Interlock Industries Limited v Eastern Suburbs Timber Pty Ltd

[1999] ATMO 86

TRADE MARKS ACT 1995

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

Re:Opposition by INTERLOCK INDUSTRIES LIMITED to the registration of trade mark application number 708445 in the name of EASTERN SUBURBS TIMBER PTY LTD for the word trade mark Interlock Joinery in Class 20.

Background
Application number 708445 was filed on 14 May 1996, in the name of Eastern Suburbs Timber Pty Ltd (the applicant).  The application was for the registration of the word trade mark Interlock Joinery and, following amendment, covered the statements of goods, "Ceilings" in Class 19 and " Furniture, screens, and partitions of wood for furniture " in Class 20.  Subsequent to examination, the application for the trade mark was accepted and advertised as such in the Australian Official Journal of Trade Marks of 27 March 1997.  Then, post acceptance, the reference to "ceilings" in Class 19 was deleted from the application at the request of the applicant.  Following the grant of an extension of time to do so, a notice of opposition to the trade mark’s registration was filed on 26 September 1997, by Interlock Industries Limited (the opponent).

The notice of opposition listed a number of grounds.  However, the only matters which were relied upon by the opponent's attorney at the hearing were the allegations: under s.58; that the applicant is not the owner of the opposed trade mark; under s.44, that the subject trade mark is deceptively similar to a prior registered trade mark owned by the opponent, in respect of similar goods or closely related services; and under s.60, that the use of the trade mark would be likely to lead to deception and confusion because it is deceptively similar to the opponent's trade marks which had acquired a reputation in Australia before the priority date for registration of the present mark.

Accordingly, those grounds are the subject of this decision and the reasons for it.

The opponent requested a hearing in the matter and it came before me, as a delegate of the Registrar, in Sydney on 8 March 1999.  The opponent was represented by Ms Carmen Champion of Spruson & Ferguson.  The applicant's attorneys, Wilson & Young, had advised by letter on 1 March 1999 that they would not be appearing at the hearing but would rely instead on written submissions.  These submissions, made by Mr Garry Wilson, were sent to the Registrar on 4 March 1999.

The Evidence
The evidence in support comprised a declaration, dated 26 June 1998, by D'arcy Quinn, executive director of Interlock Group Limited, a corporation into which the present opponent has been merged.  In his declaration, Mr Quinn related the history of the opponent's use of the mark INTERLOCK on a growing range of goods in New Zealand, and later in Australia and other countries.  He further gave details of Australian sales of goods under the mark, and also the estimated advertising and promotional expenditure in relation to the word INTERLOCK.  He also included information on Australian registrations of the word, as a trade mark, for a variety of classes.  He also declared as to what he said were instances of confusion between the applicant's trade mark and his own company's mark, at trade shows and the like.  He discussed the opponent's reputation, in relation to the mark, which he said extended throughout the building trade.  Attached to his declaration was a catalogue of the opponent's products, a market report relating to the sale of the opponent's goods, publications and brochures relating the opponent's use of its mark, and a computer printout of sales figures.

The applicant did not serve any evidence in answer which was in accordance with regulation 21.17(1).  That regulation requires evidence to be in declaratory form.  The applicant did send some submissions, together with attached brochures and the like, under cover of a letter signed by Mrs Raymond, a Director of the company, dated 10 September 1998, which was before it engaged professional representation.  A Senior Examiner from the Trade Marks Hearings Section advised Mrs Raymond by letter, on 22 September 1998, that this material did not constitute properly served evidence as it did not presently comply with the regulations.  He advised that, if the applicant did not choose to serve evidence, then the letter would be treated as a supporting written submission.  He also said that the applicant had until 26 October 1998 to put the matter in order.  The eligibility of this material, and the weight which I should afford it, was addressed by both parties in their submissions at the hearing.

