Jon Patrick Bennett v Dr Drip Pty Ltd

TRADE MARKS ACT 1995

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

Re:Oppositions by Jon Patrick Bennett to registration of trade mark applications 1264649 - Dr. DRiP & Device - and 1269905 - DR DRIP – both in Classes 35 & 37 and filed in the name of Dr Drip Pty Ltd

Delegate:

Michael Kirov

Representation:

Opponent: Relied on written submissions only, prepared by Emily Ito of Counsel instructed by Wood Marshall Williams Lawyers

Applicant: Michelle Gorton of Chrysiliou IP

Decision:

2010 ATMO 89

s 52 opposition – ss 43, 44, 58A, 60 and 62A considered– no relevant connotation in the opposed trade marks – trade marks under comparison neither substantially identical nor deceptively similar – use not likely to deceive or cause confusion – bad faith not shown - oppositions not established. Costs awarded against the Opponent.

Background

These are oppositions brought by Jon Patrick Bennett (“the Opponent”) pursuant to s 52 of the Trade Marks Act 1995 (“the Act”) to registration of the trade marks subject of application numbers 1264649 and 1269905 in the name of Dr Drip Pty Ltd (“the Applicant”).
Details of the opposed applications are as follows:

Application Number: 1264649

Priority Date: 25 September 2008

Services:Class 35: Retailing and wholesaling of plumbing and drainage supplies; franchising services
Class 37: Plumbing services; repair, installation and maintenance services

Trade Mark:

(“the Applicant’s Logo Mark”)

Application Number: 1269905

Priority Date: 28 October 2008

Services:Identical to those covered by application 1264649

Trade Mark: DR DRIP

The Applicant was incorporated on 9 February 1999 under the name “A.N. Smith Plumbing Pty Ltd” and the change to its current name, “Dr Drip Pty Ltd”, was officially recorded on 12 January 2001. It has traded under that name since that date, principally in the northern beach suburbs of Sydney. Its Secretary and sole Director, Andrew Norman Smith, indicates the Applicant “offers a full range of plumbing services including 24 hour emergency response, blocked drains, drain camera surveys, gas fitting, hot water service & replacement, rain water tanks and all other home maintenance plumbing services” and also “sells plumbing supplies to our customers such as tap ware, toilet and bathroom accessories and hot water systems”.
The Applicant is the owner of current trade mark registration 962682 covering “Plumbing, draining and gas fitting maintenance services” in Class 37, dating from 23 July 2003, for the mark . It is apparent from the Trade Marks Register that the Applicant also applied on 20 May 2002 to register the trade mark Dr Drip covering “Plumbing” in Class 1[1]. This application eventually lapsed on 15 January 2004 after no response was lodged to IP Australia’s initial adverse examination report.
[1] I note “plumbing” (services) would fall within Class 37 rather than Class 1.
The Opponent states that “from 1998 [he has] carried on business as a plumbing contractor in Queensland using the name ‘Drip Doctor’”. That said, he first applied to register “DRIP DOCTOR” as a business name in Queensland on 9 April 1999 and the registration certificate in evidence indicates the nominated business of “plumbing maintenance” commenced on 1 May 1999.
The Opponent and his wife, Belinda Kate Bennett, are the co-owners of three relevant trade mark registrations which pre-date the two opposed applications subject of these proceedings, (one of which also pre-dates the Applicant’s registration 962682), as set out in the table below:

Registration Number	Priority Date	Trade Mark	Specification
793839	13.05.99	Class: 37 Plumbing and drainage installation and maintenance services, roof installation and maintenance work
1064036	10.07.05[2]	Class: 11 Bath plumbing fixtures
1191583	7.08.07	Drip Doctor	Class: 37 Plumbing maintenance

[2] Registration 1064036 was filed on 10 July 2005, but appears to invalidly claim the same priority date as registration 793839 (which achieved registration on 16 June 2000) pursuant to s 45 of the Act.

For the sake of completeness I mention that the Opponent and his wife are also the co-owners of three further accepted applications in Class 35 filed on 12 January 2009 for marks containing or consisting of the words “DRIP DOCTOR”, all of which are currently being opposed by the Applicant. Since these three applications post-date the 2008 priority dates of opposed applications 1264649 and 1269905 they are however of no direct relevance to the present oppositions.
The Opponent filed the Notices of Opposition (“the Notices”) on 4 March 2009. I heard the matter as delegate of the Registrar of Trade Marks on 23 July 2010 in Sydney. The Opponent neither appeared, nor was he represented, at the hearing but relied on written submissions prepared by Emily Ito of Counsel instructed by Wood Marshall Williams Lawyers. Michelle Gorton of Chrysiliou IP appeared for the Applicant.
I confirm I am proceeding on the basis that the Opponent need only establish one or more of his grounds of opposition on the balance of probabilities.[3]
[3] Following Gyles J in Pfizer Products Inc v Karam (2006) 70 IPR 599. See also Chocolaterie Guylian N.V. v Registrar of Trade Marks (2009) 82 IPR 13 at [22] to [26].

