HamLon Pty Ltd v EziAdz Pty Ltd
[2010] ATMO 9
•28 January 2010
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 – ECOPOP - in class 20)
· Section 58 – applicant not owner of trade mark
· Section 42(b) – use contrary to law
The onus is on the opponent to establish at least one of the grounds it has pursued, on the balance of probabilities.[1] The date at which the grounds must be established is the priority date of the application. It is sufficient for success if the opponent establishes a single ground of opposition.
[1] Following Gyles, J in Pfizer Products Inc v Karam (2006) 70 IPR 599. See also Chocolaterie Guylian N.V. v Registrar of Trade Marks [2009] FCA 891 (18 August 2009) at [22] to [26].
The opponent did not pursue any grounds other than the three noted previously. Therefore it is my decision that none of the other grounds listed in the notice have been established.
Evidence
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
Evidence in Answer
· Michael Bucknell, with Annexures A to O – made 20 February 2009
Evidence in Reply
· David William Evans with Exhibit DE1 – made 28 May 2009
· Frank Pappas with Exhibits FP2 to FP3 - made 29 May 2009
· Michael Richard Farley – made 1 June 2009
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.
Annexure M to the Bucknell declaration is a copy of a registration certificate from the Office for Harmonization in the Internal Market, for a stylized version of the word EZIPOP, which has been registered in the European Union in class 16 for the following goods: “paper, cardboard and goods made from these materials, including containers and display units; printed matter; plastic materials for packaging since 25 January 2006. Mr Bucknell considers this registration is support for his claim that his goods are correctly classified in class 16, and are therefore different from the opponent’s goods.
Discussion
Both parties in this matter are trading in the same field and appear to produce very similar goods. The opponent’s registration, which forms the basis for its section 44 ground of opposition, is recorded on the Register as follows:
| Registration number: | 1213768 |
| Priority date: | 5 December 2007 |
| Goods/class: | Class 20: Display equipment including display stands, display shelving and components and accessories thereof |
| Trade mark | ECOPOP |
In their submissions both the applicant and the opponent refer to the classification of their goods. At the end of the hearing Mr Pappas requested that the Registrar make a determination on the classification of goods so that the matter could be clarified. The nature of the goods is particularly relevant to the grounds pursued under sections 58 and 44, so an exploration of the goods and their classification is warranted.
The classification system
Australia is party to the Nice Agreement Concerning the International Classification of Goods and Services for the Purposes of Registration of Marks (“Nice agreement”). The 9th Edition of the Nice agreement classification came into effect in Australia on 1 January 2007, and it is this version of the classification which determines the classes relevant to both the applicant’s and the opponent’s goods claims.
The classification system is basically an administrative tool which simplifies searching for the goods and services of trade mark registrations and applications. The classification system divides goods and services into 45 classes – 34 for goods and 11 for services and these are set out in Schedule 1 to the Trade Mark Regulations 1995 (“the Regulations”). Each class has a heading which briefly describes the general range of goods which will be expected to fall within that class.[3] The class headings for the classes the applicant and opponent have chosen are relevant examples:
· Class 16: Paper, cardboard and goods made from these materials, not included in other classes; printed matter; bookbinding material; photographs; stationery; adhesives for stationery or household purposes; artists' materials; paint brushes; typewriters and office requisites (except furniture); instructional and teaching material (except apparatus); plastic materials for packaging (not included in other classes); playing cards; printers' type; printing blocks
· Class 20: Furniture, mirrors, picture frames; goods (not included in other classes) of wood, cork, reed, cane, wicker, horn, bone, ivory, whalebone, shell, amber, mother-of-pearl, meerschaum and substitutes for all these materials, or of plastics
[3] It is important to note that the class heading does not necessarily cover each and every item which may fall into that class. See NEC Corp's Application [2002] ATMO 32 (Reg);
As well as the class headings, the Nice classification includes an alphabetical listing of goods which fall within the classes. The Nice lists are far from comprehensive, and IP Australia has added many items to the lists in each class, resulting in a large and more comprehensive listing of goods and services for use by applicants within the Australian jurisdiction.
The Registrar has the power, given by section 32 of the Act, to decide on classification matters:
Registrar to decide on disputed classification of goods etc.
32. If a question arises as to the class in which goods or services are comprised:
(a) that question is to be decided by the Registrar; and
(b) the decision of the Registrar is not subject to appeal and may not be called into question in an appeal or other proceedings under this Act.
When deciding on appropriate classification, the Registrar is assisted by a set of principles which accompany the Nice classification lists. These principles have been expanded as an aid to assist trade mark examiners who are required to assess each application to ensure the goods and services applied for have been put into the most appropriate classes. Annex A2 to part 14 of the Trade Marks Office Manual of Practice & Procedure (“the Manual”) sets out the relevant principles as follows:
Many items are already classified in NICE. When however it is necessary to classify an item which does not appear either in the NICE classification or as an Office Determination, the following criteria should be applied:
CLASSIFICATION OF GOODS
· FINISHED PRODUCTS are classified, in principle, according to their FUNCTION or PURPOSE.