The allowability of the applicant's "evidence"
Ms Champion referred to the material sent by the applicant on 10 September 1998, which was said to be in reply to the opponent's evidence in support, saying that it basically comprised what were denials of the claims made in the Quinn declaration and was not proper evidence.  She said that, in any case, the regulations required that any evidence before the Registrar should be in declaratory form and, although the ordinary rules of evidence did not apply to hearings before the Registrar, there were conventions and limits as to what a party could properly rely on in proceedings.  In making this point she relied, inter alia, on such precedent cases as: Strata Welding v Charles & Reid (1987) 9 IPR at 541-2, Jafferjee v Scarlett (1937) 57 CLR 115 at 120-1, Untell Pty Ltd v Manenti Holdings Pty Ltd (1992) 23 IPR 641, and also Australian Law of Trade Marks and Passing Off (Second Edition) by D.R.Shanahan at p.81.  She said that, even if I did admit the letter in question into evidence, I should exercise the Registrar's discretion, "…upon judicial prejudices and affected neither by caprice nor overcaution" - Standard Woven Fabric Co's Application (1918) 35 RPC 53 at 57-8. She said that the public interest was properly safeguarded by having evidence presented in the form of declarations, "…where the person giving evidence understands and appreciates the seriousness of the proceedings and the importance of telling the truth".

In his written submissions, on behalf of the applicant, Mr Wilson said that at the time that the evidence should have been served, the applicant had been unrepresented.  He said that that party therefore did not understand what was required in the nature of properly constituted evidence and that it had also been unclear as to the time frames involved in the service of the evidence in answer.  He alleged that, because of unclear or incorrect written and telephone advice from the Trade Marks Office, the applicant had been confused as to the actual date of service of the evidence in support.

I have reviewed the Official file and particularly the letter sent to the applicant from the Trade Marks Hearings Section on 22 September 1998.  The opponent had sought and been granted, an extension of time until 26 July 1998 within which to serve its evidence in support.  It had then sent a letter to the Office, dated 16 July 1998, stating that it had served the evidence on the applicant on 29 June 1998 and attached an Australia Post Advice Receipt showing that a registered article had been signed for on that date.  An Official letter was sent to the applicant on 31 July 1998 seeking confirmation of the receipt of the evidence in support.  The Office received no reply.  Given these circumstances, it is normal Office practice that, when no advice at all is received from an alleged addressee regarding the date of service of evidence, said to be within the statutory period, then two assumptions are made: (1) the evidence has been served and (2) the date of service is taken to be the last possible date already allowed - here 26 July 1998.  Therefore, the due date of 26 October 1998 for service of the evidence in answer, as nominated in the Office letter sent to the applicant on 22 September 1998, was correct, as it was three months after the designated date on which service of the evidence in support was due.  This letter had been in answer to the applicant's letter of 10 September 1998, on which it had been seeking to rely on in answer to the opponent's evidence in support, and effectively gave the applicant over a month to rectify the matter.  I cannot understand the reason for Mr Wilson's confusion regarding the correct date of service of the evidence in support - the date from which the timetable for the service of evidence in answer is usually set.  The opponent provided an Australia Post Advice Receipt for the evidence, dated 29 June 1998, but because the applicant did not itself advise a date of receipt, it gained over a month on that date, until the 26 July 1998, from which its own evidence timetable was due.  The declaration by Mr Quinn, which comprised the evidence in support, was signed by him on 26 June 1998 - not 26 July 1998 as claimed by Mr Wilson - three days before the claimed date of service of that evidence of 29 June 1998.

