Ironman 4x4 Pty Ltd v Australian Performance Development Pty Ltd
[2013] ATMO 107
•23 December 2013
TRADE MARKS ACT 1995
DECISION OF A DELEGATE OF THE REGISTRAR OF TRADE MARKS WITH REASONS
Re:Opposition by Ironman 4x4 Pty Ltd to registration of trade mark application 1319651(12) - SAFARI SNORKEL & Snorkel Shape - filed in the name of Australian Performance Development Pty Ltd.
Delegate: | Jock McDonagh |
Representation: | Opponent: Stephen Rebikoff of counsel instructed by Davies Collison Cave, Patent and Trade Mark Attorneys Applicant: Julian Cooke of counsel instructed by Hodkinson McInnes Patents |
Decision: | 2013ATMO 107 Section 52 opposition to registration – ss 41 and 59 grounds pressed - neither ground of opposition established – application to proceed to registration |
Background
This matter is an opposition under section 52 of the Trade Marks Act 1995 (‘the Act’) to the registration of the trade mark filed by Australian Performance Development Pty Ltd (‘the Applicant’) details of which appear below:
Application No: 1319651
Priority Date: 9 September 2009
Goods:Class 12: Air rams and air intake snorkels for vehicles
Endorsements: Trade Mark Description: The trade mark consists of the combination of the words SAFARI SNORKEL and the three dimensional shape of an air ram of an air intake snorkel as shown in the representations attached to the application. Provisions of paragraph 44(3)(b) and/or Reg 4.15A(3)(b) applied.
Trade Mark: | (For convenience I will refer to the subject trade mark hereafter as ‘the Trade Mark’) |
The application was examined in compliance with section 31 of the Act and advertised as accepted for possible registration in the Australian Official Journal of Trade Marks on 16 December 2010.
Ironman 4x4 Pty Ltd (‘the Opponent’) filed Notice of Opposition (‘the Notice’) to the registration of the Trade Mark. The Notice is couched in broad terms and includes the grounds under sections 41, 42(b), 43, 58, 58A, 59, 60 and 62A of the Act. However, only the section 41 and section 59 grounds were relied upon by the Opponent at a hearing of the matter. For the sake of completeness I find that the grounds other than those relied upon by the Opponent at the hearing have been abandoned and note that any ground may be relied upon should my decision be appealed to the relevant Court where the matter will be considered de novo.
The Opponent bears the onus of establishing a ground of opposition on the balance of probabilities.[1]
[1] See Pfizer Products Inc v Karam [2006] FCA 1663; 237 ALR 787; (2006) 70 IPR 599; [2006] AIPC 92-146 per Gyles J at [6] to [26]; Chocolaterie Guylian N.V. v Registrar of Trade Marks [2009] FCA 891; (2009) 180 FCR 60; (2009) 258 ALR 545; (2009) 82 IPR 13; [2009] AIPC 92-355 per Sundberg J at [22] to [26]; and Fry Consulting Pty Ltd v Sports Warehouse Inc (No 2) (2012) 94 IPR 551 per Dodds-Streeton J at [13].
The date at which a ground of opposition must be established is the date of filing of the application for registration, 9 September 2009: see Southern Cross Refrigerating v Toowoomba Foundry Pty Ltd (1953) 91 CLR 592 at 595.
The hearing was before me as a delegate of the Registrar of Trade Marks in Canberra on 21 October 2013. Stephen Rebikoff of counsel instructed by Davies Collison Cave, Patent and Trade Mark Attorneys, represented the Opponent. The Applicant was represented by Julian Cooke of counsel instructed by Hodkinson McInnes Patents, Patent and Trade Mark Attorneys.
