Huntsman International, LLC v Ready Unit Company Pty Ltd as trustee for the Ready Unit Trust

[2018] ATMO 146

TRADEMARKSACT 1995

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

Re:Opposition by Huntsman International, LLC to registration of trade mark application 1774010 (6, 22) - HUNTSMAN INDUSTRIES - in the name of Ready Unit Company Pty Ltd as trustee for the Ready Unit Trust.

DELEGATE:

Iain Thompson

REPRESENTATION:

Opponent:  Houlihan2 Pty Ltd. Applicant:  Davies Collison Cave Pty Ltd.

DECISION:

2018 ATMO 146

Trade MarksAct1995

Section 52 opposition to registration - grounds under sections 44, 58, 58A, 43, 60, 42, 62A - no evidence filed - section 44 considered but not established - opposition not established

Background

1.In these proceedings under section 52 of the Trade Marks Act 1995 (‘the Act’) Ready Unit Company Pty Ltd as trustee for the Ready Unit Trust (‘the Applicant’) has applied for the registration of the trade mark which appears below:

Application No:         1774010

Priority Date:             31 May 2016

Goods:Class 6: Common metals and their alloys; metal building materials; gates of metal; metallic gates for use on a farm; gates of metal, for use the protection of children; sluice gates made of metal; gate eyes of metal; gate hooks of metal; gate stops of metal; metal pickets; railings of metal; roller shades (outdoor) of metal; metal fencing, including temporary metal fencing; metal fence panels, including metal temporary fence panels; fencing made of common metal, including, fencing made of common metal coated with plastics; wire fencing and wire fencing materials; metal fencing posts; metal fencing wire; fittings of metal for fences; metal connectors for fastening together parts of fences; railings of metal in the nature of fences; articles made of metallic materials for defining barriers; barrier apparatus (metal structures); barrier poles of metal; crash barriers of metal for roads; guidance barriers of metal; metal barriers, including, crowd control barriers; pool fencing of metal; metal clamps; metal feet in the form of a base; non-electric cables and wires

of common metal; ironmongery, small items of metal hardware; pipes and tubes of metal; parts fittings and accessories of metal for the aforementioned goods

Class 22: Awnings and tarpaulins; sails; shade awnings and canopies, not of metal; shade cloth; shade sails; ropes and string; nets for shading; tents, sacks; padding and stuffing materials (except of paper, cardboard, rubber or plastics); raw fibrous textile materials

Trade Mark:               HUNTSMAN INDUSTRIES

(‘the Trade Mark’)

2.The Trade Mark was examined as required by section 31 of the Act and advertised as accepted for possible registration on 20 October 2016 in the Australian Official Journal of Trade Marks.

3.On 20 December 2016, Huntsman International, LLC (‘the Opponent’) filed a Notice of Intention to Oppose the registration of the Trade Mark.

4. Thereafter the opposition process has followed the timetable hereunder:

20 January 2017 – Statement of Grounds and Particulars (‘the SGP’) filed by the Opponent:

Grounds under sections 44, 58, 58A, 43, 60, 42, 62A of the Act;

1 March 2017 – Notice of Intention to Defend filed by the Applicant.

5.Neither party has filed evidence in relation to these proceedings. Both parties have been informed of their right to be heard or to make written submissions and neither has availed themselves of these opportunities.

6.Now, in order that the Registrar of Trade Marks may discharge her obligation under section 55 of the Act to decide the matter it has been passed to me, one of her delegates, for my decision on the written record which is comprised of those materials mentioned in the foregoing paragraphs.

Onus & Relevant Date

7.The Opponent bears the onus of establishing one or more grounds of opposition which are detailed in the SGP on the balance of probabilities.1 I note that the grounds detailed within the SGP can only be established via evidence which discharges that onus, with

1 Pfizer Products Inc v Karam [2006] FCA 1663; 237 ALR 787; (2006) 70 IPR 599; [2006] AIPC 92-146 per

Gyles J at [6]-[26]; Telstra Corporation Ltd v Phone Directories Co Pty Ltd [2015] FCAFC 156 at [132]- [133].

the exception of section 44 where the Opponent nominated the registrations upon which it relies within the SGP. 2

8.For completeness, I note that those grounds (other than that under section 44 which I am to consider) have not been established.

