatus and instruments, medical and dental electrical apparatus, heating, cooling and freezing apparatus; installation, maintenance and repair of cooking appliances, household appliances and television apparatus	16/12/96
777808[1]	GE	(registered in multiple classes, but it is only necessary to reproduce class 11) Class: 11 Apparatus for lighting, heating, steam generating, cooking, refrigerating, drying, ventilating, water supply and sanitary purposes; including but not limited to electric light bulbs; luminescent, incandescent and fluorescent lighting lamps and tubes; lamps and lights for vehicles; luminaires; electric lighting fixtures, fittings, apparatus, systems and installations, their parts and accessories; electric discharge lamps; electric lights for Christmas trees; ultra-violet ray lamps, not for medical purposes; air conditioners; clothes dryers; dehumidifiers; humidifiers; freezers; refrigerators; heating elements; electric hot plates and cooking rings; gas and electric stoves and apparatus for cooking; gas and electric ovens and cooktops; microwave ovens; ventilation hoods and ventilating systems; refrigerating apparatus, machines, appliances and installations; water heaters; water filtering, purification and/or softening systems, apparatus and installations; steam and gas turbines, generators and installations; cooling appliances, installations and machines; cooling installations for liquids; distillation apparatus and columns; nuclear reactors; boiling water reactors, light water reactors; installations for processing nuclear fuel and nuclear moderating material; including accessories and component parts of all the foregoing.	9/11/98

16.  Both registrations have an earlier priority date than the applied-for Trade Mark.  What remains is to compare the goods and services of those registrations with the applied-for goods and services and then to compare the trade marks.  The questions should in fact be approached in that sequence since the Courts have held that comparison of the trade marks must take place in the context of the goods/services to which they are applied[2].  

[2] See Registrar of Trade Marks v Woolworths[1999] FCAFC 1020; [1999] FCA 1020; (1999) 93 FCR 365; (1999) 45 IPR 411; [1999] AIPC 91-499 per French J at [39].

17.  So, then, I note that registration 777808 covers “apparatus for water supply” and “water filtering and/or softening systems, apparatus and installations.”  There can be little argument that the Applicant’s goods described as “taps (faucets)” are either the same as, or of the same description as[3], apparatus for water supply.

[3] per sec. 14(1)

18. For that reason the section 44 ground looks to succeed at least against the class 11 goods of the Trade Mark application but before coming to a final decision on that matter I will later in this decision consider whether section 44(4) has any application.

19.  The other question is whether the Applicant’s class 37 “plumbing” services are similar to services or closely related to goods for which the Opponent holds a registration of its “GE” trade mark.  In that respect I note that the Opponent’s registered services include the “installation, maintenance and repair of household appliances” (registration 724059[4]) and, again, registered goods being “apparatus for water supply” (registration 777808).

[4] And, for that matter, I note, “installation, maintenance and repair of heating and cooling apparatus”

20.  The online Macquarie Dictionary defines the noun, plumbing, as “the system of pipes and other apparatus for conveying water, liquid wastes, etc., as in a building”.  I think it is therefore axiomatic that “plumbing” involves “apparatus for water supply” and I find that the latter are closely related goods within the meaning of section 44(2)(a)(i).

21.  I also note a second definition of the noun, plumbing, as “the work or trade of a plumber” and a definition of a “plumber” as “someone who installs and repairs piping, fixtures, appliances, and appurtenances in connection with the water supply, drainage systems, etc., both in and out of buildings”.  It follows that “plumbing” is a service of the same description and therefore a similar service to the “installation, maintenance and repair of household appliances”.[5]

[5] per sec. 14(2)(b)

22. Once more, subject to the possible exercise of section 44(4), the Opponent has made out its opposition in relation to the class 37 services of the application.

23. Turning, then, to comparison of the trade marks, the Opponent did not submit that the Trade Mark is identical to its registered “GE” trade mark but argued it is deceptively similar. The expression ‘deceptively similar’ is defined by section 10 of the Act:

10Definition 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.