The following evidence was filed and served in accordance with relevant legislation:
| Declarant | Position | Date | Exhibits |
| Evidence in Support | |||
| Adam Craze (“Craze”) | Director 4x4 Products of the Opponent | 8.02.12 | AC-1 to AC-14 |
| Evidence in Answer | |||
| Sheryl Luxon (“Luxon”) | Managing Director of the Applicant | 9.11.12 | SL-1 to SL-14 |
| Evidence in Reply | |||
| Daniel Jackson (“Jackson”) | Engine Product Group Manager of Donaldson Australia Pty Ltd | 13.05.13 | Exhibit 1 |
| Michael Kirk Williams (“Williams”) | Managing Director of Airflow Vector Pty Ltd | 20.06.13 | Exhibit 1 |
The Opponent is essentially an importer, wholesaler and retailer of four-wheel drive vehicle (“4WD”) accessories. In Craze the declarant describes the nature and history of 4WD snorkels and air rams, compares them with the Applicant’s use of the Trade Mask on goods of the claimed shape in the Application and exhibits pictures of a range of air rams and exhibits a US patent for an offset air intake hood.
The evidence in answer, Luxon, details the history of the goods of the shape claimed bearing the words SAFARI SNORKEL, trade channels for the goods, sales figures, advertising figures, and some remarks in rebuttal of the evidence in support.
The evidence in reply comprises declarations by a vendor of air rams and snorkels and a manufacturer of such goods. They both declare in substantially identical terms that the Applicant’s air rams are indistinguishable from any others and do not indicate the trade source of the goods.
The Grounds of Opposition
Ground 1: Section 41- Trade mark not distinguishing applicant’s goods or services
The Intellectual Property Laws Amendment (Raising the Bar) Act 2012 came into effect on 15 April 2013. It repealed the then section 41 of the Act and substituted a new section 41. The Registrar’s position is that the new iteration of section 41 applies to trade mark applications filed on or after 15 April 2013 and that the repealed provisions continue to apply to trade mark applications filed before 15 April 2013. (See Clearlight Investments Pty Ltd v Sandvik Mining and Construction Oy [2013] ATMO 50.) Since the opposed application was filed before 15 April 2013, the now repealed s 41 continues to apply in this case and, insofar as relevant, it is reproduced below:
(1) For the purposes of this section, the use of a trade mark by a predecessor in title of an applicant for the registration of the trade mark is taken to be a use of the trade mark by the applicant.
Note 1: For applicant and predecessor in title see section 6.
Note 2: If a predecessor in title had authorised another person to use the trade mark, any authorised use of the trade mark by the other person is taken to be a use of the trade mark by the predecessor in title (see subsection 7(3) and section 8).
(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.
The parties agreed with the relevant principles to be applied in assessing the inherent adaptation to distinguish an applicant’s goods or services[2]. However, the parties disagreed on the characterization of the Trade mark.
[2] See Modena Trading Pty Ltd v Cantarella Bros Pty Ltd [2013] FCAFC 110, (2013) 102 IPR 382 at [58]-[89] (although the Full Court was discussing inherent adaptation to distinguish under “old” s41 here, it mistakenly reproduced “new” s41 at [57], immediately prior to its discussion) , Kenman Kandy (Aust) Pty Ltd Registrar of Trade Marks (2002) 122 FCR 494; 56 IPR 452 at [84], [146]; and Clark Equipment Company v Registrar of Trade Marks (1964) 111 CLR 511.
The Opponent characterized the trade mark as the shape of an air ram for an air intake snorkel. The Opponent argued that the words of the trade mark are wholly overwhelmed by the shape of the air ram itself, and are merely a “colourable flourish”[3].
[3] Per Romer J in Clement et Cie’s Trade Mark [1900] Ch 256 at 259.
In particular, the Opponent pointed to the reluctance of relevant courts to allow registration as trade marks of engineering designs and purely functional shapes and design elements[4].
[4] For example Philmac Pty Ltd v Registrar of Trade Marks (2002) 126 FCR 525 at [54], Global Brand MarketingInc v YD Pty Ltd (2008) 76 IPR 161 at [54]; Mayne Industries Pty Ltd v Advanced Engineering Group Pty Ltd (2008) 75 IPR 166 at [67]
The Applicant accepted the principle that a shape that is purely functional is not capable of distinguishing goods as a trade mark. However, the Applicant submitted that the shape element of its composite trade mark did not fit into that category.
