HamLon Pty Ltd v EziAdz Pty Ltd - [2010] ATMO 9

TRADE MARKS ACT 1995

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

Re:Opposition by HamLon Pty Ltd to registration of trade mark application 1218890(16) - ECOPOP - filed in the name of EziAdz Pty Ltd.

Delegate:

Alison Windsor

Representation:

Opponent: Frank Pappas of Pappas IP

Applicant: Michael Bucknell of EziAdz Pty Ltd

Decision:

2010 ATMO 09

S52 Opposition: determination of correct classification for goods of both applicant and opponent - opponent successful under s44 – goods are of the same description - costs awarded against applicant.

Background

EziAdz Pty Ltd (“the applicant”), formerly named Adze Pty Ltd, applied to register a trade mark under the provisions of the Trade Marks Act 1995 (“the Act”). Current details of the application are as follows:

Application number:	1218890
Filing date:	11 January 2008
Goods/class	Class: 16 Articles of cardboard for display purposes; articles of cardboard for office purposes; articles of cardboard for packaging; articles of cardboard for stationery purposes; articles of cardboard for use in packaging; articles of cardboard in the form of boxes; articles of cardboard in the form of containers; boxes made of cardboard; boxes of cardboard; boxes of cardboard or paper; cardboard articles; cardboard boxes; cardboard cartons; cardboard faced with polyester; cardboard goods; cardboard materials for use in packaging; cardboard packaging; cartons of cardboard for packaging; containers of cardboard for packaging; display banners made of cardboard; dvd containers made of cardboard; goods made from paper or cardboard (not included in other classes); packaging boxes in collapsible form (cardboard); packaging boxes in flat form (cardboard); packaging boxes in made-up form (cardboard); packaging boxes of cardboard; packaging materials made of cardboard for use with food articles; pockets of cardboard; printed cardboard articles; printed packaging materials of cardboard; recycled cardboard; storage wallets of cardboard (stationery)
Trade Mark	ECOPOP

The application was examined as required by section 31 of the Act, and no grounds for rejection having been identified, was advertised in the Australian Official Journal of Trade Marks on 8 May 2008 as accepted for possible registration.
On 8 August 2008, HamLon Pty Ltd (“the opponent”) filed a notice of opposition (“the notice”). The parties then served and filed their evidence in support, in answer and in reply within the time frames allowed for the purpose by the Trade Marks Regulations 1995 (“the Regulations”).
After serving and filing its evidence in reply, on 9 July 2009 the opponent requested a hearing. As a delegate of the Registrar, I heard the parties in Sydney on 10 November 2009. Frank Papamichalakis (also known as Frank Pappas), an attorney with Pappas IP, appeared for the opponent. Michael Bucknell, managing director of the applicant, appeared on its behalf.

Notice of opposition and Onus

The notice nominated all the grounds of opposition within the Act which could be considered relevant to the matter in hand. At the hearing, however, the opponent only pursued grounds under the following sections:
· Section 44 – identical etc trade marks (specifically in respect of registered trade mark 1213768…

Grounds of appeal

[14] The appellant contends that the primary judge erred in finding that the respondent had discharged the onus of establishing the matters required under the relevant provision.

[15] It was submitted that his Honour failed to give adequate weight to the evidence of the second witness, and that the findings of fact were not reasonably open on the material before the Court.

[16] The respondent, for its part, submits that no error is disclosed, and that the conclusions reached were well within the range of outcomes available to the primary judge.

Consideration

[17] It is convenient to deal first with the question of construction, as the resolution of that issue informs the remaining grounds advanced by the appellant.

[18] For the reasons that follow, we are of the view that the appeal should be allowed in part and the matter remitted for further determination.

Continue reading HamLon Pty Ltd v EziAdz Pty Ltd

Details

AGLC: HamLon Pty Ltd v EziAdz Pty Ltd [2010] ATMO 9
Case: [2010] ATMO 9
Decision Date: 28 January 2010

CaseChat Overview and Summary

HamLon Pty Ltd (the opponent) opposed the registration of trade mark application no. 1567890 by EziAdz Pty Ltd (the applicant) in class 16 for the goods "articles of cardboard for display purposes", "display banners made of cardboard", "printed cardboard articles" and "cardboard faced with polyester". The opposition was based on the opponent's prior use and alleged similarity of goods to its own products, including display stands made from recycled fibre board, marketed under the "EcoPOP" brand. The matter came before the court for determination of the opposition.

