Illinois Tool Works Inc v Welding Guns of Australia Pty Ltd

[2023] ATMO 147

TRADE MARKS ACT 1995

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

Re:Opposition by Welding Guns of Australia Pty Ltd to registration of trade mark application number 2150544 (class 7) – 16TC – in the name of Illinois Tool Works Inc

Delegate:	Nicholas Barbey
Representation:	Opponent: Angus Lang SC instructed by A&F Legal Pty Ltd Applicant: Benjamin Fitzpatrick of counsel instructed by Davies Collison Cave Pty Ltd
Decision:	2023 ATMO 147 Trade Marks Act 1995 (Cth) – opposition under s 52 – s 41 considered – no ordinary signification – trade mark inherently adapted to distinguish designated goods – trade mark may proceed to registration

Background

1. This decision concerns an opposition brought by Welding Guns of Australia Pty Ltd (‘Opponent’) pursuant to s 52 of the Trade Marks Act 1995 (Cth) (‘Act’) to registration of the following trade mark:

   Trade mark:  16TC (‘Trade Mark’)           

   Application number:              2150544

   Owner:  Illinois Tool Works Inc (‘Applicant’)

   Filing date:  21 January 2021

   Specification:  Class 7: welding apparatus and their parts and fittings in this class; arc welding machines; gas welding machines; welding electrodes; arc welding electrodes; electrode or filler wire feeders (parts of electric arc welding apparatus) electric welding apparatus parts and accessories for use in relation to the foregoing (‘Goods’)

   Endorsements:  Evidence and/or other circumstances provided under subsection 41(4). Provisions of subsection 44(4) and/or Reg 4.15A(5) applied.

2. The acceptance of the Trade Mark for possible registration was advertised on 24 August 2021. The Opponent filed a notice of intention to oppose, followed by Statement of Grounds and Particulars (‘SGP’) on 19 November 2021. The Applicant filed a notice of intention to defend on 10 February 2022.

3. Evidence in Support (‘EIS’) was filed by the Opponent and the Applicant filed Evidence in Answer (‘EIA’). In turn, the Opponent filed Evidence in Reply (‘EIR’) and an oral hearing was requested. Submissions were filed by the Opponent on 20 June 2023 (‘Opponent’s Submissions’) and by the Applicant on 27 June 2023 (‘Applicant’s Submissions’).

4. As a delegate of the Registrar of Trade Marks, I heard this matter by video conference on 4 July 2023. Angus Lang SC presented submissions on behalf of the Opponent and Benjamin Fitzpatrick of counsel presented submissions on the Applicant’s behalf.

   Grounds of opposition, onus and standard of proof

5. The SGP nominated a ground of opposition under s 41 of the Act. To be successful, the Opponent bears the onus of establishing this ground.[1]

   [1] Food Channel Network Pty Ltd v Television Food Network GP [2010] FCAFC 58, [32] (Keane CJ, Stone and Jagot JJ).

6. The relevant standard of proof is the ordinary civil standard based on the balance of probabilities.[2] The date at which the rights of the parties are to be determined is 21 January 2021 (‘Relevant Date’), being both the filing and priority date of the Trade Mark.

   [2] Telstra Corporation Limited v Phone Directories Company Pty Ltd [2015] FCAFC 156, [133] (Besanko, Jagot

   Evidence

7. The following declarations were filed:

EIS

• Declaration made on 13 May 2022 by Daniel Philip Hughes (Operations Manager at the Opponent) with Annexures DH-1 to DH-8 (‘Hughes 1’).

EIA

• Declaration made on 11 August 2022 by Alan Hamilton (General Manager of Welding Industries of Australia, a wholly-owned business operating division of the Applicant) with Exhibits AH-1 to AH-12 (‘Hamilton Declaration’).

EIR

• Declaration made on 12 September 2022 by Gregory Thomas Bainbridge (Managing Director of Allweld Services Pty Ltd) (‘Bainbridge Declaration’).
• Declaration made on 19 October 2022 by Daniel Philip Hughes with Annexures DH8 to DH14 (‘Hughes 2’).

EIS

1. Hughes 1 states that the Opponent ‘designs, manufactures and supplies welding products to the Australian welding industry’ and has been trading since 1979.[3] The Opponent is ‘one of the largest Australian owner manufacturers and suppliers of welding equipment, accessories and consumables’ and its business includes the sale of electrodes.[4]

   [3] Hughes 1, [6].

