Head Technology GmbH v Uloc Pty Ltd

[2014] ATMO 90

TRADE MARKS ACT 1995

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

Re:Opposition by Head Technology GmbH to registration of trade mark application 1482016(28) - WAXHEAD - filed in the name of Uloc Pty Ltd.

Delegate:

Debrett Lyons

Representation:

Opponent: Robert Kelson of Callinans, Patent & Trade Mark Attorneys

Applicant: Did not attend; relied on written submissions

Decision:

2014 ATMO 90

s52 proceedings: ss41, 43, 44, 59 and 60 pressed – none established; application to proceed to registration.

Background

1. In this matter Uloc Pty Ltd (‘the Applicant’) has filed an application under the Trade Marks Act 1995 (‘the Act’) to register the trade mark appearing below

Application No: 1482016

Filing Date:  23 March 2012

Goods:Class 28: Sporting articles in this class including components, parts and accessories for skis and surfcraft, including surfboards; tools, combs, scrapers, applicators, boxes and containers for skis and surfcraft and their components, parts and accessories; fins, fin boxes, legropes and legrope plugs for surfcraft; ski and surfboard wax

(‘the Goods’)

Trade Mark:  WAXHEAD

(‘the Trade Mark’)

1. The Trade Mark was accepted for possible registration and advertised as such in the Australian Official Journal of Trade Marks on 4 October 2012.

2. On 4 April 2013 and after obtaining an extension of time to do so[1], Head Technology GmbH (‘the Opponent’) filed a Notice of Opposition to registration of the Trade Mark.  It filed evidence in support of its opposition comprising three statutory declarations from Robert Charles Kelson - one made on 1 July 2013, another made on 24 September 2013, and a third made on 4 October 2013.  There was no evidence from the Applicant.

   [1] Indeed after the Trade Mark was registered in error but then revoked by the Trade Marks Office.

3. A hearing was convened in Melbourne on 14 July 2014 where the Opponent was represented by Robert Kelson of Callinans, Patent & Trade Mark Attorneys. The Applicant was not represented but relied upon written submissions it had made to the Office at an earlier point in time after it had received the evidence in support of the opposition. The Opponent also made written submissions making it clear that it intended to rely for its opposition on sections 41, 43, 44, 59 and 60 of the Act and those grounds were the only grounds pressed at the hearing.

4. The Opponent bears the onus of establishing one or more of those grounds of opposition on the balance of probabilities.[2]  The date at which the grounds of opposition must be established is the date of filing of the application.[3]

   [2] See Pfizer Products Inc v Karam [2006] FCA 1663.

   [3] See Southern Cross Refrigerating v Toowoomba Foundry Pty Ltd (1953) 91 CLR 592 at 595.

Section 41

1. Section 41 of the Act was amended by the Intellectual Property Laws Amendment (Raising the Bar) Act 2012 but it is the unamended version of the section which applies in this case by reason of the filing date of the application. So far as is relevant, section 41 as it then stood provided that:

2. Trade mark not distinguishing applicant’s goods or services

   (1)…

   (2)An application for the registration of a trade mark must be rejected if the trade mark is not capable of distinguishing the applicant’s goods or services in respect of which the trade mark is sought to be registered (designated goods or services) from the goods or services of other persons.

Note:For goods of a person and services of a person see section 6.

(3)In deciding the question whether or not a trade mark is capable of distinguishing the designated goods or services from the goods or services of other persons, the Registrar must first 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.

(4)Then, if the Registrar is still unable to decide the question, the following provisions apply.

(5)If the Registrar finds 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 is unable to decide, on that basis alone, that the trade mark is capable of so distinguishing the designated goods or services:

(a)the Registrar is to consider whether, because of the combined effect of the following:

(i)the extent to which the trade mark is inherently adapted to distinguish the designated goods or services;

(ii)the use, or intended use, of the trade mark by the applicant;

(iii)any other circumstances;

the trade mark does or will distinguish the designated goods or services as being those of the applicant; and

(b)if the Registrar is then satisfied that the trade mark does or will so distinguish the designated goods or services – the trade mark is taken to be capable of distinguishing the applicant’s goods and services from the goods and services of other persons; and

(c)…

1. Justice Branson set out an understanding of the structure of the former section of the Act in Blount Inc v Registrar of Trade Marks, [1998] 440 FCA (1 May 1998) 40 IPR 498 at 504 with the words:

   Subsections (3) - (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.