(eg. Water filters are classified in class 11 because their FUNCTION or PURPOSE is to FILTER WATER, and class 11 includes goods for WATER SUPPLY PURPOSES.)
· If this criterion is not provided for in the list of classes, FINISHED PRODUCTS are classified by ANALOGY with other COMPARABLE finished products contained in the alphabetical list.
(eg. Saveloys are classified in class 29 by ANALOGY with SAUSAGES.)
· If there are no comparable products other criteria may be applied, for example the MATERIAL of which the goods are made or the mode of OPERATION.
(eg. Handkerchiefs are classified in class 16 if made of paper and in class 24 if made of materials other than paper. They are classified by MATERIAL.)
Classifying the claimed goods
The opponent has registered the ECOPOP trade mark for a range of display items, namely “display equipment including display stands, display shelving and components and accessories thereof”. According to the IP Australia classification listing, there are goods which fit this description listed in class 20. There is also display equipment of various kinds to be found in classes 6 (mainly metal goods); 7 (motor driven display platforms); 9 (for example: any display equipment which may be electrically or electronically operated); 11 (for example: refrigerated or heated display cases); Class 19 (for example, roadside display boards which are non-metallic, non-mechanical and non-luminous). Class 16 includes quite a broad range of goods which are described using the word “display”, and these include goods made of paper and cardboard and various stationary items designed to display other materials. It is clear then that the classification is multi-faceted, dependent on a number of determining factors.
In respect of class 20, the class heading indicates that a good proportion of the goods in that class will fit the description “furniture”. A look at the complete list for the class bears this out. The display equipment in this class, then, should consist of such equipment which can be described largely as furniture. The examples in the exhibits to the Klayman declaration show larger display cabinets, made of something which is either a cardboard or some other composite board, and which could function as a piece of furniture, along the lines of other cabinets and shelving which clearly come into the class.[4] The cardboard composite material can be regarded as a substitute for the wood or for plastic which would often be used to construct these goods and items of furniture made from these substitutes are accordingly correctly placed into class 20. Based on the classification principles noted previously, the goods for which the opponent has used and registered the ECOPOP trade marks are thus correctly classified in class 20.
[4] “Furniture” is defined in the Macquarie Dictionary (current on-line version) as:
noun 1. the movable articles, as tables, chairs, beds, desks, cabinets, etc., required for use or ornament in a house, office, or the like.
The applicant has applied for a broad range of cardboard goods in class 16, and a consideration of the lists for that class show that class 16 does include a great variety of goods that are made from cardboard. The Bucknell declaration says that the applicant’s range of goods sold under the EZIPOP brand (and more recently under the ECOPOP brand) “consist of cardboard brochure holders and cardboard product dispensers, with the majority of product sold being the brochure holders”. An example provided as an attachment to the declaration consists of a small item measuring 105mm wide and 115mm tall once constructed. It is designed to be displayed on a desk, table or counter top. These items are clearly items for displaying goods, but just as clearly, they are not furniture, just as a shoe box or other small cardboard box for holding something is not furniture.
In answer to Mr Pappas request for a classification determination on the relevant goods, display equipment including display stands, display shelving and components and accessories thereof which are analogous to furniture (in size, configuration and so on) will be classified in class 20 even when made of cardboard or similar composites. Those display items which are not analogous to furniture, such as the applicant’s brochure holders, are classified according to the material of which they are composed, in this case cardboard. Thus the goods the applicant actually produces are correctly classified in class 16.
This may appear to be an anomalous situation. But it is important to note that the classification system is not designed so that all similar goods of any particular kind are listed in a single class. The classes are grouped into very broad areas, and it is often the case that similar goods may appear in different classes. For example, almost all clothing is classified in class 25, except that protective clothing is found in class 9 and special clothing for particular sports falls into class 28. Detergents are to be found in class 1 (detergents for use in industrial applications); in class 3 (detergents for household and domestic use) and in class 5 (detergents for medical use). As a corollary, it is possible for very different goods to be listed in a single class – an example being computers and fire extinguishers in class 9.
This propensity for similar or closely related goods and services to appear in a number of classes is the rationale behind the “cross search classes” list which IP Australia provides for its trade mark examiners (and its customers) to use when searching for the purposes of section 44 of the Act. The current list is published as Annex A9 to part 14 of the Manual, and I have included it here as Annex 1 to this decision.
This information is relevant as both parties to this opposition have made reference to the classification of the goods claimed and, especially in the applicant’s case, have shown a clear lack of understanding of how the classification system operates and the effect it is likely to have in respect of conflicting trade marks. Comments in the Bucknell declaration make it clear that the applicant is under the impression that the goods in each class are clearly distinct from each other and, since the examiner at the time did not mention the opponent’s trade mark, this view has been confirmed. Unfortunately, the applicant is not correct in its view of the situation. In order to further explain the matter, it is now appropriate to move on to a consideration of the grounds of opposition pursued at the hearing.
Section 44 – identical etc trade marks
To establish a ground for opposition under s 44(1) an opponent must show all of the following:
at the application priority date;
there was a substantially identical or deceptively similar trade mark application or registration;
in respect of similar or closely related goods;
in the name of a person other than the applicant.
