=?Iso-8859-1?Q?Grayson=92s_Internat?=ional Pty Ltd v Top Idea Pty Ltd

[2023] ATMO 113

TRADE MARKS ACT 1995

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

Re:Opposition by Grayson’s International Pty Ltd to registration of trade mark application number 2131507 (class 6) – CORRO SADDLE - in the name of Top Intellectual Property Pty Ltd

Delegate:

Nicole Worth

Representation:

Opponent: self-represented

Applicant: Madeleen Russeau, Meyer West IP

Decision:

2023 ATMO 113

Trade Marks Act 1995 (Cth) – opposition under section 52 – trade mark not inherently adapted to distinguish – evidence of use insufficient to satisfy provisions of s 41 – registration refused.

Background

1. This is a decision in respect of an opposition by Grayson’s International Pty Ltd (‘Opponent’) under s 52 of the Trade Marks Act 1995 (‘Act’) to registration of the trade mark detailed below, filed in the name of Top Intellectual Property Pty Ltd (‘Applicant’).

   Trade Mark:  CORRO SADDLE   (‘Trade Mark’)

   Filing date:  10 November 2020

   Goods:Class 6: Metal mesh for gutters; Metal mesh for preventing debris from entering gutters; Gutter supports of metal; Protective metal guard mountings for surfaces.

2. The application was examined as required by s 31 of the Act and accepted for possible registration. Its acceptance was advertised in the Australian Official Journal of Trade Marks on 11 April 2021.

3. The Opponent filed a Notice of Intention to Oppose the registration on 10 June 2021 and a Statement of Grounds and Particulars (‘SGP’) on 7 July 2021. Thereafter the parties filed evidence in due course, discussed later in this decision, followed by requests to be heard by the Registrar. I heard the matter, as a delegate of the Registrar of Trade Marks, on 16 May 2023.

Grounds, onus and standard of proof

1. The SGP nominated grounds of opposition under ss 41, 44, 58, 60, 42, 42(b), 43, 59 and 62A. It is evident that the primary ground of contention is that under s 41, particularised in the SGP as:

   Hundreds of traders use the term CORRO SADDLE in the course of trade. Top Intellectual [the Applicant] have not used the words as a trade mark.

2. As will become clear it is unnecessary to address the particularisation of any of the other grounds.

3. The Opponent bears the onus of establishing at least one of its grounds of opposition in order to succeed in its opposition.[1]

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

4. The relevant standard of proof is the ordinary civil standard based on the balance of probabilities.[2]

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

5. The date at which the rights of the parties is to be determined is the date the application was filed,[3] being 10 November 2020 (‘Relevant Date’). I note a contention from the Applicant’s representative that it is the date of first use (claimed to be 2010) that is the relevant date for the consideration of each ground of opposition. Whilst the date of first use is certainly a relevant consideration to the success of certain grounds, the rights of registration flow from the date registration is taken to have effect, being the filing date (s 72(1) of the Act). For this reason, long standing authority has determined that under the Act the rights of competing parties are to be assessed as at the date the application for registration is made.

   [3] Southern Cross Refrigerating Co v Toowoomba Foundry Pty Ltd [1954] HCA 82, [2] (Kitto J).

Evidence

1. The parties filed the following declarations as evidence:

   Evidence in support:

   Declaration by Grayson O’Connor, director of the Opponent, with Appendices 1 to 13, dated 6 January 2022 (‘O’Connor 1’).

   Evidence in answer:

   Declaration by Anna Harcombe, trade mark attorney with Meyer West IP, with Annexures AH-1 to AH-12, dated 6 April 2022.

   Declaration by Richard Jelacic, director of the Applicant, with Annexures RJ-1 to RJ-15 (‘Jelacic’).

   Evidence in reply:

   Declaration by Grayson O’Conner, with Appendices 14 to 31, dated 6 June 2022.

   Second declaration by Grayson O’Conner, with Appendices 32 to 34, dated 6 June 2022 (collectively ‘O’Connor 2’).

2. The following is a summary of the relevant statements and exhibits in the parties’ evidence. Where I have not mentioned a statement or exhibit it should not be taken as an indication that the statement or exhibit has been omitted from consideration, but rather that I have considered its relevance or weight is such that it is not material to the outcome of the dispute.