2. The evidence in this matter taken from dictionaries confirms a point that I would consider to be common general knowledge, namely that to a significant percentage of the Australian public, the expression “waxhead” is a slang or colloquial expression referring to a surfer. 

3. The test to be applied, for me to reach a conclusion regarding one of  Justice Branson’s (a), (b) or (c) options above, is found in the words of Kitto J. in ClarkEquipment Co v Registrar of Trade Marks (1964) 111 CLR 511 at 514:

   …. whether a mark is adapted to distinguish be tested by reference to the likelihood that other persons, trading in goods of the relevant kind and being 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.

4. The Goods of the application include items particular to the sport of surfing and other goods which might be bought by surfers. There is little doubt that it is the Applicant’s intention to direct its business towards surfers. That is not to say that the word “waxhead” has a direct association with the Goods such that other traders would have a legitimate expectation to be able to use the term for the same or similar goods. A similar Australian colloquialism is “revhead”, meaning a motor sports enthusiast, but that expression is not required for descriptive purposes to remain available to the public for use on car parts and accessories, nor to indicate their quality or purpose. I regard the Trade Mark as acceptable for registration under s41(3).

5. The Opponent has not established its ground of opposition under section 41.

Section 44

1. Section 44 of the Act relevantly 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.

   Note:For limitations see section 6.

2. Thus the Opponent must establish the existence of an Australian registered or pending trade mark which satisfies all of the following:

   1.it has as an earlier priority date than that of the Trade Mark; and,

   2.is owned by a person other than the Applicant; and,

   3.the goods in question are similar goods to those of the later application; and,

   4.the trade marks in question are either substantially identical or deceptively similar.

1. The Opponent relies on four registrations and its submission is that:

   Trade Mark Registrations 419495, 500718, 579330, and 1135281, all have priorities earlier than the priority date of the Opposed Application. The trade marks covered by those registrations are deceptively similar to the Opposed Trade Mark. The goods covered by the registrations are similar goods in that they would pass through the same trade channels, especially where goods such as waxes for snow skis or snow boards are concerned. … WAXHEAD and HEAD are deceptively similar when used as trade marks in the relatively narrow confines of goods relating to snow sports.

2. Details of those registrations follow:

Registration No:              419495

Priority Date:  11 December 1984

Goods:Class 25: Clothing, footwear, headgear; including sports clothing; sporting clothing, sports shoes, sporting footwear; tennis shoes, running shoes, exercise shoes, squash shoes, basketball shoes and boots, football boots and shoes, and all other footwear in this class for sporting purposes

Trade Mark:  

Registration No:              500718

Priority Date:  2 December 1988

Goods:Class 25: Clothing, footwear, headgear; including sports clothing, sporting clothing, sports shoes, sporting footwear; tennis shoes, running shoes, exercise shoes, squash shoes, basketball shoes and boots, football boots and shoes, and all other footwear in this class for sporting purposes

Trade Mark:  HEAD

Registration No:              579330

Priority Date:  29 May 1992

Goods:Class 28: Tennis equipment, squash equipment and other racket sports equipment, ski equipment; golf equipment in class 28

Trade Mark:  HEAD

Registration No:              1135281

Priority Date:  16 May 2006

Goods:Class 18: Bags not included in other classes, particularly sports bags; racket and ski bags; purses; travelling trunks; travelling sets; rucksacks

Class 25: Clothing, shoes, headgear

Class 28: Sporting articles and equipment not included in other classes, ball games

Trade Mark:  HEAD PERFORMANCE

1. Those registrations have earlier priority dates than that of the opposed application and are owned by a person other than the Applicant[4].

   [4] Not the same person as it happens but that fact is immaterial to the outcome.

2. As was pointed out by French, J in the Woolworths Metro case[5] the logic of section 44 suggests the determination of whether, and to what degree, the Goods are similar the goods of another’s registrations is “logically antecedent to” assessing the deceptive similarity of the trade marks. Registration 1135281 covers all of the Goods of the application and there is an argument for saying that some of the goods of Registration 579330 are similar to the Goods of the application (‘the Registrations’)[6]. 