In this case, the opponent is relying on its trade mark registration number 1213768, which has a priority date of 5 December 2007. The priority date of the applicant’s trade mark is 11 January 2008. Both trade marks are the word ECOPOP. The remaining matter which will determine establishment of the ground of opposition under section 44 is whether or not the relevant goods are similar.
Section 14 of the Act defines “similar goods” in the following terms:
For the purposes of this Act, goods are similar to other goods:
(a) if they are the same as the other goods; or
(b) if they are of the same description as that of the other goods.
There are accepted tests for determining whether or not goods are of the same description. In Jellinek's Application[5] Romer J. set out the following matters for enquiry in assessing whether goods are of the same description:
- the nature of the goods;
- the respective uses of the articles;
- the trade channels through which the commodities are respectively bought and sold.
[5] (1946) 63 RPC 59, the trade mark PANDA
These factors were enlarged upon by the Assistant Comptroller in Beck, Koller & Company's Application[6] as follows:
- the nature and characteristics of the goods;
- the origin of the goods;
- the purpose of the goods;
- whether the goods are usually produced by one and the same manufacturer;
- whether the goods are distributed by the same wholesale houses;
- whether the goods are sold in the same shops, over the same counter, during the same season and to the same class or classes of customer;
- whether those engaged in the manufacture and distribution of the goods are regarded as belonging to the same trade.
[6] (1947) 64 RPC 76 at page 78, the trade mark PLIO
Both parties in this opposition are producing items which are designed to display the goods of other traders so that they can attract the attention of and/or be examined by potential purchasers. The main difference between the examples of the goods which each party has provided in its evidence is in the size of the article.
The goods are likely to be bought by the same people and used for the same purpose, a supposition which is supported by the two parties demonstrating and advertising their goods at the same trade expos. It is clear to me that the goods of both applicant and opponent are definitely goods of the same description, despite the examiner’s decision at the time the application was first considered.
As I have access to the examination file, I am able to access the searches which the examiner undertook at the time the trade mark application was examined. From these searches I am able to see that the examiner was aware of the opponent’s trade mark as it was retrieved during the Register search, despite classes 16 and 20 not being on the cross-searching list. The registration abstract was annotated as “different goods”, which meant the provisions of section 44 could not be relevant. This annotation is not unreasonable, given the information before the examiner at the time.
However, once the application proceeds to the opposition forum, information from the evidence is likely to shed more light on the exact nature of the goods involved. This is what has occurred here. Despite the two applications being in different classes, and the classes not being listed in the cross search lists, the nature of the goods is much closer than the examiner originally understood. This is a matter which has become evident through my consideration of the classification earlier in this decision.
This goods consideration is the final matter which must be met for the opponent to establish a ground of opposition under the provisions of section 44. The ground is therefore established.
Further comments
The opponent is successful in this matter because it has established a ground of opposition. However, it clear from the submissions that the applicant did not understand the process, nor what was required of it in supporting its case. The applicant’s evidence consisted largely of argument rather than fact and, despite this, its representative submitted that the applicant has clearly demonstrated its use of the word ECOPOP. To be frank, neither party here has clearly demonstrated use in any significant manner. Neither party has provided sales or advertising figures and neither party has provided sound information which attests to the extent or value of their use of the claimed trade mark, if indeed there had been any significant use, before the priority date. The opponent, however, applied for its trade mark first, and has achieved registration. Without evidence from the applicant which can counter this apparent right, the opponent succeeds in the matter.
As a final comment, I note that the opponent did submit that its registration should prevent the applicant’s trade mark from proceeding in respect of only two items within the goods claim, namely “articles for display purposes made of cardboard” and “display banners made of cardboard”. I take this to mean that the opponent would be satisfied for the application to remain on the register for the remainder of the goods within the claim.
The provisions of section 55(b) give the Registrar the discretion to register a trade mark even in the face of a successful opposition, if that action is appropriate in the circumstances. I do not intend to use this discretion or accede to the opponent’s suggestion, despite its apparent intent to leave the applicant with a registration of some kind.
There are basically two reasons for my refusal to accede to the particular course of action. Firstly, deleting the two specified items from the broad range of cardboard goods the applicant has claimed in class 16 would not remove the similar goods and goods of the same description from the specification. The end result is likely to be the creation of real and tangible chances of deception and confusion occurring between the two producers within the particular market. Secondly, the applicant has shown that it is producing display articles made of cardboard. Deleting them from the goods claim would not assist the applicant in its endeavours to register a trade mark for its chosen range of goods. I am of the opinion that the only appropriate option open to me is to refuse to register the application in its entirety.
Decision
The opponent has succeeded in establishing a ground of opposition. I refuse to register trade mark application number 1218890.
Costs
The opponent has been successful and is entitled to its costs. I award costs against the applicant according to the official scale.
Alison Windsor
Hearing Officer
Trade Marks Hearings
28 January 2010
Annex 1
Cross search classes from March 2007
Key Legal Topics
Areas of Law
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Commercial Law
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Intellectual Property
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