Mr Wilson has alleged that the Office letter of 22 September 1998 was incorrect or vague in its explanation of the situation.  However, having read that letter, I am of the opinion that it would have been difficult to give a more accurate description of what the applicant needed to do to put the matter right.  The letter gave a clear step-by-step explanation of what was required by the regulations and the dates by which they were due.  It also said that, if the applicant did not serve any evidence, then the applicant's letter would be treated as a supporting written submission because the material did not constitute properly served and filed evidence.  In this, the letter could perhaps be open to its only criticism in that it could have stated that only the text could be treated as an unsupported submission, and that any claimed facts or attachments included would be given little or no weight, because they were unsworn.  However, I think that this should have been inferred by the receiver, given the letter went on to say that, "(it) is important to realise, however, that this material does not constitute properly served and filed evidence at this stage".  This, to my mind, was a clear and unequivocal warning that the applicant's interests were in peril.  Mr Wilson has also claimed that both the applicant and himself had not been able to get clarification of due dates in telephone calls to the Office.  However, I have nothing before me to support this contention and I think that this, on balance, is unlikely given the very helpful and accurate nature of the written correspondence on file.

I therefore think that it is the case here that the applicant was given sufficient information to alert it to a serious deficiency which needed to be rectified, in order to answer the opponent's evidence.  The Registrar must be seen to be fair to both sides in such disputes and could well be open to charges of bias if anything more was done than was here in pointing out errors in one party's case.  The applicant was clearly told in the Official letter of 22 September 1998 that it had three months from 26 July 1998 to get its evidence in order - over a month's notice before that time expired.  It could have refiled the material in declaratory form, or sought legal advice to professionally prepare its evidence.  That it did not do so is unfortunate.  I have also taken the public interest into account in deciding the allowability of the applicant's letter as evidence, including that all of the relevant material should be before the Registrar for consideration.  However, against this, I must take into account that rights of the opponent who has pursued its case within the statutory guidelines and has expected the same of the other party.  The applicant was alerted to deficiencies in the material it was relying upon, over a month before the date it was finally due.  I am therefore satisfied that, in this case, both sides have had equal opportunity and the time to produce material relevant to the proceedings, in accordance with the regulations, without either being unduly disadvantaged.  Thus, natural justice principles have been observed.

Given all of the above, I find that the applicant's letter may only be treated as a submission in rebuttal of the opponent's evidence.  Further, as it is not in the form of a declaration, as required by regulation 21.17(1), any unsupported assertions or attachments included in that letter cannot be given any weight in the matter.

Submissions on the substantive matter
With respect to the ground that the applicant is not the owner of the opposed trade mark, Ms Champion referred to the concept of authorship of trade marks as defined in such cases as Aston v Harlee Manufacturing Co (1960) 103 CLR 391, Blackadder v Good Roads Machinery Co Inc (1926) 38 CLR 332 and Yanx case - Amalgamated Tobacco Corporation Limited (1951) 82 CLR 199. She submitted that the word JOINERY, in the present trade mark, was descriptive of a characteristic of the goods and did not detract from the impact of the word INTERLOCK. Therefore, she said, the present mark INTERLOCK JOINERY and the opponent's mark INTERLOCK were substantially identical, thereby raising the issue of proprietorship - Carnival Cruise Lines Inc v Sitmar Cruises Ltd (1994) 31 IPR 375. She pointed to examples of the opponent's use of the word INTERLOCK, together with descriptive words, in the evidence in support to sustain this argument. This use, she submitted, was well before that of the present trade mark's date of application in respect of particular goods which were "the same kind of thing" as those sold by the opponent - Hicks’ case (1897) 22 VLR 636 at 640. Therefore, she said, the opponent was the owner of the mark INTERLOCK in Australia.

In relation to the ground that the present trade mark was substantially identical or deceptively similar to a registered mark, owned by the opponent for similar goods or closely related services, Ms Champion referred to the well known tests contained in Shell Co of Australia v Esso Standard Oil (Australia) Ltd, (1961) 109 CLR 407. She said that the opponent's relevant registration was number 707777 for the word INTERLOCK in Classes 6, 20 and 42 for the respective statements of goods/services:

Door and window hardware including parts and fittings thereof, all these goods being made wholly or principally of metal; locks, latches and keys therefor; windows including louvre windows and parts and fittings therefor; remote winding gear for control of windows; window operators; security stays, security locks and security handles; skylight operators and parts and fittings therefor, in Class 6