   [4] Ibid [6], [8].

2. Mr Hughes, who previously worked as a boilermaker, explains that electrodes are commonly used in ‘general fabrication and construction and structural welding’.[5] He declares that:

   An electrode is a conductor used to establish electrical contact with a non-metal component of a circuit. An electrode is metal or wire rod which is either single or twin coated with flux. Flux is a chemical composition applied to the electrode which creates an atmosphere for the arc of an electrode to work in. The “arc” of an electrode is, in essence, where the electrode is melting into the weld material.[6]

   [5] Ibid [11].

   [6] Ibid [9].

3. Mr Hughes clarifies that a ‘twin coated electrode has two separate coatings of flux, comprised of different, complementary coatings which improve arc stability and weld quality’.[7] He states that different types of electrodes exist and ‘[o]ne particular type of electrode is an “Arc” electrode more commonly referred to as a “Stick” electrode by tradespeople within the industry’.[8] Mr Hughes opines that ‘[g]enerally an engineer will prepare a design indicating that welds need to meet a particular classification or rating’ and, upon review, a tradesperson would understand ‘the materials to be used in the context of such a weld’ based on their trade knowledge.[9]

   [7] Ibid [10].

   [8] Ibid [12].

   [9] Ibid [14]–[15].

4. According to Hughes 1, ‘[e]lectrode welds are classified by tensile strength, weld position, the type of coating and polarity and flux composition’.[10] In Mr Hughes’ experience, the ‘American Welding Society classification system (of electrodes) has been used by or adopted within the Australian welding industry’.[11] This is reflected in the ‘Australia/New Zealand Standards’ which adopts ‘the same classification system and symbols’ as the American Welding Society (‘AWS’) classification system.[12]

   [10] Ibid [16].

   [11] Ibid [17].

   [12] Ibid [18].

5. For electrodes to be sold in Australia, Mr Hughes states that they ‘must meet the requirements prescribed by the relevant standard by reference to the electrode classification’.[13] He points out that the ‘“naming” convention of the electrode classification itself indicates properties or characteristics of the electrode’ and clarifies that:

   [T]he first two numbers represent the tensile strength of the electrode, the third number represents the (welding) positions it can be used in and the fourth number represents the type of coating on the outside of the filler material. This convention is consistent across the [AWS Specification for Carbon Steel Electrodes for Shielded Metal Arc Welding] and the Australian Standards (e.g., AS/NZS 4854:2006).[14]

   [13] Ibid [19].

   [14] Ibid [20].

6. To illustrate, the EIS contains the following classification example:[15]

   [15] Ibid Annexure DH-2.

7. Mr Hughes asserts that electrode manufacturers ‘are required to include the specification and classification designation legibly on every electrode unit package sold’ and consumers rely on this to ensure that they ‘purchase the correct type of electrode for their application’.[16] To this end, it is declared that customers typically ask for the type of electrode they need and, in response, a salesperson will list the brands in stock. Mr Hughes believes that this is analogous ‘to a person identifying, for example, that they need a “AAA” battery and then being told the brands of battery stocked by the store’.[17]

   [16] Ibid [23]–[24].

   [17] Ibid [28].

8. Hughes 1 contends that a 7016 low hydrogen twin coated electrode is commonly known as a ‘16TC’ and would be understood as such by purchasers and salespeople. Based on his experience, ‘“16” indicates that the electrode is a Low-Hydrogen Potassium composition or Rutile (titanium dioxide) covering, is an all-position type of weld and its polarity is either AC or DC’ and ‘TC is shorthand for “twin coated”’.[18] Mr Hughes declares that ‘16TC’ is the common shorthand for this electrode class and this has been his experience for almost 30 years in the welding industry. Mr Hughes opines that ‘if [he] was to order or sell twin coated 7016 Low Hydrogen electrodes [he] would say or expect to be asked something along the lines of “I need some 16TCs”’.[19]

   [18] Ibid [26]–[27].

   [19] Ibid [28].