The Applicant argued that for a shape not to be considered functional, it must have a feature that is extra and distinct from the inherent form of the particular goods[5]. For the Applicant, Mr Cooke referred to various exhibits displaying the varied and disparate shapes of air rams, and the significant design freedom in the shape of them. In Luxon Exhibit SL-7, in particular, the difference in design was palpable.
[5] Citing Mayne Industries Pty Ltd v Advanced Engineering Group Pty Ltd, supra, at [55].
It is apparent from the evidence that an air ram is but one component of a 4WD snorkel system. I consider that a potential customer for air rams and air intake snorkels would be inspecting such goods from a short distance. Whether the goods were on a display shelf in a 4WD accessory outlet or attached to a 4WD vehicle, the potential customer is likely to see both the word and device element that is prominently displayed on the air ram and the design features of the goods. I note that each declarant for the Opponent specifically referred to the existence of the word and shape elements of the Trade Mark and, Jackson at [5] confirms that “purchasers of air rams rely on logos, get up and word marks to indicate the trade origin of such goods and view the shape as performing functional significance only.”
Notwithstanding Jackson’s reservations about the shape element of the Trade Mark, his comments confirm for me that the composite Trade Mark as a whole is inherently capable of distinguishing the Applicant’s goods. I have also taken into account the inherent distinctiveness of the word “safari” in relation to the designated goods and the fact that the Applicant has already registered the word alone for “Snorkels in this class; vehicle parts and accessories in this class, including engines for automobiles and 4x4 vehicle intake snorkels; but excluding automobiles and tyres” in Class 12. Therefore, I am not satisfied that the Opponent has established this ground of opposition.
Ground 2: Section 59 – Applicant not intending to use
Section 59(a) of the Act provides that an application for registration of a trade mark may be opposed on the ground that the Applicant does not intend to use, or authorise the use, of the trade mark in Australian relation to the goods specified in the application.
The Opponent submits that as at 9 September 2009, the Applicant did not intend to use the Trade Mark as a trade mark because its shape elements are simply descriptive or illustrative of the Applicant’s products, and its word elements were added as a “colourable flourish” to try to register the Trade Mark as a distinctive mark and do not create (and were never intended to create) any composite impression as an indicator of origin.
Mr Rebikoff cited Beecham Group plc v Colgate Palmolive Co[6], at 173, as authority for the proposition that if a trade mark is filed simply for the purpose of gaining some advantage over competitors (for example, by seeking to monopolise a market), without an intention to use it as a badge of origin, then there will not be the requisite intention to use the trade mark for the purposes of section 59.
[6] (2001) 58 IPR 161
For the Applicant, Mr Cooke submitted that the act of filing the application to register the Trade Mark was prima facie evidence of an intention to use it[7] at the date of filing, and furthermore submitted that it had provided evidence demonstrating trade mark use from 2008 and continuing.
[7] Aston v Harlee Manufacturing Co (1960) 103 CLR 391
Mr Cooke noted that the Full Federal Court observed in Food Channel Network Pty Ltd v Television Food Network GP[8] that evidence as to non-use (or use) after the date of the application may also be relevant in drawing inferences as to the issue of intention at the date of the application.
[8] [2010] FCAFC 58; 86 IPR 437, at [74]
I am satisfied that the prima facie presumption of intention to use indicated by the application to register the Trade Mark is supported by the evidence in Luxon of actual use of the Trade mark to distinguish the designated goods both before and after the filing of the opposed application.
The Opponent having failed to upset this presumption, it has accordingly not established this ground of opposition under section 59.
Decision
Section 55(1) of the Act provides:
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.
I have found the opposition to be unsuccessful on the grounds pressed pursuant to sections 41 and 59 of the Act.
I direct that the trade mark application may 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.
Costs
In the event that the Applicant prevailed, Mr Cooke sought an award of costs. As the successful party, the Applicant is entitled to its costs and I accordingly award costs against the Opponent in accordance with Schedule 8 of the Trade Marks Regulations 1995.
Jock McDonagh
Hearing Officer
Trade Marks Hearings
23 December 2013
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