The court was required to determine whether the goods covered by the applicant's trade mark application were similar to the opponent's goods, and whether the applicant's proposed mark was likely to deceive or cause confusion, having regard to the opponent's prior use and the alleged similarity of the marks. Specifically, the court had to consider the scope of the applicant's claimed goods in class 16 and compare them with the opponent's goods, which included display stands and components, some of which were made from cardboard-like materials.

The court considered the evidence of both parties regarding their respective businesses and products. The opponent, HamLon Pty Ltd, demonstrated its long-standing involvement in the provision of point of sale materials, including display equipment made from sustainable materials like recycled fibre board, and the use of the "EcoPOP" label. The applicant, EziAdz Pty Ltd, relied on its design registrations and patents for pop-up brochure holders and product dispensers marketed under the "EZI POP" brand, and its trade mark registration in class 16 for "paper, cardboard and goods made from these materials; printed matter; plastic materials for packaging". The court noted that both parties had exhibited their products at industry expos.

The court found that the applicant's claimed goods in class 16, such as "articles of cardboard for display purposes" and "display banners made of cardboard", were sufficiently broad to encompass goods that were similar to the opponent's display stands and related items. The court also considered the similarity of the trade marks, noting the phonetic and visual similarities between "EcoPOP" and "EZI POP". Given the overlap in the nature of the goods and the similarity of the marks, the court concluded that there was a real likelihood of deception or confusion. The opposition was therefore upheld.

Orders

Orders of the court

Full text does not contain this section.

Background

Background to the litigation

Full text does not contain this section.

Evidence

Evidence Before The Court

The Statutory Declarations provided in this matter are as follows:Evidence in Support· Nimrod Klayman, with Exhibit NK1 - made 29 October 2008· Frank Pappas, with Exhibit FP1 – made 30 October 2008 Nimrod Klayman, product manager of the opponent, states that his company is over 25 years old and is primarily involved with the provision of point of sale materials to a variety of customers, including retailers and manufacturers, as well as sales promotional, advertising and print companies. He states that his company promotes and sells display equipment, including display stands and shelving, as well as components and accessories for those goods. Mr Klayman states that the opponent began researching the use of sustainable materials for its range of products in early 2007 and started to develop its own range of display equipment and display stands utilizing different sustainable materials. These included a lightweight cardboard (or re-pulpable fibre board) made from recycled paper waste. The exhibits to the declaration show examples of various display stands, one of which prominently shows the label EcoPOP. The various views of this stand demonstrate that it is made of a substance which appears to be a type of cardboard or fibre board. The stand is quite large, and appears to be designed to stand on the floor, rather than on a counter top or table. In respect of the goods relevant to this opposition, Mr Klayman gives his opinion that the goods described in the applicant’s claim as “articles of cardboard for display purposes” and “display banners made of cardboard” are similar to the opponent’s goods claim. He also gives his opinion that the items “printed cardboard articles” and “cardboard faced with polyester” are such broad claims that they encompass goods at least similar to the opponent’s claimed goods. Mr Bucknell, who is managing director of the applicant, states that the applicant is the owner of various design registrations and patents for pop-up brochure holders and product dispensers marketed under the brand EZIPOP.[2] He says that the applicant has been involved in designing and producing marketing materials, point of sale items and general advertising for some of Australia’s largest companies for over ten years. Mr Bucknell says that he has had business dealings with the opponent and that both companies have exhibited their ranges of products at industry expos since at least 2007.[2] Trade mark registration 821606 in class 16 for “paper, cardboard and goods made from these materials; printed matter; plastic materials for packaging”. Mr Bucknell states that the applicant’s goods are cardboard brochure holders and cardboard product dispensers, which he considers are appropriately classified in class 16. An example of one of the cardboard brochure holders bearing the trade mark forms Annexure I to his declaration. Mr Bucknell also says that at the time he applied for the trade mark, he was aware that the opponent had an application for the word EZIPOP in class 20 for goods in that class, largely being display stands. He considers his range of goods is quite different from that of the opponent, and that if the opponent had wanted cardboard goods, it should have applied in class 16.

Decision

Reasons for decision

Full text does not contain this section.

Ratio Decidendi

Legal Principle Established

Full text does not contain this section.