Jasco Pty (New Zealand) Limited v Kittrich Corporation

[2013] ATMO 99

TRADE MARKS ACT 1995

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

Re:Opposition by Jasco Pty (New Zealand) Limited to registration of trade mark application 1185461(9, 12, 16, 17, 19, 20) - CON-TACT - filed in the name of Kittrich Corporation.

Delegate:	Iain Campbell Thompson
Representation:	Opponent: Written submissions by Banki Haddock Fiora, Lawyers Applicant: Carmen Champion of Counsel instructed by FB Rice
Decision:	2013 ATMO 99 s52 opposition: s44 – goods of same description – ground established Registration refused

Background

1. This is a proceeding under section 52 of the Trade Marks Act 1995 (‘the Act’) and concerns opposition to the registration of the trade mark which appears below:

Application No:         1185461
Filing Date:                3 July 2007 (Convention claims – USA – see endorsements)

Goods:Class 9: Covers for portable and handheld digital electronic and cellular devices and for laptop personal computers 

Class 12: Self-adhesive bicycle handlebar grips; steering wheel covers, window shades for vehicles
Class 16: Calendars, grid charts; paper memo tabs for portable electronic devices, namely mobile phones, MP3 players, PDA's and cellphones; labels, envelopes, note tabs, note cubes, page flags, stickers all of paper; book corners, crystal clear and invisible tapes all for use with paper; signs of cardboard, paper board or poster board; adhesive packing tape for household use; vinyl appliques, namely, re-mountable graphics, clings signs and window decor; self-adhesive plastic or vinyl memo tab (for household or stationery purposes); automotive accessories, namely, window graphics; glue, namely, superglue, glue sticks, glue pens and glitter glue, wood glue; the foregoing glues not being contact adhesives
Class 17: Automotive accessories, namely, lighting repair tape, side repair vinyls, bolt tape, automotive mounting tape, window tint; adhesive packing tape for industrial or commercial use; duct tape; electrical tape; masking tape; mounting tape; carpet tape; caulking
Class 19: Non-metal signs including signs of chipboard; pavement marking tape and plastic tape for use in warnings
Class 20: Non-metal book corners and book mounts; non-metal hooks and hangars

Trade Mark:               CON-TACT

Endorsement:             Convention priority claimed: 12 April 2007, United States of America, No. 77155499 in respect of class 1, 4 May 2007, No. 77173593 in class 8, 9 April 2007, No. 77152078 in class 9, 4 May 2007, No. 77173596 in class 11, 4 May 2007, No. 77173606 in class 12, 4 May 2007, No. 77173612 in class 16, 12 April 2007, No. 77155485 in class 17, 4 May 2007, No. 77173615 in class 19 and 4 May 2007, No. 77173618 in class 20.

1. I will refer to the respective details above as ‘the Trade Mark’, ‘the Application’ and ‘the Specification’ where necessary in this decision.

2. The Trade Mark was accepted for possible registration and advertised as such in the Australian Official Journal of Trade Marks on 9 July 2009.

3. On 9 October 2009 Jasco Pty (New Zealand) Limited (‘the Opponent’) filed Notice of Opposition (‘the Notice’) to the registration of the Trade Mark. The Notice is couched in broad terms so as to include all available grounds of opposition which therefore includes those under sections 58, 44, 60 and 42 of the Act argued at a hearing. Of these grounds, that under section 44 is established and there is no requirement for me to consider the other grounds which were argued.

4. The hearing was before me as a delegate of the Registrar of Trade Marks in Sydney on 14 October 2013.  Carmen Champion of Counsel instructed by FB Rice represented the Applicant and the Opponent relied on written submissions by its legal representatives Banki Haddock Fiora, Lawyers.

Onus

1. The Opponent bears the onus of establishing one or more grounds of opposition on the balance of probabilities.[1]

   [1] 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]; Sports Warehouse, Inc v Fry Consulting Pty Ltd [2010] FCA 664; (2010) 87 IPR 300 per Kenny J at [30] to [40]; NV Sumatra Tobacco Trading Company v British American Tobacco Services Limited [2011] FCA 1051; (2011) 198 FCR 435; (2011) 283 ALR 743 per Greenwood J at [16] to 32]; Allergan, Inc v Di Giacomo [2011] FCA 1540; (2011) 199 FCR 126; 94 IPR 541 per Stone J at [11] to [12]; Tricarico v Dunn Bay Holdings Pty Ltd [2012] FCA 271 per McKerracher J at [9] to [10] and Fry Consulting Pty Ltd v Sports Warehouse Inc (No 2) [2012] FCA 81; ( 2012 ) 94 IPR 551 per Dodds-Streeton J at [13]; and, and, most recently, DC Comics v Cheqout Pty Limited [2013] FCA 478 (22 May 2013) ); (2013) 101 IPR 334 per Bennett J at [13].