Door and window hardware including parts and fittings thereof, all of these goods being made wholly or principally of plastics material, in Class 20

Consulting, advisory, analysis, information, industrial design and engineering services; technological and technical research services, all the foregoing relating to building hardware, windows, doors, fittings therefor and security products, in Class 42

She maintained that, in the present mark, the word JOINERY did not detract from the impact of the word INTERLOCK.  Therefore, she said, the marks in dispute were substantially identical or, at least, deceptively similar, and that purchasers would be confused between the two, thinking they were variations of the same mark - Sundream Pty Ltd v Hartland Investments Pty Ltd 13 IPR 302. She said that, because of people's imperfect recollection of the marks, they would be confused - Sym Choon & Co v Gordon Choon Nuts Ltd (1949) 80 CLR 65.

Ms Champion said that the tests in Jellinek's Appn (1946) 63 RPC 59 showed that the opponent's goods in Classes 6 and 20 were similar to the present application's goods, as were the opponent's Class 42 services closely related to them, and she went into some detail on each of these points, emphasising the general nexus of goods and services in the building trade.

On the last leg of the opposition, that deception and confusion would ensue from the use of the present mark because it is deceptively similar to the opponent's trade marks which had a prior reputation in Australia, Ms Champion said that the opponent had discharged its initial onus of establishing its necessary reputation by showing the extent of it in its evidence.  She alleged that the applicant had not discharged its own onus of showing that there was no reasonable probability of deception and confusion, amongst a substantial number of people, if it was used in a normal and fair manner in relation to its goods and services, and she pointed to what she said were instances of such confusion reported in the evidence.

In his written submissions in answer to the opposition, Mr Wilson said that the examiner in the case had, quite rightly, not raised any objections to the present trade mark's registration based on any prior applications or registrations, despite the opponent's registration for its INTERLOCK mark, which had been filed only a few days earlier.  He reiterated that the applicant had handled both the filing of its mark and the opposition to it without professional assistance.  The applicant had then sought his firm's advice "late in 1998" when confused as to its rights.  He said that, for various reasons, mainly of a financial nature, he had advised the applicant not to seek a belated extension of time to file evidence in answer to rectify the deficiencies in its supposed evidence.

He said that his fundamental argument was that the opposition was not soundly based, as the present goods were of an entirely different description from those of the opponent and that therefore no confusion could possibly ever occur.  He referred to the applicant's submissions, made in its letter of 10 September 1998, where it had said that it was unaware of any instances of confusion - despite the reference in the Quinn declaration to a single alleged instance.  He said that, in its letter, the applicant had corrected most of the "mistakes" made in Mr Quinn's declaration.  He said further that it was apparent, from the opponent's evidence, that it sold products and provided services which were wholly consistent with those for which its INTERLOCK mark was registered.  These, he said, could be categorised as "door and window furniture", which were essentially of metal or plastic, and which had nothing to do with the applicant's wooden lattice-type furniture.

Mr Wilson said that the opponent had not provided any cogent evidence of its reputation in relation to any goods or services which were identical with, or similar to the applicant's goods of interest, or that there would be any real confusion in the market place between the marks at issue.  He elaborated on the differences between the two present sets of goods and pointed to a number of examples of goods which were found by the courts not to be of the same description, and which were listed at p.194 of Shanahan's book, supra.  He said that this was particularly so in the cases where fittings for items were found to be different from the items to which they may be attached - especially if they were produced independently and had separate markets.  He said that, here, the opponent's goods would not necessarily lend themselves to being affixed to the applicant's wooden lattice goods.

Mr Wilson asked that I additionally look at the submissions, made by the applicant's Mrs Raymond in her letter of 10 September 1998, in relation to the matter.  As I have already said, I will consider any submissions made in that letter but not any unsupported assertions or attachments.  Mrs Raymond did make statements about the widespread use of the word INTERLOCK in the market and the lack of confusion at an exhibition.  However, these are no more than unsupported assertions, to which I cannot attach any weight.  Aside from that, there does not appear to be anything in that letter to add to Mr Wilson's written submissions.