9.The relevant date at which the grounds under section 52 must be considered is the filing date3 of the opposed application and I note that the priority date of the Trade Mark (in terms of section 44 of the Act) is here the same as the filing date.

Section 44

Statement of Grounds and Particulars

1. In the SGP the Opponent asserts:

The [Trade Mark] is substantially identical with, or deceptively similar to, the following Trade Marks of the Opponent, which have an earlier priority date than the Application and which are registered in respect of goods which are the same, similar to, of the same description or closely related to the goods of the Application ("Goods"), and therefore, Registration of the Application would be contrary to Section 44 of the Act. The [Trade Mark] has not been used by the Applicant to satisfy the requirements of Section 44(3) and/or 44(4).

1. The Opponent then specifies the following trade mark registrations:

Registration No:         534939

Priority Date:             24 May 1990

Goods:  Class 1: Polypropylene, polymers and chemicals in this class Trade Mark:  HUNTSMAN POLYPROPYLENE CORPORATION

Registration No:         607705

Priority Date:             27 July 1993

Goods:  Class 1: Polystyrene, expandable polystyrene, styrene monomer Trade Mark:  HUNTSMAN CHEMICAL COMPANY AUSTRALIA PTY LTD

Registration No:         7321144

Priority Date:             14 Apr 1997

2 See, for example, Medley Distilling Co v Croakers Gully Australia Pty Ltd (2000) 53 IPR 430, Australian Cricket Board v Lilyana Holdings Pty Ltd (2002) 57 IPR 110, Wal-Mart Stores Inc v Ozark-London Ltd (2004) 62 IPR 165 and Quiksilver International Pty Ltd v Oliver Bernd GmbH & Co. KG [2008] ATMO 14.

3 Southern Cross Refrigerating Co v Toowoomba Foundry Pty Ltd [1953] HCA 73; (1954) 91 CLR 592.

4 I note that this registration is incorrectly identified within the SGP as being Australian trade mark registration number 7322114 but is otherwise particularised sufficiently to come under the Registrar’s consideration. While nothing turns on this I note, too, that registration 732114 is owned by a different person than are registrations 534939 and 607705.

Goods:Class 1: Organic carbonates, such as ethylene carbonate and propylene carbonate, for use as solvents; ethylene; propylene; 1, 3- butadiene; cyclohexane; hydrogen; synthetic surface active agents used in detergents, cleaning compounds, paints, agricultural emulsifiers, paper applications, paper deinking, oilfield applications, metal treating applications, corrosion inhibition, mold release agents, and mineral processing; amines for industrial use, such as morpholine, N-methylmorpholine, N-ethylmorpholine, N- ethylmorpholine oxide, N-amineothylpiperazine, and 2-(2- aminoethoxy) ethanol; ethanolamines, such as monoethanolamine, diethanolamine, triethanolamine, and dimethylethanolamine; glycols, such as monoethylene glycol, diethylene glycol, triethylene glycol, propylene glycol, dipropylene glycol, and other polyethylene glycols and polypropylene glycols; glycol bottoms; aromatic distillate; alkylalkanolamines, such as methyl diethanolamine, aminoethyl ethanolamine, and monomethyl ethanolamine; nonylphenol and dinonylphenol, for use as surface-active agent intermediates, nonylphenol and dinonylphenol for use in the manufacture of detergents, light stabilizers, petroleum demulsifiers, oil-soluble phenolic resins, plasticizers, dyestuffs, germicides, insecticides, and aromatic oils; motor fuel additives for controlling deposits on internal combustion engines; methyl tertiary butyl ether for use in reformulated motor fuels; alkyl benzene for use as chemical intermediates in the manufacture of surface active agents; chemical agents for removal of unwanted contaminants from non-liquid gas streams; catalysts for the manufacture of flexible foams, rigid foams, coatings, elastomers, and plastics; heat transfer fluids, and metal working fluids, containing a glycol, such as ethylene glycol and propylene glycol; polyether amines, for use in curing and hardening agents for epoxy resins and adhesives, and in the manufacture of flexible foams, rigid foams, coatings, elastomers, and plastics; plastic materials, namely, polystyrene and expandable polystyrene for use in the manufacture of a wide variety of products; manufacturing chemicals, namely, styrene monomer for polymerization to form styrene polymers; polystrene [sic] and expandable polystyrene and alloys and compounded products thereof for use in manufacturing finished products; and styrene monomer for polymerization to form polystyrene and other polymers containing styrene; polypropylene, homopolymers and alloys and compounded products thereof, copolymers and alloys and compounded products thereof, all for use in the manufacture of a wide variety of products; maleic anhydride and fumaric acid for use in a wide variety of applications; catalysts for use in the manufacture of maleic anhydride