24.  The expression ‘deceptively similar’ has also been the subject of judicial consideration.  In Shell Company of Australia Ltd v Esso Standard Oil (Australia) Ltd[6] Windeyer J said:

[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 television exhibitions. To quote Lord Radcliffe again: “The likelihood of confusion or deception in such cases is not disproved by placing the two marks side by side and demonstrating how small is the chance of error in any customer who places his order for goods with both the marks clearly before him . . . . It is more useful to observe that in most persons the eye is not an accurate recorder of visual detail, and that marks are remembered rather by general impressions or by some significant detail than by any photographic recollection of the whole”: de Cordova v. Vick Chemical Co (1951) 68 RPC, at p 106 . And in Australian Woollen Mills Ltd v. F.S. Walton & Co. Ltd. (1937) 58 CLR 641 Dixon and McTiernan JJ. said: “In deciding this question, the marks ought not, of course, to be compared side by side. An attempt should be made to estimate the effect or impression produced on the mind of potential customers by the mark or device for which the protection of an injunction is sought. The impression or recollection which is carried away and retained is necessarily the basis of any mistaken belief that the challenged mark or device is the same” (1937) 58 CLR, at p 658

[6] [1963] HCA 66; (1963) 109 CLR 407 at paragraph 13

25.  Justice French in Registrar of Trade Marks v Woolworths Ltd[7] observed in relation to the expression “likely to deceive or cause confusion”:

… The use of the word “likely” in this context does not import a requirement that it be more probable than not that the mark has that effect. The probability of deception or confusion must be finite and non-trivial. There must be a “real tangible danger of its occurring” …

[7] (1999) 45 IPR 411 at 426

26.  The difference between ‘deceive’ and ‘cause confusion’ was considered in Pioneer Hi-Bred  Corn  Co v Hy-Line Chicks Pty Ltd[8] where it was stated:

‘Deceived’ implies the creation of an incorrect belief or mental impression and ‘causing confusion’ may go no further than perplexing or mixing up the minds of the purchasing public.... Where the deception or confusion alleged is as to the source of the goods, deceived is equivalent to being misled into thinking that the goods bearing the applicant's mark come from some other source and confused to being caused to wonder whether that might not be the case.

[8] (1979) RPC 410 at 423

27.  I am mindful, too, of what Heerey J had to say in Nettlefold Advertising Pty Ltd v Nettlefold Signs Pty Ltd 38 IPR 495:

a probability of confusion, if it is real, is sufficient even though the confusion may be unlikely to persist up to the point of, and be a factor in, inducing actual sales … there may be confusion or deception in the minds of persons to whom the mark is addressed, even if actual purchasers will not ultimately be deceived.

28.  Applying these tests there is can little doubt that the Trade Mark is deceptively similar to the Opponent’s “GE” trade mark and I find they are so.  In making that finding I have taken into account the Opponent’s reference to an earlier opposition between the parties, General Electric Company v Galvin Engineering Pty Ltd [2000] ATMO 129 (5 December 2000), concerning two trade mark applications (680732(6) and 680733(7)) for the same Trade Mark in dispute before me.

29.  In that case Hearing Officer Williams heard submissions in relation to, inter alia, sections 44 and 60 but in that case the trade mark on which the Opponent placed reliance was its stylised trade mark shown below:

30.  Hearing Officer Williams wrote:

My task is to balance the extent to which some people may see Galvin's mark as containing the letters GE, and the strength or otherwise of that perception, against the obvious visual differences. I find that the marks in suit are not deceptively similar. No ground is established under s 44.

31. Nevertheless, when his attention turned to section 60 (which at that time required that the compared trade marks be substantially identical or deceptively similar to each other) he said:

… so far as the opposition relates to the registered trade mark in the form I have already reproduced, there is a threshold question that I have already resolved against GE. Galvin's mark is neither substantially identical nor deceptively similar to the trade mark registered by GE.

Section 60, however, is cast in a way that recognises rights in unregistered trade marks as well as registered ones. In its evidence in support, GE asserts that it is the proprietor of the trade mark GE, being the letters in question rendered in ordinary upper case.

As a threshold question again, I should decide if the trade mark GE, being letters rendered plainly in upper case, is deceptively similar to that now sought to be registered by Galvin. … I will accept that the trade mark sought to be registered is deceptively similar to the letters GE simpliciter.

Section 44(4)

32. Section 44(4) of the Act provides that the Registrar may not reject the application even when the Opponent has met the criteria set out in subsection 44(1) or (2) if the Applicant has continuously used the Trade Mark since before the priority date of the Opponent’s registered trade mark in respect of (i) the similar goods or closely related services, or (ii) the similar services or closely related goods, through to a date ending on the priority date of the applied-for Trade Mark, in this case, 11 July 2006.

33.  This provision is referred to in shorthand as “prior continuous user”.  The Applicant would need to show continuous use of the Trade Mark, in the case of plumbing services, from a time before 16 December 1996 through to July 2006 and, in the case of taps, from a time before 9 November 1998, through to July 2006.