Mr Wilson closed his submissions by seeking costs in favour of the applicant in the matter.

Analysis
In considering my decision in the opposition matter, I will deal with each ground in turn which Ms Champion relied upon in the making of her submissions.

Section 58
This section reads:

Applicant not owner of trade mark

58.  The registration of a trade mark may be opposed on the ground that the applicant is not the owner of the trade mark.

The term "owner" in the Trade Marks Act 1995 equates to that of "proprietor", as referred to in the Trade Marks Act 1955 - see p.2 of the Readers Guide to the 1995 Act.  The initial onus, with respect to ownership, is on the applicant for registration.  As stated in s.27 of the Act:

27.(1) A person may apply for the registration of a trade mark in respect of goods and/or services if:

(a)the person claims to be the owner of the trade mark; and

(b)one of the following applies:

(i)the person is using or intends to use the trade mark in relation to the goods and/or services;

(ii)the person has authorised or intends to authorise another person to use the trade mark in relation to the goods and/or services;

(iii)the person intends to assign the trade mark to a body corporate that is about to be constituted with a view to the use by the body corporate of the trade mark in relation to the goods and/or services.

Ownership depends on a combination of authorship and first use and, as per Shell Co. (Aust.) Ltd v Rohm and Haas Co. (1949) 78 CLR 601, may be claimed either on the basis of use of the trade mark, in relation to the nominated goods or services, or on the basis of the making of an application for registration. However, as Ms Champion submitted, that ownership is limited to "the same kind of thing" - as per Holroyd J in Hicks' case, supra.  Any small amount of use will suffice, but the effect of the act relied on to constitute use must be the creation, in the minds of those concerned, of an impression that services of a particular trader are being offered for sale, in Australia, under the trade mark.

A claim of ownership of a mark will only succeed in displacing a trade mark application, however, where the opponent can show that the trade mark it relies upon is substantially identical with the mark, the subject of the application for registration.  In Carnival Cruise Lines Inc v Sitmar Cruises Ltd. (1994) AIPC 91- 049 at 38,114, when referring to the concept of proprietorship in the Trade Marks Act 1955, and to Shell Co. (Aust.) Ltd v Rohm and Haas, supra, Gummow J. said:

[Shell v Rohm and Haas] does not supply any general authority for the proposition that in the case of disputed claims to proprietorship under the present statute anything less than substantial identity between the two marks will suffice. The phrase "substantially identical"  was discussed by Windeyer J. in The Shell  Company of Australia Limited v Esso Standard Oil (Australia) Limited (1961-1963) 109 CLR 407 at 414. It requires a total impression of similarity to emerge from a comparison between the two marks.

The opponent, from the evidence, started using the word INTERLOCK in Australia on friction stays in window sashes and frames.  This use grew, and by the mid-1980s, it was using the mark on a wide range of metal and plastic door and window hardware.  The applicant, on its part, has not served any evidence of having used the mark INTERLOCK JOINERY before the filing date of the present application - 14 May 1996.  The word JOINERY, in the latter mark, is defined in the Oxford English Dictionary as, inter alia, "The art or occupation of a joiner; the construction of wooden furniture, fittings etc".  That word, then, appears to have a direct reference to the goods included in the schedule covered by the registration.  Accordingly, I believe it is analogous to a situation where the applicant's mark included, instead, the words (INTERLOCK) LATTICE, or SCREENS.  I think that I can therefore discount the word JOINERY, in comparing the marks.  Given this, I think it is the case that the marks in suit here are, for the purposes of s.58, substantially identical.

However, for the opponent to succeed under this ground of opposition, it is not enough for me to have found that the marks are virtually the same.  I must also decide that the goods or services sold under the opposing marks are "the same kind of thing" as per Hicks' case, supra.  The opponent's goods seem to be, from the evidence, window and door hardware and related security items made of metal or plastic, and its services directly related to those items.  On the other hand, the goods of the opposed application are furniture, screens and partitions for furniture, all made of wooden lattice.  Both parties' goods and services are used in relation to the construction or furnishing of houses and other buildings, but I think that their composition and uses are sufficiently unalike so as to mean that they can be readily differentiated.

