Jalco Australia Pty Limited v Autotech Group Australia Pty Ltd

[2018] ATMO 70

TRADE MARKS ACT 1995

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

Re:Opposition by Jalco Australia Pty Limited to registration of Australian TM Application 1363935 greencar Qu4ttro Logo in the name of Autotech Group Australia Pty Ltd

Delegate:	Michael Kirov Decision on the Written Record 2018 ATMO 70
Decision:	Opposition under s 52 of the Trade Marks Act 1995: Notice of Opposition nominates some 12 grounds but none supported by evidence - opposition not established.

Background

1.     This is an opposition brought by Jalco Australia Pty Limited (“the Opponent”) pursuant to s 52 of the Trade Marks Act 1995 (“the Act”) to registration of the trade mark subject of the application detailed below in the name of Autotech Group Australia Pty Ltd (“the Applicant”):

Application No:         1363935

Priority Date:             3 June 2010

GoodsClass 3: Automotive care products (cleaning and polishing); car cleaning preparations; car polish; car shampoos; carpet cleaning preparations; carpet freshening preparations; carpet shampoos; carpet spot removing preparations; carpet stain removing preparations; chemical cleaning preparations for carpets; chemical preparations for carpet cleaning; leather care products; polish for use on car bodies  (“the Goods”)

EndorsementThe applicant has advised that the translation of the ITALIAN word QUATTRO appearing in the trade mark is FOUR.

Trade Mark:              

(“the Opposed Mark”)

2.     The Opponent, which is represented by Cullens Patent & Trade Mark Attorneys, filed its Notice of Opposition (“the Notice”) as long ago as 10 February 2010.  Proceedings were then officially suspended for six months, until 9 November 2011, at the joint request of the parties so that the possibility of settlement could be discussed.  I understand this is the last time either party has contacted IP Australia concerning the opposition.

3.     The Registrar wrote to the parties on 1 December 2012 terminating the suspension and setting 1 March 2012 as the Opponent’s deadline to file its evidence in support.  No evidence in support was filed, nor did the Applicant file any evidence in answer.

4.     IP Australia subsequently wrote to the parties on 3 April 2018 confirming that since neither party had requested a hearing a Delegate of the Registrar would in due course decide the opposition based on the written record.  The letter further stated:

IMPORTANT

If you wish to file written submissions, you have 1 month from the date of this letter to file your submissions.  To ensure that a copy of the submissions is on file when the matter is assigned to a Delegate, please file the submission through online services.  Please also provide a copy of the written submissions to the other party at the same time as filing them with IP Australia.  This can be done through Objective Connect.

5.     As mentioned, I understand neither party responded to this letter.

6.     The matter has now been allocated to me, as a Delegate of the Registrar of Trade Marks, to decide.  Given the parties have filed no evidence or submissions, my decision is necessarily based solely upon what is contained in the Notice itself.

Grounds of Opposition, Onus and Relevant Date

7. The Notice, which aside from the s 44 and s 60 grounds is couched in generic terms, nominates most grounds available under the Act. To succeed, the Opponent bears the onus of establishing at least one of these grounds, with the relevant standard of proof required being the ordinary civil standard based on the balance of probabilities.[1]  The date at which the rights of the parties are to be determined is the 3 June 2010 filing date of the application (“the Relevant Date”).[2]

[1] Following Gyles J in Pfizer Products Inc v Karam (2006) 70 IPR 599 at [6] to [26], affirmed by the Full Federal Court (Besanko, Jagot & Edelman JJ) in Telstra Corporation Limited v Phone Directories Company Pty Ltd (2015) 116 IPR 207 at [132]-[133].

[2] Southern Cross Refrigerating Co v Toowoomba Foundry Pty Ltd (1954) 91 CLR 592 at 595.

8. I will specifically address the s 44 and s 60 grounds in the discussion below. Given the remaining grounds are non-specific and are unsupported by any evidence, there is ample precedent indicating the Opponent has not discharged its onus of at least making out a prima facie case and thus that the Applicant has no case to answer.  In Medley Distilling Co v Croakers Gully Australia the Hearing Officer, in similar circumstances, put it this way: [3]

[3] (2000) 53 IPR 430 at 433.

[T]he mere filing of a notice of opposition containing a plethora of grounds which are unsupported by any evidence does not, in my view, effectively place the onus on an applicant to defend its application. In relation to this question, s 55 of the Act reads:

55  Decision

Unless the proceedings are discontinued or dismissed, 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.