34. When examined, the Office might have cited registration numbers 724059 and 777808 against the applied-for Trade Mark but it did not. The application received a clear report and so section 44(4) was not considered at that time. Nor, at the hearing, did Mr. Webb really have very much to say other than to point to statements that the Trade Mark had been used since 1994. So far as Mr. Chysiliou’s written submissions come close to touching on the matter, they state that:

There is a further basis for refusal under Section 44 as there was no use by the Applicant of the opposed mark prior to 1994.  Indeed, the evidence is vague as the date of first use of the Applicant’s mark. There is a heavy onus on an Applicant to present definitive evidence of use that may predate a registration. This onus has not been discharged in this case.

35. Without help from the parties, I am left to assess this matter for myself. Before doing so, I make an important note here; under section 44(4) there is a shift of onus and the Applicant has the burden to prove prior continuous use.

36.  The evidence in answer is a declaration from Chris Galvin, director of the Applicant.  He gives evidence that the Applicant was formed in 1930 under the name Premier Engineering Pty Ltd which was changed in 1971 to the present name.  He declares that since 1971 the Applicant has carried on business as a foundry and machine shop fabricating products for the plumbing, mining and engineering industries.

37.  Mr. Galvin’s account of the use of the Trade mark includes the following statements:

On 6 October 1994, Galvin Engineering adopted and commenced the use and promotion of its new elliptical trade mark … The trade mark has been continuously used …to promote the range of products I have identified above. … Since October 1994, the trade mark has been used extensively across all the product range, packaging, uniforms, stationary and signage …

38. There then follows references to annexures CG-10 through to CG-22 which are said to show the various ways in which the Trade Mark has been used. A number of those annexures relate to material which is said to postdate 1998 and so for the purposes of section 44(4) they do not merit consideration. My comments which follow concern the residual material said to show use from 1994 onwards.

39.  There are numerous photos of vehicles, buildings fascias, reception areas, flags and banners, etc, which are themselves all undated.  Some are described by date but no date is before the year 2000.  Several have incidental inclusion of the web address which I note from my own quick reference to the Internet Archive facility known as the Wayback Machine did not have any use before February 2000.

40.  There are three photographs of uniforms showing use of the Trade Mark.  There is no means to date the photographs which are hand annotated as being uniforms from 1995.

41.   Annexure CG-15 is a technical drawing of a “remote valve” and a “remote outlet”.  The drawing is dated 10 June 1996.  It carries the Trade Mark but it is not a document which proves use of the mark in trade.

42.  Annexure CG-16 includes a “Product update” flyer labeled “Edition 6, Christmas 1998” which shows the Trade Mark.  It is conceivable that it might have been distributed prior to 9 November 1998.  It refers in one place to a new “Fire Valve” to be marketed to the NSW fire services.  To the extent that it might be considered a tap or faucet it still remains unclear if and when it went on sale.

43.  Annexure CG-17 includes what is described as “a range of brochures … since 1994”.  They are largely undated and so the intermittent references to “safety taps” or other fire fighting equipment can not be put in clear temporal context.  In any event there is no proof of sales.

44.  Annexure CG-20 is another collection of material, a large part of which is dated too late to take into account.  The remainder is not relevant either because it does not show relevant goods or does not indicate plumbing services or is not dated or is otherwise of no material benefit to the Applicant.

45.  Annexure CG-21 is a collection of advertising material.  A 1995 advertisement from “Construction and Plumbing” shows images of some drain grates; a November/December 1997 advertisement from “The Master Plumber” shows an image of what is described as “Ezy-push” taps.  Other hand dated advertisements from “November 1998” show what is called an “anti-scale system”.

46. In short, the evidence in reply does not make anything like a cogent case for the application of section 44(4). The Applicant chose to file so-called “Further Evidence”. It comprises eight additional declarations. The first is another declaration made by Mr. Galvin. For reasons which need not detain me, it does not advance my understanding of use of the use of the Trade Mark in the relevant period I am considering other than to make the unsupported claim that the website was launched in 1994 (a claim I note to be at odds with the limited research I undertook). The remaining seven declarants all have one form of connection or another with the Applicant’s business and made broad statements about their awareness of its business, however the focus of those declarations is aimed elsewhere and they do not contain any statements or provide any evidence which assists my present enquiry, directly or indirectly.

47.  In the result, the Opponent’s ground of opposition based on sections 44(1) and (2) prevails and it becomes unnecessary for me to consider any of the other grounds of opposition which were pressed in written submissions.

Decision

48. Subsection 55(1) of the Act provides:

55Decision

(1)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.

49.  My decision is to refuse to register application 1123112. 

Costs

50.  Having been successful in these proceedings, the Opponent is entitled to its costs which I order against the Applicant at the Official Scale.

Debrett Lyons
Hearing Officer
Trade Marks Hearings

20 May 2013