I therefore find, given such a situation, that the opponent fails on the s.58 ground of its opposition.

Section 44 - identical etc. trade marks

44.(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.

The opponent has relied, in its opposition under this ground, upon its prior registration number 707777, for the trade mark INTERLOCK in Classes 6, 20 and 42.  I have already found, in relation to the ground under s.58, that the applicant's trade mark INTERLOCK JOINERY and the opponent's mark INTERLOCK are substantially identical.  The only question here then is whether the goods of the applied for trade mark are similar goods, or closely related services, as countenanced in the legislation.  Sub-section 14(1) defines similar goods as those being either the same or of the same description as each other, but is silent on what constitutes closely related services.  I will therefore apply a normal, sensible meaning to the latter term.  As submitted by Ms Champion, the tests for determining such matters may be found in the Jellinek case, supra.  In that judgment, Romer J outlined the considerations: whether the respective goods (or services) are of the same nature; whether they are used by the same people for the same purposes; and whether the trade channels are the same.  Additionally, these criteria should be judged in the light of the notional use of both parties' marks on all of the goods and services contained in their specifications - see Smith Hayden & Co Ltd's Appn (1946) 63 RPC 97. However, no one of these tests in itself is conclusive and the assessment, as per Lord Justice Evershed's directives in re J. Lyons and Coy Ltd's Application [1959] RPC 120 - as approved by Burchett J. and Evershed M.R. in Polo Textiles Industries Pty. Ltd. and Anor v Domestic Textiles Corporation Pty Ltd 26 IPR 246 - must be on the basis of business realities and common sense.

In the present case, the applicant's goods comprise furniture, screens, and partitions of wood for furniture.  Despite pictures of these goods in use, provided by the opponent in its evidence, showing them to be items comprising, or including wooden lattice, the notional use of such descriptions as "furniture" means that the potential for inferring some nexus between the both parties' goods and services as being, "similar goods" or "closely related services" is greater.  The opponent's goods are, notionally, window and door hardware and related security items, made wholly or principally of metal or plastic, and its services comprise consulting, advisory and design services, and the like, related to those goods.

Using the Jellinek tests, I firstly cannot agree that the goods are of the same nature.  Even given, as conceded by the applicant's attorney, that the opponent's goods could be loosely termed "window and door furniture", the evidence shows that they cannot be regarded as "furniture", in the usual sense.  They are made principally of metal and plastic, and are generally parts of windows and doors - not the complete article.  In contrast, the evidence also shows that the applicant's goods are made of wooden lattice which is used to form doors, room dividers, or such furniture as low tables or coat racks.  I think that it would be stretching any interpretation to say that the respective sets of goods are the same, simply because they both can be incorporated in doorways.  I do concede that both sets of goods could be used by builders.  However, the opponent's customers would appear to be those concerned in initial construction of buildings, while the applicant's main clientele would appear to be involved in the latter stages of room decoration or refurbishment.  Lastly, I do not believe that the channels of sale of the respective goods or services would be the same, as they would be obtained from different suppliers.  It is, in my opinion, highly unlikely that someone selling wooden lattice to be used as wall dividers, would also be in the business of selling plastic and metal parts for doors and windows.

I accordingly find that the opposition is not successful on this ground.

Section 60 - Trade mark similar to trade mark that has acquired a reputation in Australia
This section reads:

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

(a)  it is substantially identical with, or deceptively similar to, a trade mark that, before the priority date for the registration of the first-mentioned trade mark in respect of those goods or services, had 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.