The Opponent’s Evidence

1. The Opponent operates a business involved in the installation of gutter guard systems, being mesh that is snugly attached to a house’s roof and that extends over the gutter in order to prevent leaf litter or other debris from settling in the gutters. Part of that system is molded pieces of metal, in the shape of a saddle, adapted to clamp mesh onto corrugated roofing, as seen in the image below. It is this component that the Opponent asserts is generically referred to as a ‘corro saddle’.

1. Four invoices to the Opponent from another business, ‘Gutter Guard Direct 2U’, are adduced.[4] They are all dated prior to the priority date, and list ‘corro saddles’ in various colours as items sold to the Opponent.

   [4] Appendix 3 of O’Conner 1.

2. Undated and post Relevant Date Google® word and image searches of ‘corro saddles’ show a number of other traders in Australia using that expression to refer to the goods described above.[5] Similarly, undated screen shots of other traders’ websites using ‘corro saddle’ or ‘corro saddles’ are exhibited.[6] An archived web page of the Opponent’s from 2019 does not refer to ‘corro saddles’ but rather ‘saddles’ and ‘fixing saddles’ which attach to corrugated roofs.[7] Similarly, 2018 price list from ‘Gutter Guard Direct 2U’ refers to ‘saddles/clips’ for ‘Corro’ and ‘Trim-Dek’ kits, but not to ‘corro saddles’.

   [5] Appendices 7 and 9, O’Connor 1.

   [6] Appendices 10, 11 and 12, O’Conner 1.

   [7] Appendix 34, O’Connor 2.

3. The Opponent also adduces screen shots of its own website ‘ which describes the use of corro saddles. However, there is no evidence that this website existed prior to the current dispute.

4. Statements from two associates of the Opponent are included in the evidence in reply.[8] They each declare that they are or have been experienced traders in the gutter industry, and that they have used the name ‘corro saddles’ to refer to metal clips that affix mesh to metal roofs from before the Relevant Date. One of the associates further provides two invoices from 2011, not showing ‘corro saddle’ but listing the roof type as ‘corro’.

   [8] Appendices 14 and 32, O’Conner 2.

The Applicant’s Evidence

1. Mr Jelacic declares that he coined the Trade Mark in 1999 when he ‘acquired the rights to a fastening clip tool’, although he does not explain what rights were acquired. The Applicant was established in 2001. Mr Jelacic states that he and another of his companies license the Applicant to use the Trade Mark, and (somewhat in contradiction to his prior statement) at the time of adoption of the Trade Mark in 2010 he was not aware of any party unrelated to himself using that expression.

2. The Applicant developed a gutter guard system under the name Leaf Stopper. LEAF STOPPER is a registered trade mark, having been registered in 2004 in logo form and in 2005 in plain text form. The Leaf Stopper product has been made available to consumers since 2010. Mr Jelacic states

   The Applicant’s CORRO SADDLE fastening clip is sold as part of the Leaf Stopper gutter guard systems. The Leaf Stopper systems are sold in a packaged box and amongst other components that make up the kit, included in the kit box is the CORRO SADDLE fastening clip.[9]

   [9] Jelacic, [24].

3. Undated images of the carton design for the Leaf Stopper product are in evidence, as are undated images of the packaged products, although all are declared to be from 2010. ‘Corro Saddle’ can be seen upon the carton design and packaging as follows (enlarged images follow the first image):[10]

[10] Annexures RJ-7, RJ-8 and RJ-9, Jelacic.

1. The Leaf Stopper products are declared to have been distributed through multiple resellers including Home Timber & Hardware, Mitre 10 and Reece Plumbing. It is further declared that more than 100,000 units have been sold since 2010, although it is not stated how many of those sales took place prior to the Relevant Date. Two sample invoices list ‘Leaf Stopper CORRO SADDLE’ as one of the items sold (one invoice is dated before the Relevant Date and the other after).