I believe that the words “having regard to the extent (if any) to which any ground on which the application was opposed has been established” make it clear that the onus is on the opponent to establish its grounds of opposition before there can be any onus on an applicant to refute it.  Here, the opponent has not served any evidence to support its grounds of opposition and the applicant has not served any evidence in answer to the opposition.  Therefore, I can only proceed to decide the matter on the facts before me and the relevant case law in relation to the grounds pursued.

9.     As another Hearing Officer succinctly put it in Wal-Mart Stores Inc v Ozark-London Ltd:[4]

If an opponent does not file any evidence in support of its opposition there is nothing for an applicant to respond to and that opposition should not be established (notwithstanding the fact that a notice has been served and filed).

[4] (2004) 62 IPR 165 at 181. See also Australian Cricket Board v Lilyana Holdings Pty Ltd 57 IPR 110.

10. While I will nevertheless address the s 44 and s 60 grounds below, I accordingly find none of the other grounds listed in the Notice has been established.

Discussion

Section 60

11. Section 60 of the Act is reproduced below:

Trade mark similar to trade mark that has acquired a reputation in Australia

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

(a)  another trade mark had, before the priority date for the registration of the first‑mentioned trade mark in respect of those goods or services, 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.

Note: For priority date see section 12.

12. The ground based on s 60 is indicated in the Notice as follows:

At least one other trade mark had, before the priority date for the [Opposed Mark], acquired a reputation in Australia, and because of the reputation of the other trade mark(s), the use of the [Opposed Mark] would be likely to deceive or cause confusion, contrary to Section 60 of the [Act]. The other trade mark(s) include the Opponent’s GREEN CARE brand trade marks, including the marks GREEN CARE and GREENCARE, amongst others, in which the Opponent has acquired a reputation.

13. Although the Opponent has specified its claimed trade marks “GREEN CARE and GREENCARE, amongst others” as having the requisite “reputation” to possibly enliven s 60, there is of course no evidence before me of this reputation. As was noted by the Hearing Officer in Sara Lee Corporation v Bali Blue Pty Ltd:[5]

The reputation in Australia cannot be assumed – it must still be established as a question of fact – per Lockhart J in ConAgra Inc v McCain Foods (Aust) Pty Ltd (1992) 33 FCR 302; 106 ALR 465; 23 IPR 193.

[5] (2003) 59 IPR 619 at [25].

14. Having no information as to what goods or services the Opponent’s trade marks may be used for, nor the manner in which those goods or services may be advertised and promoted, nor the extent or duration of the trade marks’ use, I am simply not able to say whether the marks in question enjoyed the kind of reputation contemplated by s 60 as at the Relevant Date.

15. The Opponent’s s 60 ground is accordingly not established.

Section 44

16. Insofar as relevant to the present matter section 44(1) is reproduced below:

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.

Note 1:  For deceptively similar see section 10.

Note 2:  For similar goods see subsection 14(1).
Note 3:  For priority date see section 12.

17. The ground based on s 44(1) is indicated in the Notice as follows:

The [Opposed Mark] should not be registered in relation to the Goods having regard to the provisions of Section 44 of the [Act] because it is substantially identical with, and/or deceptively similar to, one or more trade marks for the same goods, similar goods, and/or services closely related to the Goods, including trade mark no. 1226426.

18. I will address the s 44 ground in some detail because the Notice specifies trade mark 1226426 as underpinning the ground and bearing in mind the Hearing Officer’s observation in Quiksilver International Pty Ltd v s.Oliver Bernd GmbH & Co. KG that:[6]

… an opponent bears the initial onus of establishing a relevant ground of opposition, at least on the balance of probabilities, before an applicant would need to respond in defense of its application. In appropriate circumstances it is perhaps arguable an opponent might successfully discharge this onus in an opposition based on s 44 of the Act by relying on submissions alone and without lodging evidence, provided the Notice of Opposition itself clearly specifies the earlier mark or marks relied upon.

[6] [2008] ATMO 14.