Grounds of Opposition and the Evidence

The Notices, which are essentially identical, each nominate three grounds corresponding to ss 43, 58A and 60 of the Act. In written submissions which are dated 31 March 2010 but which were filed with IP Australia on or about 9 July 2010, (and, I understand, only copied to the Applicant’s attorneys on or about that date), however, the Opponent purported to include two further grounds based on ss 44 and 62A of the Act. At the hearing itself Ms Gorton formally objected to the inclusion of these two further grounds, although it was conceded the Applicant had had time to consider them and was prepared to respond to them. Indeed, as discussed below, the Applicant had served and filed further evidence which is on the face of it principally concerned with addressing the two further grounds based on ss 44 and 62A and the Applicant had formally addressed these grounds in its own written submissions.
Following receipt of a copy of the Opponent’s written submissions on or about 9 July 2010 the Applicant filed applications on 19 and 22 July 2010 for leave to rely on the further evidence detailed in paragraph 13 below. Ms Gorton confirmed that copies of these two applications, as well as copies of the further evidence itself, were emailed to the Opponent’s attorneys on 19 and 22 July 2010 respectively in addition to being served by mail. I note that IP Australia has not heard from the Opponent or his attorneys since receiving a copy of his written submissions on 9 July 2010 and I can only assume that the Opponent did not have any objection to the further evidence being admitted.
Notwithstanding the Applicant’s objection to inclusion of the two further grounds based on ss 44 and 62A, I have decided to consider them in this decision in the interests of fully canvassing the issues between the parties and given that the Applicant was prepared to address them. I confirm, accordingly, that for the same reasons I am also granting leave to the Applicant to rely on the further evidence it served and filed on 19 and 22 July 2010.
The evidence, then, that I am taking into account in this matter is as set out below:

Evidence in Support

▪Statutory Declaration by Jon Patrick Bennett made 28 May 2009, with Annexures A to R

▪Statutory Declaration by Belinda Kate Bennett made 28 May 2009

▪Statutory Declaration by Neil McCarthy made 1 June 2009

▪Statutory Declaration by Desley Jeanneret made 1 June 2009

▪Statutory Declaration by Janet Lind-Hansen made 1 June 2009

▪Statutory Declaration by Melanie Ferguson made 1 June 2009

▪Statutory Declaration by Ziggy Kaperon made 1 June 2009

Evidence in Answer

▪Statutory Declaration by Andrew Norman Smith made 19 November 2009, with Annexures AS-1 to AS-27

▪Statutory Declaration by Michelle Gai Gorton made 20 November 2009, with Annexure MGG-1

Applicant’s Further Evidence

▪Statutory Declaration by Andrew Norman Smith made 15 July 2010

▪Statutory Declaration by Harold Langford made 15 July 2010, with Annexures HL-1 and HL-2

▪Statutory Declaration by John Stuart Smith made 15 July 2010, with Annexure JS-1