Evidence

1. The Opponent has served and filed evidence in support of its opposition – the Applicant has not served and filed evidence in answer, although Mrs Champion did informally tender some material at the hearing (which I will discuss, below).

2. The evidence in support of the opposition is a statutory declaration by Mr Colin Edric Gallagher, Managing Director of the Opponent. It relevantly brings into evidence the nature of the Opponent’s goods, the mode of use of the Opponent’s trade mark CONTACT in relation to those goods and also the registration that the Opponent owns and on which it relies to found its section 44 ground. Details of this registration appear below:

Registration No:         924105
Priority Date:             20 August 2002
Goods:  Class 16: Adhesive and non-adhesive plastic film and sheeting 

Trade Mark:               CONTACT

1. The goods on which the Opponent uses its trade mark CONTACT are self-adhesive plastic protective sheeting of the type applied to books, notebooks, shelves, drawers and so forth.

Section 44

1. Absent evidence of use of the Trade Mark by the Applicant (or ‘other circumstances’ of significance), section 44 of the Act relevantly provides:

   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.

2. The priority date of the Opponent’s registration is earlier than that of the Application.  And it is not argued that the trade marks are not deceptively similar.  Indeed, on a side-by-side comparison, I consider the trade marks to be substantially identical: Carnival Cruise Lines Inc v Sitmar Cruises Ltd [1994] FCA 936; (1994) 120 ALR 495; (1994) 31 IPR 375; [1994] AIPC 91-049. It accordingly remains to be decided whether the goods in respect of which the Applicant seeks trade mark registration are similar to the ‘Adhesive and non-adhesive plastic film and sheeting’ covered by the Opponent’s registration.

3. The expression ‘similar goods’ is defined within section 14:

   14Definition of similar goods and similar services

   (1)For the purposes of this Act, goods are similar to other goods:

   (a)if they are the same as the other goods; or

   (b)if they are of the same description as that of the other goods.

4. Also, the expression ‘goods of the same description’ has been the subject of considerable judicial discussion.  In Southern Cross Refrigerating Co v Toowoomba Foundry Pty Ltd (1954) 91 CLR 592 at p 606-607 the High Court stated:

   Romer J [in In re Jellinek’s Application (1946) 63 RPC 59] thought it necessary to look beyond the nature of the goods in question and to compare not only their respective uses but also to examine the trade channels through which the commodities in question were bought and sold. Shortly after the decision in Jellinek's case ... the Assistant-Comptroller elaborated on the observations of Romer J in the following manner:

   “In arriving at a decision upon this issue the reported cases show that I have to take account of a number of factors, including in particular the nature and characteristics of the goods, their origin, their purpose, whether they are usually produced by one and the same manufacturer or distributed by the same wholesale houses, whether they are sold in the same shops over the same counters during the same seasons and to the same class or classes of customers, and whether by those engaged in their manufacture and distribution they are regarded as belonging to the same  trade . In the case of Jellinek's Application ... Romer J classified these various factors under three heads, viz, the nature of the goods, the uses thereof, and the trade channels through which they are bought and sold. No single consideration is conclusive in itself, and it has further been emphasised that the classifications contained in the schedules to the  Trade Marks Rules are not a decisive criterion as to whether or not two sets of goods are ‘of the same description’: In re an Application by John Crowther & Sons (Milnsbridge) Ltd (1948) 65 RPC 369 at 372.”

   Much the same considerations are evident in the observation of Dixon J (as he then was) in Reckitt & Colman (Aust) Ltd v Boden [1945] HCA 12; (1945) 70 CLR 84 when he said:

   “What forms the same description of goods must be discovered from a consideration of the course of trade or business. One factor is the use to which the two sets of goods are put. Another is whether they are commonly dealt with in the same course of trade or business. In the present case, the goods are quite different, their uses are widely separated and they are not commonly sold in the same kinds of shops or departments”: [1945] HCA 12; (1945) 70 CLR 84 at 94.