19. Although there are no submissions before me in this case, I think the s 44 ground as specified in the Notice is itself clear enough to warrant enquiry. In this regard details of registration 1226426, which is owned by the Opponent, are set out below:

Registration No:         1226426

Priority Date:             26 February 2008

GoodsClass 3: Commercial laundry detergents; detergent rinse aid products for use in dishwashing machines; detergents for household use; detergents other than for use in manufacturing operations and for medical purposes; laundry detergent; cleaning preparations for laundry use; cleaning substances for household use; materials for cleaning purposes (preparations); multi-purpose household cleaning preparations; preparations for cleaning textiles; products for cleaning; vehicle cleaning preparations; fabric softeners (for laundry use)

Trade Mark:              GREENCARE         (“the s 44 Mark”)

20.     The priority date of registration 1226426 is obviously earlier than the Relevant Date and I am satisfied that the goods covered by the opposed application are on the face of it “similar”[7] to those covered by the Opponent’s registration. It remains to consider whether the Opposed Mark is “substantially identical with, or deceptively similar to” the s 44 Mark.

[7] As defined in s 14(1) of the Act, namely the same goods or goods “of the same description”.

21.     The generally accepted test for assessing substantial identity is as set out by Windeyer J at first instance in Shell Co of Australia Ltd v Esso Standard Oil (Aust) Ltd[8] (“Shell”), where his Honour said at 528:

In considering whether marks are substantially identical they should, I think, be compared side by side, their similarities and differences noted and the importance of these assessed having regard to the essential feature of the registered mark and the total impression of resemblance or dissimilarity that emerges from the comparison.

[8] (1961) 109 CLR 407; (1963) 1B IPR 523 at CLR 414-415; IPR 528-529. Windeyer J’s judgment was overturned on appeal to the full High Court but not on his analysis of the terms “substantial identity” or “deceptive similarity”.

22.     The marks in question are set out side by side below:

GREENCARE  

23. Several differences between the marks are immediately apparent. One contains the element “CARE” and one the element “CAR”, both common but readily distinguishable words having a descriptive flavor in the context of the parties’ Class 3 goods of interest. Unlike the elements of the s 44 Mark, the elements GREEN and CAR in the Opposed Mark are rendered in somewhat unusually stylised lower case letters and are in contrasting colours.[9]  These elements are underscored by the “word” Qu4ttro and the phrase “MEMBERS ONLY”, each arguably capable in its own right on the face of it of distinguishing the Goods. In my view these differences and additional elements are, in Windeyer J’s terms, “important” in that they readily allow the two trade marks to be distinguished one from the other, both visually and aurally. Taking this into account I conclude the Opposed Mark is not substantially identical to the s 44 Mark and move on to consider whether it might nonetheless be “deceptively similar.”

[9] Relatively speaking.  The opposed application is not limited to the specific colours in which the Applicant filed the Opposed Mark.

24. Unlike the term “substantially identical” the words “deceptively similar” are defined in the Act itself, s 10 providing that “a trade mark is taken to be deceptively similar to another trade mark if it so nearly resembles that other trade mark that it is likely to deceive or cause confusion.” In the discussion which follows I will focus primarily on the likelihood of confusion rather than deception, since this is the minimum that the Opponent needs to establish. In this regard the distinction between the terms was addressed by the Full Federal Court in The Coca-Cola Company v All-Fect Distributors Ltd,[10] where in a joint judgment Black CJ, Sundberg and Finkelstein JJ said the following at [39]:

Section 10 of the Act provides that a trade mark is taken to be deceptively similar to another trade mark if it so nearly resembles that other mark as to be likely to deceive or cause confusion. No intention to deceive or cause confusion is required: Re Bali Brassiere Co Inc's Registered Trade Mark (1968) 118 CLR 128 at 139. The distinction between “likely to deceive” and “likely to cause confusion” lies not in some element of culpability in the user to be inferred from the word “deceive”, but in the effect of the mark on prospective purchasers. In Pioneer Hi-Bred Corn Co v Hy-Line Chicks Pty Ltd [1979] RPC 410 at 423 Richardson J, in the New Zealand Court of Appeal, said:

“Deceived” implies the creation of an incorrect belief or mental impression and causing “confusion” may go no further than perplexing or mixing up the minds of the purchasing public … Where the deception or confusion alleged is as to the source of the goods, deceived is equivalent to being misled into thinking that the goods bearing the applicant's mark come from some other source and confused to being caused to wonder whether that might not be the case.

[10] (1999) 96 FCR 107; 47 IPR 481.