I have already found that the mark covered by the present application is substantially identical to the opponent's trade mark.  This is certainly sufficient for the purposes of s.60.  It now remains to be determined whether the opponent's reputation in its trade marks was sufficient, as at the relevant date, so that deception or confusion would be caused if the present trade mark was used on the goods included in the present specification.  In assessing that reputation, the relevant date to be considered is that of the filing of the opposed application - Southern Cross Refrigerating Co v Toowoomba Foundry Pty Ltd (1954) 91 CLR 592 - here 14 May 1996. A mere possibility of confusion is not enough. There must be a real, tangible danger of its occurring. It is accepted law that the risk of deception and confusion must extend to a substantial number of people likely to be concerned in the purchasing of the particular goods or services - Kendall Co v Mulsyn Paint and Chemicals (1963) 109 CLR 300.

The opponent's undisputed evidence shows that its goods were sold from 1969 in this country.  Initially, Australian sales comprised friction stays for windows.  These sales were initially made by an agent and through distributors but, since 1996, the opponent has established a presence in its own right in this country.  The evidence further shows that its range of goods expanded through the 1980s to include a variety of door and window hardware.  These goods appear to be, from exhibits to Mr Quinn's declaration, principally constructed of metal and plastic - although there are shown, in brochures seemingly intended for the New Zealand domestic market, INTERLOCK adjustable louvres with timber blades, and "TIMBAFOLD ™ (?) bi-folding doorgear and hardware purpose-designed for timber joinery".  There is nothing that I can find included in these exhibits which indicates Australian distribution of these goods.  Mr Quinn does claim in his declaration that the opponent's mark is well known in the "…(Australian) timber joinery markets" but I can find nothing else in the evidence which goes to support this claim.  Whether this claimed reputation was strong enough, as at the date of the present application, to extend to significant number of those involved in the timber building trade, as contemplated in Kendall Co v Mulsyn Paint and Chemicals, supra, is a moot point.  However, it has not been disputed by any proper evidence from the applicant - merely assertions of a lack of confusion.  In any case, it would appear that the opponent has enjoyed a reasonable reputation in the broader building industry in Australia for its INTERLOCK marks for some time.  The opponent appears to have used its mark in immediate proximity to the names of various of its products, eg. INTERLOCK FRICTION STAYS, INTERLOCK LOUVRES, INTERLOCK SAFETY LOCKS and INTERLOCK WINDOW FASTENERS - albeit all shown with an "interlocking" device or logo in close proximity.  However, it does not appear to have ventured into the construction of lattice products - the specific goods of interest of the applicant.  Nevertheless, given the other Class 20 goods sold under the opponent's INTERLOCK word (and device) mark - which could be described as door or window "furniture" or "hardware" - it would not be beyond the realm of probability for a customer, on seeing the applicant's mark on furniture, becoming deceived or confused with respect to its origin.

I therefore find that, while the application covers the present statement of goods, the opponent is successful on this ground of its opposition.

Conclusion
Given the foregoing, I find that the opponent has not been successful on the s.58 and s.44 grounds.  However, I have found that the opponent has, to some extent, prevailed in relation to the s.60 ground, that use of the mark on some goods described in the specification would be likely to lead to deception and confusion.

Notwithstanding this, the Registrar does have a discretion in such matters, as provided for in s.55.  Given this and taking into account the circumstances previously outlined, I think that, if the present statement of goods was restricted to "screens and partitions comprising wooden lattice" in Class 20, then the possibility of deception and confusion could be obviated.  In consequence, I allow the applicant 21 days from the date of this decision to request amendment to the statement of goods to that outlined above.

If it complies with this condition, I find, subject to any appeal from this decision, that the application should proceed to registration, for the amended statement of goods.  In the event that it does not agree to do so before the expiration of that time, I will issue a final decision refusing the application.

Costs
I think that the opponent has been successful in establishing its case.  It is therefore entitled to its costs and I accordingly order that these be paid by the applicant.  On application, these costs will be taxed, certified and allowed by a trade marks officer appointed by the Registrar for that purpose.

Ian Forno
Hearing Officer

25 August 1999