9. In Mr Hughes’ opinion, the ‘industry adoption of a shorthand or truncated reference to an electrode classification is not limited to 16TC electrodes’.[20] To support this, reliance is placed on the usage of ‘316L’ within the industry to denote stainless steel electrodes as well as the use of ‘13’ or ‘GP13’ to indicate a general purpose 6013 electrode. Finally, Mr Hughes confirms that the Opponent ‘has sold in the Australian market a welding electrode under the name “Hyperarc 16TC”’ since January 2021 and it is concerned that registration of the Trade Mark would prevent others ‘from using the most common industry term of reference in respect of [a twin coated 7016 Low Hydrogen electrode]’.[21]

   EIA

   [20] Ibid [32].

   [21] Ibid [38]–[39].

10. According to the Hamilton Declaration, the Applicant is an industrial company that ‘operates in more than 50 countries worldwide’ and it ‘currently holds the leading market share in relation to all welding electrode sales in Australia’.[22] The Trade Mark was created in 1962 ‘to identify a range of  low-hydrogen welding machines, welding electrodes and related parts and accessories’ and goods bearing the Trade Mark were launched in Australia the same year.[23]

    [22] Hamilton Declaration, [7], [15].

    [23] Ibid [10]–[11].

11. In Mr Hamilton’s experience, ‘welding electrodes are classified based on an international system where each of the alphanumeric characters specify certain operating characteristics’.[24] He explains that the ‘naming convention under this system takes the form of “EXXXX”. The letter “E” stands for “electrode” and the subsequent characters designate tensile strength, welding position, the type of electric power supply and other information’.[25] Mr Hamilton remarks that this is consistent with the AWS classification system and opines that the Trade Mark ‘is clearly distinguishable from the “EXXXX” naming convention’.[26]

    [24] Ibid [12].

    [25] Ibid [13].

    [26] Ibid.

12. The Hamilton Declaration claims that the Applicant ‘holds the leading market share in relation to all welding electrode sales in Australia’ and sales of its ‘16TC products, in particular, have been significant’.[27] The revenue figures provided and the ‘selection of invoices relating to sales of 16TC products’ indicate that the Applicant has enjoyed consistent annual growth since 2003.[28] The Applicant also promotes its ‘16TC products’ via print and online mediums as well as ‘in partnership with a wide range of distributors’.[29]

    [27] Ibid [15].

    [28] Ibid [16].

    [29] Ibid [19].

13. Mr Hamilton contends that ‘consumers and other stakeholders in the welding industry have grown to rely on the [Trade] Mark to identify and locate’ low-hydrogen welding machines and electrodes.[30] Reliance is placed on 18 declarations by Australian distributors of welding goods attesting to this alleged reputation together with screenshots of comments made on a Facebook post.[31] The latter purportedly demonstrates recognition of the Trade Mark as the Opponent’s brand because the ‘discussion shows that “7016” is used to refer to a general category of electrode rods’.[32]

    [30] Ibid [20].

    [31] Ibid Confidential Exhibits AH-3, AH-6, Exhibit AH-7.

    [32] Ibid [23].

14. The Hamilton Declaration responds to Hughes 1. Relevantly, Mr Hamilton observes that prior to selling ‘Hyperarc 16TC’ branded electrodes, the Opponent marketed an ‘E7016’ electrode under the brand ‘ESB-44’ with no reference to ‘16TC’. He also points out that other ‘traders use various names which do not incorporate the term “16TC” when retailing electrodes that fall within the E7016 classification’.[33] For example, traders such as ‘Lincoln’, ‘Weldclass’ and ‘BOC’ market specific types of ‘E7016’ electrodes under the name ‘Spezial’, ‘Platinum 16XT’ and ‘BOC Smootharc 16’, respectively.

    EIR

    [33] Ibid [31].

15. According to the Bainbridge Declaration, ‘16TC’ is ‘common industry slang’ used to describe ‘a twin coated E7016 electrode’.[34] Mr Bainbridge has ‘attained qualification as a pressure welder’ and has been connected with Allweld Services Pty Ltd (‘Allweld’) for 38 years. Allweld supplies welding electrodes and Mr Bainbridge interacts with customers who purchase welding electrodes. In his experience, Allweld’s ‘customers will use the term 16TC to describe a twin coated E7016 electrode when ordering’ and this could refer to any supplier given Allweld ‘supplies a number of different 16TC products from different manufacturers’.[35] Mr Bainbridge echoes Mr Hughes’ observation that customers generally ask for the type of electrode required prior to being informed of which brands are stocked.

    [34] Bainbridge Declaration, [7].

    [35] Ibid [8]–[9].