25.     As Windeyer J further explained in Shell:[11]

On the question of deceptive similarity a different comparison must be made from that which is necessary when substantial identity is in question. The marks are not now to be looked at side by side.  The issue is not abstract similarity, but deceptive similarity.  Therefore the comparison is the familiar one of trade mark law.  It is between, on the one hand, the impression based on recollection of the [Opponent’s] mark[s] that persons of ordinary intelligence and memory would have; and, on the other hand, the impressions that such persons would get from the [Opposed Mark].

[11] At CLR 414-415; IPR 528-529.  See also Australian Woollen Mills Ltd v FS Walton & Co Ltd (1937) 58 CLR 641.

26.     Based on principles formulated by Kitto J in Southern Cross,[12] French J said in Registrar of Trade Marks v Woolworths Ltd (“Woolworths”)[13] that:

A trade mark is likely to cause confusion if the result of its use will be that a number of persons are caused to wonder whether it might not be the case that the two products or closely related products and services come from the same source.  It is enough if the ordinary person entertains a reasonable doubt.  It may be interpolated that this is another way of expressing the proposition that the trade mark is likely to cause confusion if there is a real likelihood that some people will wonder or be left in doubt about whether the two sets of products or the products and services in question come from the same source.

[12] Southern Cross Refrigerating Co v Toowoomba Foundry Pty Ltd (1954) 91 CLR 592.

[13] (1999) 45 IPR 411 at [50].

27.     To paraphrase Windeyer J’s above quoted words in Shell then, I should attempt to assess the impression based on recollection of the s 44 Mark that persons of ordinary intelligence and memory would have and compare this with the impression potential purchasers would have on encountering the Goods advertised or offered for sale under the Opposed Mark. In doing so I note that the parties’ goods of interest are everyday, generally low cost, consumer and domestic products and as such would be aimed at a wide cohort of the public. They would most likely be encountered in reasonable proximity in the same supermarket aisle. In this regard I note the often quoted words of Parker J in Pianotist’s Co’s Appn[14] at 777 that in comparing marks:

You must consider the goods to which they are to be applied.  You must consider the nature and kind of customer who would be likely to buy those goods.

[14] (1906) 23 RPC 774.

28. Here the sole element the Opposed Mark shares with the s 44 Mark is the element GREEN, being a word commonly used to describe products that are environmentally friendly and in that regard apt to describe the parties’ Class 3 goods in this case. Indeed, a check of the Trade Marks Register indicates there are currently around 150 registrations covering Class 3 good for marks featuring the element GREEN, mostly in separate ownership. I note that those marks accepted for registration before the requirement for explicit disclaimer of right to separate use of non-distinctive elements was removed with the commencement of the Act in 1996 in fact explicitly disclaim right to exclusive use of the word “green.” In this regard it is apparent, I believe, that the element GREEN has long been considered descriptive or otherwise common to the trade for Class 3 goods. Consequently marks featuring this element owned by many different traders have been allowed to coexist for similar goods, with the marks differentiated from each other as wholes by virtue of the additional element(s) they contain.

29.     Not only is this testimony to the fact that the Opponent is in no position to claim rights in the element GREEN in the context of the Goods, it strongly suggests it would not be seen by the relevant market as in any way uniquely associated with the Opponent.

30.     In a comparison of marks such as the present one, then, the way it was put many years ago in Clark v Sharp remains very apt:[15]

One must bear in mind the points of resemblance and the points of dissimilarity, attaching fair weight and importance to all, but remembering that the ultimate solution is to be arrived at, not by adding up and comparing the results of such matters, but by judging the effect of the respective wholes.

[15] (1898) 15 RPC 141 (at 146).

31. When I take these factors into account I am not satisfied that a significant number of people within the relevant market is likely either to confuse the parties’ marks or to think the parties’ respective goods of interest come from the same source. My conclusion is then that the Opposed Mark is not deceptively similar to the s 44 Mark.

32. The s 44(1) ground of opposition is therefore not established.

Decision

33. Section 55(1) of the Act relevantly provides that, unless the proceedings are discontinued or dismissed:

…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.

34.     I have found the Opponent has not established any of the grounds raised in the Notice.  Application 1363935 may accordingly 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

35.     Given neither party has taken any active part in the proceedings I do not believe it appropriate to make an award of costs in this case.

Michael Kirov
Hearing Officer
Hearings and Oppositions
14 May 2018