5. And in E & J Gallo Winery v Lion Nathan Australia Pty Ltd [2009] FCAFC 27; (2009) 175 FCR 386; [2009] AIPC 92-337 at [70] the Full Bench of the Federal Court explicitly agreed with the above in its application to the Act and said:

   The expression "goods of the same description" is a term of art which was found in the legislative predecessors to the TM Act. There is Full Court authority, MID Sydney Pty Ltd v Australian Tourism Co Ltd (1998) 90 FCR 236, that authorities predating the enactment of the TM Act in 1995 concerning the meaning and effect of the expression in a different context are apt to be applied in considering the meaning and effect of the expression in s 120(2). The fact that the Full Court was considering the expression "services of the same description" rather than "goods of the same description" does not appear to us to be a material difference. In this context, the Full Court referred to the judgment of the High Court in Southern Cross at 606. Considerations referred to in the passage from the judgment of the High Court include the nature and characteristics of the goods, their origin, their purpose, whether they are usually produced by one and the same manufacturer or distributed by the same wholesale houses, whether they are sold in the same shops over the same counters, during the same seasons and to the same class or classes of customers and whether, by those engaged in the manufacture or distribution, they are regarded as belonging to the same trade.

   It is true, as Lion Nathan submitted, that s 120(2) requires a number of discrete questions to be asked and answered. One which may emerge in a particular factual context is whether the alleged infringing trade mark is deceptively similar to the registered trade mark. Another is whether it is used by the alleged infringer on goods of the same description as that of the registered trade mark. However these discrete questions arise in the context of determining, as the ultimate question, whether there has been infringement of the registered trade mark and, to that end, the object or purpose of the statutory prohibition on infringement is relevant. It is to protect the statutory monopoly the registered owner has to use the registered trade mark as a badge of origin. In the context of goods sold in the course of trade to the public, the question of whether the alleged infringement has arisen by the affixing of a deceptively similar trade mark is not divorced from the question of whether the alleged infringement has arisen by doing so in relation to goods of the same description. One would have thought both questions necessarily require consideration of what members of the consuming public might perceive as a result of the use of the alleged infringing mark on the goods in question and whether they might be led to believe they were goods of the registered owner. In this way, the following observations of  Burchett  J, relied on by Gallo, in Polo Textile Industries Pty Ltd v Domestic Textile Corporation Pty Ltd [1993] FCA 203; (1993) 42 FCR 227 at 240 are relevant to the present enquiry, even though made by reference to provisions concerning the removal of a trade mark:

   In my opinion, the application of a principle so broadly stated requires some concentration upon the object which s 23(2) exists to serve. That object seems plainly to be the avoidance of confusion and deception in the market place, which would be likely to arise should a mark become available for use by two or more different companies, which are unrelated, upon goods of the same description. From that point of view, the expression "goods of the same description" is generally to be understood in such a sense that, if two different items are held not to fall within the expression, their sale under the same mark by different companies is not likely to lead to confusion or deception. That approach would seem to me to accord with the common sense business view recommended by Lord Evershed.

6. Thus, when considering whether the parties’ goods are goods of the same description, I am to consider both the “nature and characteristics of the goods, their origin, their purpose, whether they are usually produced by one and the same manufacturer or distributed by the same wholesale houses, whether they are sold in the same shops over the same counters, during the same seasons and to the same class or classes of customers and whether, by those engaged in the manufacture or distribution, they are regarded as belonging to the same trade” and also “what members of the consuming public might perceive as a result of the use of the alleged infringing mark on the goods in question and whether they might be led to believe they were goods of the registered owner.”

7. Further, I am to consider all of the uses that the parties might make of their trade marks within the scopes of their respective Application and registration.  In Registrar of Trade Marks v Woolworths [1999] FCAFC 1020; [1999] FCA 1020; (1999) 93 FCR 365; [1999] AIPC 91-499; (1999) 45 IPR 411 French J said at [88]:

   … consideration is not to be given to the actual use made by the owners of the trade mark cited against the applicant for registration. The test to be applied is that proposed by Evershed J in Re An Application by Smith Hayden & Co Ltd (1945) 63 RPC 97 at 101. That test may be paraphrased for the purposes of this appeal as follows. Assuming use by the proprietor of the cited trade marks in a normal and fair manner for any of the goods or services covered by the registrations of trade marks, is the Court satisfied that there is a reasonable likelihood of deception or confusion among a substantial number of persons if the applicant for registration also uses its mark normally and fairly in respect of services covered by the proposed registration. See also Berlei v Hestia Industries Ltd [1973] HCA 43; (1973) 129 CLR 353 per Mason J at 362.