2. The domain names ‘topidea.com.au’ and ‘leafstopper.com.au’ were registered in 2004, and archived web pages from 2016 to 2021 show use of ‘Corro Saddles’ as one of the components of ‘Leaf Stopper’ (in the same way as depicted above upon packaging). Two of the archived web pages from 2021, after the Relevant Date, state:

   ‘Leaf Stopper is designed to attach the Mesh Shield to the front lip of the gutter using Trimets and then secured to the roof rib with CORRO SADDLES…’

‘Corroguard Kits for Gutter Edge will come with the following standard components:

…
Corro Saddles – Used to fasten the Mesh Shield to the top of the corrugation.

Corroguard Kits for Valley installation come with the following components:

…

[11] Annexure RJ-12, Jelacic.

Corro Saddles – Used to fasten the Mesh Shield to the top of the corrugation. [11]

1. A Facebook profile relating to Leaf Stopper has been maintained since 2011, and a YouTube channel exists (although the date of its creation is not stated). None of the exhibits reference CORRO SADDLE, although ‘Leaf Stopper’ is used both in logo form and with the registered trade mark symbol ®.

2. An extract of a book, co-written by Mr Jelacic, is in evidence.[12] It’s significance or provenance is not explained, although from my own investigation it appears to be published under the ‘USD System Consortium’ which says of its publications ‘[t]he USD System International Editions Consortium is a private organization that seeks to respect the precepts of the World Intellectual Property Organization (W.I.P.O.)’ (footnotes omitted). The book is dated 2017 and the page extracted comprises four images under the heading ‘Corro Saddle’ with a comment next to each. The comments detail developments and improvements made to ‘saddles’ by Mr Jelacic between 1999 and 2009.

   [12] Annexure RJ-3, Jelacic.

3. A certified design right was granted in respect of a ‘saddle clip’ in 2009 (now ceased), which in appearance is very similar to the image at paragraph 11 above. One of Mr Jelacic’s companies also owns three patent registrations, titled ‘modular angle trim’, ‘access fixture’ and ‘gutter installation and gutter mesh fastener’.

4. Lastly, Mr Jelacic declares that some of the images in Appendices 9 and 12 of O’Connor 1, which depict products labelled ‘corro saddles’, are actually images of the Applicant’s product which it authorises some of its customers to use on their websites. Otherwise, he declares that in the 22 years he and his companies have been using the Trade Mark there have not been any instances of confusion with the trade marks of other parties.

Section 41

1. It is convenient to begin with a discussion of s 41. Section 41 of the act relevantly provides (notes omitted):

41 – 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.

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.

   (5)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.

5. In order for s 41 to apply the Opponent must satisfy the Registrar that the Trade Mark is not inherently adapted to distinguish the Applicant’s goods, and that any use or intended use of the Trade Mark or any other circumstances does not and will not render the Trade Mark capable of distinguishing the Applicant’s goods.

6. The inherent adaptation of a trade mark to distinguish goods depends upon the nature of the trade mark itself, it cannot be changed or acquired through use.[13] Justice Kitto, in Clark Equipment Co v Registrar of Trade Marks, determined that inherent adaption to distinguish goods or services is to be tested:

   [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.[14]

   [13] Burger King Corporation v Registrar of Trade Marks [1973] HCA 15, [7] (Gibbs, J).

   [14] [1964] HCA 55, [5].

7. The majority of the High Court in Cantarella Bros Pty Ltd v Modena Trading Pty Ltd described the consideration as a two-step process: the first being the determination of the ‘ordinary signification’ of the sign in Australia to those who would purchase, consume or trade in the goods; and then having determined the ordinary signification, considering the likelihood of the sign being desired for use by other traders.[15]

   [15] [2014] HCA 48, [71] (French CJ, Hayne, Crennan, and Kiefel JJ).

8. I bear in mind that the Trade Mark must be assessed as a whole. Nonetheless it is necessary to determine the meaning of its elements in order to determine whether, as a whole, it has an ordinary signification. I note that one of the definitions of ‘saddle’ in the Macquarie Dictionary is ‘something resembling a saddle in shape or position’.[16] It appears to be uncontroversial that this is an apt word to apply to the saddle-shaped metal articles used to sit atop the ribs of corrugated roofing and affix mesh to them. The evidence identifies that multiple traders, including Bunnings, use names including ‘saddles’ or ‘saddle clips’ to identify such goods.

   [16] Macquarie Dictionary online, Macmillan Publishers Australia 2023, accessed 7 August 2023.