   [5] Registrar of Trade Marks v Woolworths Limited (1999) 45 IPR 411

   [6] For the purposes of this analysis, the remaining two registrations are for dissimilar goods and have not been further considered herein.

3. Clearly, neither of the trade marks of the Registrations is substantially identical to the Trade Mark and so the remaining question is whether they are deceptively similar to the Trade Mark.

4. Section 10 provides:

Definition of deceptively similar

10. 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.

1. The test for deceptively similar trade marks was considered by Windeyer J. in Shell Co.(Aust) Ltd  v Esso Standard Oil (Aust) Ltd, (1961) 109 CLR 407 at 415:

   On the question of deceptive similarity a different comparison must be made from that which is necessary when substantial identity is in question. The marks are not now to be looked at side by side. The issue is not abstract similarity, but deceptive similarity. Therefore 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.

2. In determining whether the trade marks are deceptively I am required to assume use by the Opponent of its trade marks in a normal and fair manner for any of the goods or services covered by the Registrations.  I must then be satisfied that there is a reasonable likelihood of deception or confusion among a substantial number of persons if the Applicant uses the Trade Mark normally and fairly in respect of the Goods.[7]

   [7] Evershed J in Re Application by Smith Hayden & Co Ltd (1946) 63 RPC 97 at 101.

3. I find that the likelihood of confusion or deception is remote.  As shown by the dictionary evidence, WAXHEAD is a common colloquial term.  I consider it to be well understood in Australia.  Even if it is not known to some members of the public, I consider that some meaning would be attributed to the term since it is part of a broader Australian lexicon of slang terms with the suffix “-head” like “revhead” and other, sometime more profane, terms. On the other hand, HEAD is a common noun and common surname.  It does not reference any goods in particular (except possibly racquet heads) and the impression left by that word is vague.  Even allowing for the Opponent’s submission that some of the goods covered by the Registrations (in particular, cross country skis) use wax and so it might be said that this word is descriptive when used in respect of a small set of the Opponent’s goods, I still regard it as most unlikely that the public would perceive the Trade Mark and a combination of a brand name plus a product used with some of the goods sold under that brand name.   Moreover, the likelihood of confusion or deception is in my opinion non-existent in the case of the other registered trade mark, HEAD PERFORMANCE.

4. The Opponent has not established it opposition under section 44 of the Act.

Section 43

1. Section 43 provides:

   An application for the registration of a trade mark in respect of particular goods or services must be rejected if, because of some connotation that the trade mark or a sign contained in the trade mark has, the use of the trade mark in relation to those goods or services would be likely to deceive or cause confusion.

2. The Courts have decided that section 43 deals with trade marks that have a misleading or confusing connotation which is inherent in the trade mark itself and not simply the product of confusion arising from the resemblance of the trade mark to a mark used by another.[8]  Spender J in Winton Shire Council v Lomas stated that:

   [8] see Registrar of Trade Marks v Woolworths Limited, supra,at [79] per Branson J.

   Section 43 is directed to the use of the mark itself. It is not concerned with any deception or confusion caused by the reputation in Australia of some other trade mark. That aspect of the matter is dealt with under s60.[9]

   [9] (2002) 56 IPR 72

3. The evidence is clear that, in Australia, the connotation of the Trade Mark is a reference to a dedicated surfer. There is nothing in the evidence to suggest to me that the Trade Mark connotes the Opponent’s goods or business and so the section 43 ground of opposition has not been established.

Section 60

1. Following Spender J’s remark, I came to section 60 which provides:

60  Trade mark similar to trade mark that has acquired a reputation in Australia

The registration of a trade mark in respect of particular goods or services may be opposed on the ground that:

(a)another trade mark had, before the priority date for the registration of the first‑mentioned trade mark in respect of those goods or services, acquired a reputation in Australia; and

(b)because of the reputation of that other trade mark, the use of the first‑mentioned trade mark would be likely to deceive or cause confusion.

Note:For priority date see section 12.