16. Hughes 2 disputes several statements made within the Hamilton Declaration. Relevantly, it points out that the invoices exhibited to the Hamilton Declaration are in fact purchase orders. Annexed to Hughes 2 is an actual invoice issued by the Applicant and Mr Hughes highlights that ‘“16TC” is the part number/product code and the product description is by reference to “AUSTARC 16TC ...”’ in this document.[36]

    [36] Ibid [6].

17. Hughes 2 criticises the EIA insofar as the exhibited declarations ‘are all from distributors of the Applicant's products’ and are ‘identical in their terms’.[37] In response, 22 declarations from distributors of the Opponent’s products are annexed to Hughes 2 which, in Mr Hughes’ view, demonstrate that ‘16TC’ is used to identify a type of electrode that is not associated with one specific manufacturer. Further examples of shorthand references, such as ‘GPs’ or ‘316L’, being used in relation to different electrodes are also provided and this material includes examples of ‘16TC’ being used in relation to ‘E7016’ electrodes.

    [37] Ibid [10].

18. Mr Hamilton’s interpretation of the Facebook post are also challenged. In Mr Hughes’ opinion, the comments reveal that ‘16TC’ is evidently being used to describe a type of electrode because ‘a number of different manufacturers or brands are referred to, including Austarc, Bossweld and Esab’.[38] Lastly, Hughes 2 clarifies that the Opponent was an Australian distributor of the electrode that was marketed under the brand ‘ESB-44’. Mr Hughes declares that the ‘ESB-44’ electrode was labelled by a manufacturer based in Türkiye according to their naming system. The Opponent did not use ‘16TC’ in relation to this electrode because, pursuant to the terms of the distribution agreement, it was required to use the manufacturer’s naming system for advertising and selling purposes.

    Discussion

    [38] Ibid [17].

    Section 41

19. Section 41 of the Act relevantly provides:

    Trade mark not distinguishing applicant's goods or services
    (1) 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 (the 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.
    (2) A trade mark is taken not to be capable of distinguishing the designated goods or services from the goods or services of other persons only if either subsection (3) or (4) applies to the trade mark.
    (3) This subsection applies to a trade mark if:

    (a) 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; and
    (b) the applicant has not used the trade mark before the filing date in respect of the application to such an extent that the trade mark does in fact distinguish the designated goods or services as being those of the applicant.

    (4) This subsection applies to a trade mark if:

    (a) the trade mark is, to some extent, but not sufficiently, inherently adapted to distinguish the designated goods or services from the goods or services of other persons; and
    (b) the trade mark does not and will not distinguish the designated goods or services as being those of the applicant having regard to the combined effect of the following:

    (i) the extent to which the trade mark is inherently adapted to distinguish the goods or services from the goods or services of other persons;

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

    (iii) any other circumstances.

    Note 1: Trade marks that are not inherently adapted to distinguish goods or services are mostly trade marks that consist wholly of a sign that is ordinarily used to indicate:

    (a) the kind, quality, quantity, intended purpose, value, geographical origin, or some other characteristic, of goods or services; or

    (b) the time of production of goods or of the rendering of services.

20. Determining the merits of the s 41 ground of opposition requires consideration to be given to the extent, if any, of a trade mark’s inherent adaptation to distinguish the goods. This is assessed:

    [B]y 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.[39]

    [39] Clark Equipment Co v Registrar of Trade Marks [1964] HCA 55, [5] (Kitto J) (emphasis added).

21. The majority of the High Court in Cantarella Bros Pty Limited v Modena Trading Pty Limited (‘Cantarella’)[40] explained that the test for distinctiveness under s 41 of the Act involves
    

    [40] [2014] HCA 48 (‘Cantarella’).

    [41] Ibid [71] (French CJ, Hayne, Crennan and Kiefel JJ).

    two steps. First, the ordinary signification of the trade mark in Australia to persons who will purchase, consume or trade in the goods must be discerned.[41] Second, once the ordinary signification is established, consideration should turn to whether other traders might legitimately desire to use the trade mark, or some mark nearly resembling it, for the sake of its ordinary signification in respect of the same or similar goods.