9. ‘Corro’ on the other hand is not defined in the dictionary. The assertion is that it has an ordinary signification in the context of the gutter industry meaning corrugated roofing. I note the Opponent’s associate’s invoices from 2011 which list the ‘roof type’ as ‘corro’. I note also the Opponent’s own invoices from 2019 and early 2020 for purchases of items including ‘corro saddles’, amongst other items such as mesh and screws used in the installation of gutter guards. I also consider it reasonable and likely that terms such as ‘corrugated roofing’ or ‘corrugated iron/steel’ are used in the abbreviated form ‘corro’ (in a manner similar to ‘gal’ or ‘4b2’, used to refer respectively to galvanised metals or planks of timber of particular size). This is a common habit in Australian vernacular. It is also reinforced by the Opponent’s Google® search results demonstrating use by multiple traders of ‘corro saddle’ in respect of the specified goods. Although the search results post-date the Relevant Date, a rational inference may be drawn about the actual degree of the Trade Mark’s inherent adaptation to distinguish as at the Relevant Date.[17]

   [17] Chocolaterie Guylian N.V. v Registrar of Trade Marks [2009] FCA 891, [54] (Sundberg J).

10. There is nothing about the combination of the elements CORRO and SADDLE that alters the meaning of either one, and nothing to suggest that they have acquired descriptive significance only since the Relevant Date. In the context of the specified goods, I am satisfied that the Trade Mark had an ordinary signification at the Relevant Date. Because of its ordinary signification to those who would purchase or consume the products, I am also satisfied that other traders are likely to wish to use the Trade Mark.

11. I therefore turn to the Applicant’s evidence of use of the Trade Mark.

12. Use is claimed to have commenced in 1999. However, the use demonstrated in that period is not in the course of trade. The only exhibit relating to that period is the extract from the book co-written by Mr Jelacic, which appears to be for the purpose of sharing intellectual property, not an offer to trade.

13. It is not until the Trade Mark appears upon cartons in which the Leaf Stopper kit is packaged that any use in trade is demonstrated. The images themselves are undated, although they are declared to be from 2010. Additionally, the manner of use of CORRO SADDLES is not as a trade mark. CORRO SADDLES is used descriptively to identify a component of the Leaf Stopper kit, along with other components including mesh and screws, as seen in the images in paragraph 18 of these reasons. Unlike LEAF STOPPER which also appears upon the carton and is accompanied by the registered trade mark symbol ‘®’, there is nothing to indicate that CORRO SADDLES is intended to be a proprietary name.

14. Similarly, the use of the Trade Mark in archived pages of the Applicant’s websites is not as a trade mark. Rather, it is the same use as described above. The post Relevant Date web pages continue to use CORRO SADDLES in a manner that is not clearly trade mark use, as quoted in paragraph 20.

15. Little turns on the design and patent rights granted to the Applicant and his companies. Similarly, the statement about the total amount of Leaf Stopper kits sold since 2010 is too broad for me to be able to draw any meaningful conclusions about the volume of trade as at the Relevant Date.

16. Given the Trade Mark’s limited capacity to distinguish, combined with a lack of evidence of use or intended use (or any other circumstances) indicating that it does or will distinguish the Applicant’s goods, I am satisfied on the balance of probabilities that the Trade Mark does not and will not be capable of distinguishing the Applicant’s goods. The ground of opposition under s 41 is therefore established.

Decision and costs

1. Section 55 relevantly provides:

   (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. I have found the Opponent has established the ground of opposition it raised pursuant to s 41. As a Delegate of the Registrar, I accordingly refuse to register the Trade Mark. I direct that refusal be recorded one month from the date of this decision. If the Registrar is served with a notice of appeal before that time, I direct that the refusal shall not occur until the appeal has bee withdrawn or discontinued. Otherwise, the disposition of the application should be in accordance with the Court’s orders or directions.

Costs

1. The Opponent has sought an award of costs in its favour. I see no reason to depart from the general rule that costs follow the event. As the Opponent has established a ground of opposition, I award costs against the Applicant under s 221 in line with the applicable amounts in Schedule 8 of the Trade Mark Regulations 1995.

Nicole Worth

Hearing Officer

Delegate of the Registrar of Trade Marks

10 August 2023