1. The Opponent’s success under section 60 is contingent upon proof of a reputation in one or other of the trade marks of the Registrations in Australia before the filing date of the application. In McCormick & Co Inc v McCormick [2000] FCA 1335; (2000) 51 IPR 102; [2000] AIPC 38-192 (‘McCormick’) at [81] Kenny J said of reputation:

   What is intended by the word "reputation" in s 60? The word is defined in The Macquarie Dictionary as follows:

   reputation ... 1. the estimation in which a person or thing is held, esp. by the community or the public generally; repute ... 2. favourable repute; good name ... 3. A favourable and publicly recognised name or standing for merit, achievement, etc. ... 4. The estimation or name of being, having done, etc, something specified.

   Cf. The Oxford English Dictionary. In s 60, the word is, I think, apt to refer to "the recognition of the McCormick & Co marks by the public generally".

   Does the evidence establish that in Australia before 9 March 1992 the McCormick & Co marks were recognised by the public generally and, because of that, the use by Mary McCormick of her marks would be likely to cause the public confusion, as for example, by the public's mistakenly attributing a business connection between the two or attributing her product to the company?

1. In broad terms, it can be said that the Opponent is a well known manufacturer of sports goods and has a well developed programme for sponsoring sports men and women.  It is fair to say, based on the evidence, that the Opponent, a European company, had a reputation in Australia in those goods before the filing date of the application.  It is fair to also say that the Opponent’s reputation in this country in respect of goods used for winter sports (being essentially the products for which the word “wax” would have some relevance) is less strong that it is in Europe and that the Australian public is more conscious of the Opponent’s sports racquets.  Nevertheless, as it eventuates, nothing turns on that observation.

2. In the Woolworths Metro case, op.cit., French J found that the assessment of the likelihood of deception and confusion rested on a number of factors including what he described as a real tangible danger of confusion, rather than a mere possibility of such.  Expressed another way, he posited that this was “another way of expressing the proposition that the trade mark is likely to cause confusion if there is a real likelihood that some people will wonder or be left in doubt about whether the two sets of products or the products and services in question come from the same source.”

3. The question is whether consumers will be confused into believing that the Trade Mark signifies that the Goods emanate from the Opponent and, in practical terms, that requires that I assess the likelihood of deception or confusion resulting from the combined effects of the reputation of the Opponent’s trade marks, the degree of similarity of the trade marks and finally, the nexus of the goods.

4. It is already clear from what I have said in regard to section 44 that this danger is marginal. The section 60 ground of opposition has not been established.

Section 59

1. In short, section 59 provides that the Trade Mark should be refused registration if it is shown that the Applicant does not intend to use, or authorise the use of, the Trade Mark in relation to the Goods.

2. The Opponent’s submissions are that:

   The skills required to produce waxes for skis are substantially different from the skills required to produce waxes for surf boards. The two sorts of waxes fulfil very different functions. Waxes for surf boards are intended to assist the grip of the feet of the rider of the surf board on the upper surface of the surf board whilst waxes for skis are intended to assist either by increasing the grip or reducing the amount of grip or drag between the undersides of skis and snow. The functions are quite different. The waxes have different characteristics. Reference is made to Exhibits RCK-2, RCK-3 and RCK-16. There is no evidence that the Applicant has used the Opposed Trade Mark in relation to ski waxes. Reference is made to Exhibits RCK-13 and RCK-14. Those two Exhibits are copies of print outs of web pages from the web site over a six month period subsequent to the filing of the Notice of Opposition. Those documents do not show any attempt by the Applicant to extend use of the Opposed Trade Mark beyond surf board waxes and related products. The Applicant has not filed any Evidence-in-Answer addressing that point.

3. Put briefly, that evidence is insufficient to establish that, at the filing date of the application, the Applicant did not intend to use the Trade Mark on all the Goods.  The Applicant need only apply the Trade Mark to the Goods; it need not be a manufacturer of the Goods and so, without more, the technical challenges attaching to the production of certain goods is not determinative.  The Goods are all of what might be considered a related class – surfgear and snowgear – appealing to common consumers and there is no reason for me to think that the Applicant lacked a genuine intention to use the Trade Mark on all of the Goods.

4. The Opponent has not established the section 59 ground of opposition.

Decision

1. At the relevant date subsection 55(1) of the Act provided:

   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.

2. My decision is to register the Trade Mark and so, unless a Court orders otherwise, I direct that application 1482016 proceeds to registration for all of the Goods one month after the date of this decision.

Debrett Lyons

Hearing Officer

Trade Marks Hearings

23 September 2014