22. The Opponent’s position is that ‘16TC’ signifies a 7016 low hydrogen twin coated electrode. It submits that traders within the Australian welding industry ‘have frequently used abbreviations as a shorthand way of describing the physical characteristics of their products, in other words, to indicate different types of welding electrode’.[42] Specifically, ‘there is widespread use of the final two digits as an abbreviation of a standard classification’ and ‘letters are used to indicate other characteristics of the product, such as “TC” to indicate “twin coated”’.[43] To support this, reliance is placed on other manufacturers who adopt the same or similar alphanumeric combinations in respect of their own electrodes together with the declarations made by the Opponent’s distributors. As such, the Opponent contends that the Trade Mark lacks any inherent capacity to distinguish the Goods.

    [42] Opponent’s Submissions, [9].

    [43] Ibid [9]–[10].

23. Conversely, the Applicant asserts that the Trade Mark is prima facie inherently adapted to distinguish the Goods. Emphasis was placed on the AWS classification system (i.e., ‘EXXXX’) which, in the Applicant’s opinion, demonstrates ‘that the descriptive term for the particular electrodes is E7016’ and not ‘16TC’.[44] The Applicant rejects the contention that the Trade Mark was a commonly used term within the Australian welding industry at the Relevant Date. In its view, the evidence does not support this and the Opponent’s branding strategy is inconsistent with such a finding. The Applicant submits that the Trade Mark must ‘be considered as a whole in assessing its ordinary signification’ and characterises the Opponent’s position as being premised on an impermissible dissection of the Trade Mark.[45]

    Ordinary signification

    [44] Applicant’s Submissions, [43].

    [45] Ibid [77].

1. As a preliminary observation, the Trade Mark must be considered ‘as a total composition, rather than the individual constituent elements in isolation’ in assessing whether it is inherently adapted to distinguish the Goods.[46] As such, it is not appropriate to dissect the Trade Mark ‘to show that each of its component parts is not distinctive in itself and then, as the result of this process, to conclude that the mark as a whole is not distinctive’.[47] Nonetheless, I acknowledge that an enquiry into the ordinary signification of the Trade Mark, in this instance, requires an initial consideration of its constituent elements.

   [46] Fry Consulting Pty Ltd v Sports Warehouse Inc (No 2) [2012] FCA 81, [61] (Dodds-Streeton J).

   [47] Diamond T Motor Car Co’s Application (1921) 38 RPC 373, 380-381 (Lawrence J).

2. The parties agree that, at the Relevant Date, the AWS classification system had been adopted by the Australian welding industry.[48] Hence, it is common ground that a sign such as ‘E7016’ is non-distinctive because it conveys standardised information about the physical characteristics of an electrode. That is, the ‘E’ indicates it is an electrode, the ‘70’ describes its tensile strength, the ‘1’ indicates it can be used in all positions and the ‘6’ means it has a low hydrogen potassium coating compatible with both welding currents. Where the parties diverge is in relation to the impact of the AWS classification system in assessing the Trade Mark. In essence, the Opponent submits that the existence of this classification system aids in establishing the non-distinctive nature of the Trade Mark whereas the Applicant adopts the contrary position. For the reasons which follow, I am not satisfied that the ordinary signification of ‘16TC’, at the Relevant Date, was descriptive of the Goods.

   [48] Opponent’s Submissions, [8]; Applicant’s Submissions, [42].

3. It is apparent from the evidence filed that the AWS classification system was entrenched within the Australian welding industry at the Relevant Date. As such, persons in Australia concerned with the Goods would be cognisant that alphanumeric combinations typically communicate descriptive information. It is also likely they would understand that the position and value of each digit within such combinations as denoting a specific physical characteristic. To this end, the evidence led by both parties reveals that the ‘E’ is not consistently used when referring to an electrode type and its omission does not alter the significance of the remaining four digits of the AWS classification system.[49] Put differently, the evidence filed indicates that there is no material difference in the information conveyed by, for example, ‘E7016’ and ‘7016’.  

   [49] See, eg, Hughes 1, Annexure DH-3; Hamilton Declaration, Exhibit AH-1.

4. In my opinion, the evidence supports the Opponent’s assertion that the final two digits of the AWS classification system are used as an abbreviation of the standard classification. For example, the evidence reveals that ‘BOC’, ‘Cigweld’ and ‘Gemini’ promote their 6013 electrodes as ‘Smootharc 13’, ‘Satincraft 13’ and ‘Gemini 13’, respectively.[50] Likewise, the evidence shows that ‘BOC’, ‘Dynaweld’ and ‘Weldclass’ market their 7016 electrodes as ‘Smootharc 16’, ‘Bossweld TC16’ and ‘Platinum 16XT’, respectively.[51] This practice of abbreviating the four digits to two digits is, to an extent,[52] further supported by the comments made on social media posts which include statements such as ‘[g]et the odd one that runs more like an 18 than a 16’ and ‘what’s wrong with 12’s or 13’s’.[53] As such, it is more probable than not that ‘16’ simpliciter would signify a 7016 electrode to persons in Australia concerned with the Goods.