8. Mrs Champion argued that I should construe the specification of the Opponent’s registration narrowly as she had performed a search on the Google^® search engine and found that the expression “adhesive and non-adhesive plastic film and sheeting” is primarily used for the purpose of denoting goods which “protect a wide range of products from dirt and other harmful substances.  That purpose not only informs the identity of the market but also the likelihood of confusion/deception arising.”  However, in terms of the principle which underlies the quote from Woolworths, above, I am not to so construe the registration’s specification.  There is nothing about the specification or the class of goods in which it occurs which suggests that anything but the natural and general meaning of the words should be attributed to them.

9. Somewhat at odds with the above submission, Mrs Champion observed that Wikipedia^® says this about ‘contact paper’:

   Contact paper is an adhesive paper used as a covering or lining.  Contact paper is an inexpensive material that has a decorative surface on one side and a highly adhesive material on the other side.  The paper sticks to the desired surface with minimal effort.  It is usually sold in roll form and the material is cut to size by the user.  While its traditional use was as a shelf or drawer liner, it can be used in many creative ways.  Teachers often use it for creative projects at school.  Other uses of contact paper include use as laptop skins and protective book covers.

10. I will observe here that the above use of the word ‘paper’ appears to be one which accords with definition (a) of the word ‘paper’ in the online Oxford English Dictionary:

    Material resembling paper (sense A. 1a) in function, consistency, or texture, but differently made.

    In early use applied spec. to papyrus or a similar substance.

    a1398   J. Trevisa tr. Bartholomaeus Anglicus De Proprietatibus Rerum (BL Add.) f. 242,   Þey makeþ þerof [sc. of papyrus] papyre to wryte Inne.

    1613   S. Purchas Pilgrimage 506   Of the pith or heart of the tree, is made paper for bookes.

    1615   G. Sandys Relation of Journey 102   The sedgie reeds,..called formerly Papyri, of which they made paper; and whereof ours made of rags, assumeth that name.

    1843   Penny Cycl. XXVII. 105/1   This [ligneous] fibre..is made into a paper, of which are constructed the combs [of a wasps' nest].

    1872   Q. Rev. 132 221   They make paper of the fine white bast or skin which lies between the wood and the bark.

    1974   Sci. Amer. June 8/2–3   There is considerable interest in the industry in plastic papers based on polypropylene, polyethylene or polystyrene for archival, legal or map papers.

11. Further search for the words ‘contact paper’ on Google^® reveals that a number of different traders use the words ‘contact paper’ in relation to adhesive and non-adhesive plastic film and sheeting which they sell for use in covering shelves, books, etc.  Revealingly, perhaps, amongst these are which advertises shelf liner and contact paper made by the Applicant; and, which similarly advertises the Applicant’s contact paper.

12. Two points arise from this line of observation: firstly, it is apparent that the suggestion that the goods of the parties are not of the same description is without foundation; secondly, the parties’ trade marks lack, somewhat, for inherent adaptation to distinguish in relation to contact paper.

13. It is apparent that most of the goods of the Applicant which are in the form of adhesive plastic sheets, tapes or tabs are, in essence, the same as those of the Opponent, albeit with different uses in different classes suggested for them.  The only real difference between the goods is size and purpose – in essence the goods of the parties are adhesive plastic films of various sizes and widths which may be clear, coloured, or have signs, patterns, writing or maps applied to them and which may be used for a range of purposes.

1. The bulk of the goods of the parties are, in my consideration, (if not the same goods) goods of the same description.

2. Accordingly, the Opponent has established its ground under section 44 in relation to most of goods within the Applicant’s Specification.

3. I have had no submissions from either party concerning a suitably restricted specification of goods should the ground under section 44 be established.

Decision

1. Subsection 55(1) provides:

   55Decision

   (1)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.

2. I refuse to register application 1185461.

Costs

1. Having regard to the circumstances of this matter, that being the nature of the trade marks of the parties, I make no award of costs and direct that each party bear its own costs.

Iain Campbell Thompson
Hearing Officer
Trade Marks Hearings
27 November 2013