Trade Mark:               

Discussion

1. As there is no evidence before the Registrar, and the application is made in respect of goods, section 44 relevantly provides:

44  Identical 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.

Note4:     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.

1. Thus, to establish the opposition under section 44 of the Act at least one of the trade mark registrations upon which the Opponent relies must meet all of the following criteria – it should have:

·a priority date earlier than that of the Trade Mark; and

·similar goods to those in respect of which registration is sought; and

·a trade mark which is substantially identical or deceptive similar to the Trade Mark.

Priority Date

1. The priority dates of the registrations on which the Opponent relies are earlier than the priority date of the Trade Mark.

Similar Goods

1. Section 14 of the Act relevantly provides:

14  Definition of similar goods and similar services

(1)    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.

1. The goods of the parties are not ‘the same goods’.

1. The expression ‘goods of the same description’ has been extensively discussed by the Courts. In E & J Gallo Winery v Lion Nathan Australia Pty Ltd Moore, Edmonds and Gilmour JJ stated:5

   The expression "goods of the same description" is a term of art which was found in the legislative predecessors to the TM Act. There is Full Court authority, MID Sydney Pty Ltd v Australian Tourism Co Ltd (1998) 90 FCR 236, that authorities predating the enactment of the TM Act in 1995 concerning the meaning and effect of the expression in a different context are apt to be applied in considering the meaning and effect of the expression in s 120(2). The fact that the Full Court was considering the expression "services of the same description" rather than "goods of the same description" does not appear to us to be a material difference. In this context, the Full Court referred to the judgment of the High Court in Southern Cross at 606. Considerations referred to in the passage from the judgment of the High Court include the nature and characteristics of the goods, their origin, their purpose, whether they are usually produced by one and the same manufacturer or distributed by the same wholesale houses, whether they are sold in the same shops over the same counters, during the same seasons and to the same class or classes of customers and whether, by those engaged in the manufacture or distribution, they are regarded as belonging to the same trade.

1. In consideration of the question against each of the factors referred to in the above passage, the answers must weigh against a finding that the goods of the parties are ‘goods of the same description’. The goods of the parties are different in their natures and characteristics – on the one hand lie organic chemicals, on the other there are metal products, textiles and fibrous goods. These goods are not usually made by one and the same manufacturer nor sold through the same wholesale provider. They are not sold through the same shops over the same counters to the same class of customers or for the same purpose. The people who produce them are employed in different trades in dissimilar industries.

1. The goods of the parties are not, therefore, goods of the same description.

1. The ground under section 44 of the Act is not established.

5 [2009] FCAFC 27; (2009) 175 FCR 386; [2009] AIPC 92-337 at [70].

Decision

1. Section 55 of the Act relevantly provides:

55  Decision

(1)    Unless subsection (3) applies to the proceedings, 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.

1. The opposition to registration of the Trade Mark has not been established.

1. The trade mark application may then proceed to registration one month from the date of this decision. If the Registrar has been served with a notice of appeal before that time, I direct that registration shall not occur until the appeal has been decided or discontinued and the disposition of the application should be in accordance with the Court’s order or direction.

Costs

1. The Opponent sought its costs in the event that it was successful in these proceedings; however, as the opposition has not been established it is appropriate that, in terms of section 221 of the Act, I award costs against the Opponent at the official scale set out in Schedule 8 to the Trade Marks Regulations 1995.

Iain Thompson Hearing Officer

Trade Marks and Designs Oppositions and Hearings 14 September 2018