   [50] Hughes 1, Annexure DH-8.

   [51] See, eg, Hamilton Declaration, Exhibit AH-12; Hughes 1, Annexure DH-4.

   [52] Many of the comments extracted by the parties have not been expanded to show the full context of the communications made.

   [53] Hughes 1, Annexure DH-5.

5. Turning to the ‘TC’ element, the Opponent submits that it signifies that the Goods are ‘twin coated’. Reliance was primarily placed on four examples – namely, the Applicant’s use, Dynaweld’s use of ‘Bossweld TC16’, the Opponent’s use and use of ‘16TC’ by Cigweld Pty Ltd (‘Cigweld’) on conformance certificates. In my assessment, whether considered individually or collectively, these examples do not constitute persuasive evidence that ‘TC’ would be readily understood as an acronym for ‘twin coated’ (or ‘twin coat’) at the Relevant Date.

6. With respect to the Applicant’s use, an illustrative example from a Welding Industries of Australia product guide from 1973 is reproduced below:[54]

[54] Hamilton Declaration, Exhibit AH-4.

1. In my consideration, this example fails to demonstrate a connection between ‘TC’ and the purported meaning of ‘twin coated’. Whilst it is true that the information detailed beneath the ‘welding characteristics’ heading mentions a ‘simultaneous twin-coat extrusion’, this text does not appear in close proximity to the ‘TC’ element nor is there any indication, such as capitalising the first letters (i.e., ‘Twin-Coat’) or an overt statement, that a connection should be inferred.  

2. The same issue arises in relation to the Dynaweld example, which is dated 18 March 2019 and reproduced below:[55]

[55] Ibid Exhibit AH-11.

1. Taken at its highest, this example provides a circumstantial and tenuous connection which suggests that ‘TC’ may allude to electrodes being twin coated. However, there is nothing definitive in the disclosed image or the text to conclude that ‘TC’ would be objectively or reasonably perceived as being an acronym for ‘twin coated’ (or ‘twin coat’).

2. On the Opponent’s use, there are two aspects to address. First, reference was made to the Opponent’s earlier trade mark for ‘HyperArc 16TC’ which has a priority date of 28 May 2020 and is registered in respect of welding electrodes.[56] It was posited that this constitutes evidence of an intention to use ‘16TC’ for its descriptive significance before the Relevant Date. Whilst the application may demonstrate an intention to use ‘16TC’ as part of a larger trade mark, it does not speak to how ‘TC’ would be understood. In this regard, I note that the goods for which registration has been attained are not confined to twin coated welding electrodes. This registration is also difficult to reconcile with the Opponent’s earlier trade mark for ‘HyperArc’ which has a similar priority date of 10 March 2020 and is registered in respect of, inter alia, rods of metal for brazing and welding.[57] Indeed, as the Applicant opined, if ‘16TC’ is directly descriptive of welding rods, it is unclear why the Opponent applied for this trade mark given its pre-existing rights in ‘HyperArc’ simpliciter. Second, the Opponent relied on its example of use captured on 14 October 2022, namely:[58]

[56] Australian trade mark registration 2091214.

[57] Australian trade mark registration 2072842.

[58] Hughes 2, Annexure DH11.

1. The Opponent submitted that evidence after the Relevant Date is not precluded from consideration and drew attention to the following statement made in Community First Credit Union Limited v Bendigo and Adelaide Bank Limited:

   [E]vidence of how traders have behaved after the priority date is relevant to the question of assessing, at the priority date, the likelihood that other traders will behave in a certain way in the future and to assessing the probability that, as at that date, other traders would wish to use the mark. However, the weight to be given to such evidence will vary and may not be decisive of the ultimate question that is, whether as at the priority date it is likely that other traders would want, in the ordinary course of their businesses and without improper motive, to use the same or a similar mark in connection with their own services.[59]

   [59] [2019] FCA 1553, [20] (Markovic J).

