Geoff Hourigan v Ross Johnson and Warren Desmond Smith

[2010] ATMO 101

TRADE MARKS ACT 1995

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

Re:Opposition by Geoff Hourigan to registration of trade mark application 1291929(17) - INSULATION MAN - filed in the name of Ross Johnson and Warren Desmond Smith.

Delegate:

Iain Thompson

Representation:

Opponent: Liam McMahon of McMillan Boylson Lawyers

Applicant: Did not appear or file written submissions

Decision:

2010 ATMO 101

S52 opposition – section 58 – applicant not the owner of the trade mark, evidence of prior use as trade mark by opponent in relation to same kind of thing – opposition established.

Costs awarded against the applicants

Background

1. In this matter Ross Johnston and Warren Desmond Smith of Bundaberg, Queensland (‘the applicants’) have applied under the Trade Marks Act 1995 (‘the Act’) to register the trade mark current details of which appear below:

Application No: 1291929

Priority Date:  28 March 2009

Goods:  Glass fibres, for insulation

Trade Mark:  INSULATION MAN

1. The application was examined in compliance with section 31 of the Act and advertised as accepted for possible registration on the 30 July 2009. On 31 July 2009, Geoff Hourigan of Cedar Creek, Queensland, (‘the opponent’) served and filed Notice of Opposition to the registration of the trade mark.

2. The opponent has served and filed evidence in support of the opposition; the applicant has not served and filed evidence in answer. 

3. The matter came before me to be heard in Brisbane on 6 September 2010.  The opponent was represented by Liam McMahon of McMillan Boylson Lawyers.  The applicants did not appear or make written submissions.

4. Put briefly, the evidence and aural argument of the opponent go solely to section 58 of the Act. Appended to the evidence in support, which is a declaration by the opponent, is a Yellow Pages® advertisement (which appears on a page headed 2008) which appears below:

1. Mr McMahon argued briefly in support of the opposition in terms of section 58. He submitted that the above advertisement appeared before the priority date of the opposed application and that the trade mark THE INSULATION MAN is identical to the opposed trade mark and is used by the opponent in respect of natural fibre insulation which is, he proposed, the same kind of thing as the glass fibres for insulation in respect of which the opposed trade mark is proposed to be used.

Section 58

1. Section 58 of the Act provides:

   Applicant not owner of trade mark

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

   Note:  For applicant see section 6.

2. The first person to apply to register a trade mark will, in most cases, be entitled to claim to be the owner, unless the trade mark has been used in trade in Australia by another person prior to the filing date of the trade mark.  If the trade mark has been used within Australia before the filing date in Australia, the owner of the trade mark in Australia for particular goods or services is taken to be the first person to use it (“first user”) in the course of trade in Australia in relation to those goods or services. To be the owner, the first user need not have created, invented or first thought of the trade mark (Aston v Harlee Manufacturing Co (1960) 103 CLR 391 at 399 per Fullagar J), but is the first to adopt and use the mark as a trade mark the course of trade in Australia.

3. Section 58 requires that a “total impression of similarity (emerges) from a comparison between the two marks” which amounts to at least a substantial identity (Carnival Cruise Lines Inc v Sitmar Cruises Ltd [1994] FCA 936; (1994) 120 ALR 495). Additionally, to establish its opposition, the trade mark use relied upon by the opponent must have occurred in Australia before 28 March 2009 (the priority date of the opposed application), on services considered to be the “same kind of thing” (Re Hicks’ Trade Mark (1897) 22 VLR 636, 3 ALR 75) as the applicant’s services.

4. The advertisement on which the opponent relies appeared during 2008, before the priority date of the opponent application. 

5. Concerning substantial identity this is to be assessed according to the test in Shell Company of Australia Ltd v Esso Standard Oil (Australia) Ltd [1963] HCA 66; (1963) 109 CLR 407, per Windeyer J at page 414:

   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. "The identification of an essential feature depends", it has been said, "partly on the Court's own judgment and partly on the burden of the evidence that is placed before it": de Cordova v. Vick Chemical Co. (1951) 68 RPC 103, at p 106. Whether there is substantial identity is a question cf fact: see Fraser Henleins Pty Ltd v. Cody [1945] HCA 49; (1945) 70 CLR 100, per Latham C.J. (1945) 70 CLR, at pp 114, 115, and Ex parte O'Sullivan; Re Craig (1944) 44 SR (NSW) 291, per Jordan C.J. (1944) 44 SR (NSW), at p 298, where the meaning of the expression was considered. Judging by the eye alone, as I think is proper for the determination of substantial identity, my opinion is ….

6. The word ‘THE’ appearing within the opponent’s use of his trade mark adds nothing to the identity of the trade mark; neither, to my eye, does the chevron over which it appears and is somewhat suggestive of a roof.  The opponent’s trade mark is known by, or going to be known by the words which appear in the trade mark and goods sold under the trade mark are going to be requested by reference to the words and the words only: E. & J. Gallo Winery v Lion Nathan Australia Pty Limited [2010] HCA 15 at paragraph 69. The chevron device is, in the context of the use, insubstantial and does not markedly contribute to the identity of the trade mark and accordingly I consider the trade marks to be substantially identical.

7. I also consider that natural fibres for insulation are the same kind of thing as glass fibres for insulation.

8. Having had use, before the priority date of the opposed trade mark, of a substantially identical trade mark in respect of the same kind of thing as the goods in respect of registration of the opposed trade mark is sought, the opponent has established that it is the owner of the trade mark in Australia.

Decision

1. Section 55 of the Act provides:

   Decision

   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.

2. I refuse to register application 1291929.

Costs

1. Having been successful, the opponent is entitled to its costs which I award against the applicants at the official scale.

Iain Thompson

Hearing Officer

Trade Marks Hearings

08 October 2010