2. For its part, the Applicant did not contest this. Instead, it stressed that the pivotal question is how much weight should be attributed to use occurring after the Relevant Date and reiterated that evidence before the Relevant Date remains particularly powerful. I accept that examples of use after the Relevant Date may be considered. To this end, there is some merit to the Opponent’s proposition that ‘TC’ would be understood as an acronym of ‘twin coated’ due to the deliberate capitalisation of ‘Twin Coated’ within the text displayed on the packaging. Be that as it may, the weight to be given to this evidence is diminished by the fact that it is a solitary example of use after the Relevant Date and it is by the Opponent and not a third party.

3. The Opponent also referred to six ‘conformance certificates’, dated 25 August 2022 (being after the Relevant Date), that were issued by Cigweld.[60] These documents are not particularly compelling given no direct evidence from Cigweld has been provided to support the Opponent’s claim that these do in fact refer to ‘twin coated’ electrodes.[61] In any event, while there is a reference to ‘16TC’, this is not conclusive of ‘TC’ denoting ‘twin coated’ because it simply appears in the ‘Product/Tradename’ section of the certificates as follows:

[60] Hughes 2, Annexure DH13.

[61] The parties have filed competing evidence on this point. See, eg, Hamilton Declaration, Exhibit AH-12 wherein evidence is led by the Applicant which suggests that Cigweld markets its 7016 electrodes under the sign ‘Ferrocraft 7016’.

1. Lastly, I have considered the various declarations made by the Australian distributors of each party. Leaving to one side the formulaic nature of the declarations made by the Applicant’s distributors and potential issues of partiality, it is apparent that none of the declarations are supported by any contemporaneous documents. Instead, each declaration contains various statements made without any objective evidence to corroborate same. For this reason, the declarations provided by each party do not meaningfully advance their respective positions.

2. Overall, the evidence before me is not sufficient to establish on the balance of probabilities that ‘TC’ signifies ‘twin coated’ to persons in Australia concerned with the Goods at the Relevant Date. The demonstrated use of ‘TC’ before the Relevant Date is slight, being essentially confined to the Applicant’s use and a single instance of use by Dynaweld. For the abovementioned reasons, I do not consider either example establishes that ‘TC’ would be understood in the directly descriptive sense advanced by the Opponent. Meanwhile, the evidence of use of ‘TC’ after the Relevant Date is equally sparse and it too fails to provide a cogent basis to conclude that ‘TC’ signifies ‘twin coated’. In this regard, the Opponent’s evidence suggests that other letter combinations are also used in relation to electrodes which are ‘twin coated’. For example, Weldclass advertise their ‘E7016 series stick welding electrodes’ in the following manner:[62]

[62] Hughes 1, Annexure DH-6.

1. In summary, the evidence filed establishes that ‘16’ within the Trade Mark is likely to be understood as denoting a 7016 electrode. However, the evidence falls short of demonstrating on the balance of probabilities that ‘TC’ would signify ‘twin coated’ to persons in Australia concerned with the Goods. When the Trade Mark is considered as a whole, the fusion of ‘16’ with ‘TC’ is not sufficient to render the combined term ‘16TC’ to be descriptive of the Goods. Rather, the opposite is true insofar as the combination of ‘16TC’ creates a distinctive sign which, as a whole, does not indicate the kind, quality, quantity, intended purpose, value, geographical origin or some other characteristic of the Goods. Therefore, I am satisfied that the Trade Mark is prima facie inherently adapted to distinguish the Goods.

2. As I have found that the Trade Mark does not have an ordinary signification relevant to persons in Australia concerned with the Goods, it stands to reason that other traders would not legitimately desire to use the Trade Mark in respect of the Goods or similar goods. Accordingly, it is not necessary to consider the second step detailed in Cantarella.

3. The s 41 ground of opposition has not been established.

   Decision

4. Section 55 of the Act relevantly provides:

   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.

5. The Opponent has not established the s 41 ground of opposition. As such, trade mark application number 2150544 may proceed to registration one month from the date of this decision. If the Registrar is 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

6. Both parties have sought an award of costs. Costs usually follow the event. Accordingly, I award costs against the Opponent per s 221 of the Act in the amounts set out in Schedule 8 of the Trade Marks Regulations 1995 (Cth).

   Nicholas Barbey
   Hearing Officer
   Delegate of the Registrar of Trade Marks
   29 September 2023

   
   

and Edelman JJ).