▪Statutory Declaration by Justin David Steer made 15 July 2010

▪Statutory Declaration by Michelle Gai Gorton made 22 July 2010

Discussion

Section 43

Section 43 of the Act is reproduced below:
An application for the registration of a trade mark in respect of particular goods or services must be rejected if, because of some connotation that the trade mark or a sign contained in the trade mark has, the use of the trade mark in relation to those goods or services would be likely to deceive or cause confusion.
It is well established that to make out this ground there would need to be some connotation inherent in the opposed marks such that their use was likely to deceive or cause confusion. In Winton Shire Council v Lomas[4] (“WALTZING MATILDA”), for example, Spender J said:
Section 43 is directed to the mark itself. It is not concerned with any deception or confusion caused by the reputation in Australia of some other trade mark. That aspect of the matter is dealt with under s 60.
[4] (2002) 56 IPR 72 (at [19])
In Pfizer Products Inc v Karam[5] (“HERBAGRA”), to take a further example, Gyles J put it this way:
‘Connotation’ is a secondary meaning implied by the mark. The likelihood of deception or confusion must flow from the secondary meaning inherent in the mark itself. It is apparent that the underlying purpose of s 43 is a similar purpose to that lying behind ss 52, 53 and 55 of the Trade Practices Act 1974 (Cth). It is to prevent the public being deceived or confused as to the nature of the goods offered by reason of a secondary meaning connoted by the mark in question, rather than, for example, deception by reason of some similarity with other marks…
[5] (2006) 70 IPR 599 (at [53])
That said, the Opponent argued in his written submissions that the allegedly offending connotation in the opposed marks was conveyed by the words “Dr. Drip” (or “DR DRIP”) contained within each mark because:
The words “Drip Doctor” and the words “Dr. Drip” are so similar in appearance and sound that they have caused and are likely in future to cause confusion in the minds of suppliers and customers of the two businesses. The letters “Dr” with the letter “d” capitalised are pronounced “Doctor”. (JBennett par 15)
…
The Opponent’s evidence convincingly shows that there is a perception, among people in the intended market, “Drip Doctor” is so related to the Opponent that use of “Dr. Drip” by the Applicant will be deceptive and confusing because purchasers might incorrectly infer some sort of endorsement or relationship. The similarity of the Applicant’s application 1269905 is to a shortened form of the name used by the Opponent and also upon the true connotation within the mark itself. It is inevitable that any use of the word, “Dr Drip” will result in a deception of the consuming public, in addition to a loss of valuable business to Drip Doctor. The conclusion must inevitably be that the application contravenes section 43. (sic)
Even were the evidence before me to indicate that the Opponent enjoyed the kind of notoriety claimed in the quote above in relation to the DRIP DOCTOR trade mark (or name) I would reject this submission. Although Gyles J did observe in HERBAGRA, “An implication of sponsorship or association might qualify as such a secondary meaning or connotation”, that is really beside the point here. It remains the case that whatever connotation the Opponent claims is carried by the words “Dr. Drip” in the two opposed trade marks, the words apparently only have this connotation because of their alleged resemblance to another trade mark. In the above quoted passages from WALTZING MATILDA and HERBAGRA Spender J and Gyles J expressly state that deception caused as a result of similarity to another trade mark is outside the scope of s 43. The opposition ground based on s 43 of the Act is therefore not established.

Section 44

Insofar as relevant to these oppositions s 44 of the Act provides:
(1)…
(2)Subject to subsections (3) and (4), an application for the registration of a trade mark (applicant’s trade mark) in respect of services (applicant’s services) must be rejected if:
(a) it is substantially identical with, or deceptively similar to:
(i)a trade mark registered by another person in respect of similar services or closely related goods; or
(ii)a trade mark whose registration in respect of similar services or closely related goods 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 services is not earlier than the priority date for the registration of the other trade mark in respect of the similar services or closely related goods.
Note 1:For deceptively similar see section 10.
Note 2:For similar services see subsection 14(2).
The Opponent’s submission with respect to s 44 was brief and I will therefore quote it in its entirety:
The Opponent submits that the trade mark in application 1269905 (word) is identical or substantially identical with or deceptively similar to the trade mark “Drip Doctor”. Also, although application 1264649 (logo) contains additional information, namely the cartoon in ring image or logo mark, the device on the drop cartoon is not sufficient to prevent confusion and customers are likely to conclude that the services offered under each trade mark come from the same source.
The Opponent’s submission does not specifically identify which prior application(s) or registration(s) the s 44 ground is based upon, although it does refer to “the trade mark ‘Drip Doctor’”. I will accordingly base my consideration of the s 44 ground on registration 1191583 Drip Doctor (“the Opponent’s Registration”), this being one of the three registrations detailed in paragraph 6 above which are jointly owned by the Opponent and his wife[6]. As there indicated, the Opponent’s Registration covers “Plumbing maintenance” services in Class 37 and has a priority date of 7 August 2007.
[6] I note in passing that consideration of the further two registrations jointly owned by the Opponent and detailed in paragraph 6 above would in any event be redundant. If the Opponent were to succeed under s 44 solely through reliance on registration 1191583, then he will have the result he seeks. If he were to fail, then reliance on the other two registrations would not advance his case any further.
Given that the 7 August priority date of the Opponent’s Registration is earlier than the 2008 priority dates of the opposed applications, then to succeed under his s 44 ground it is sufficient if the Opponent establishes on the balance of probabilities that:
• the opposed applications cover similar services[7] to those covered by the Opponent’s Registration; and
• the opposed trade marks are substantially identical with, or deceptively similar to, the Opponent’s Drip Doctor trade mark.
[7] As defined in s 14(2) of the Act, namely the same services and/or services of the same description.
The generally accepted test for assessing substantial identity is as set out by Windeyer J in Shell Co of Australia Ltd v Esso Standard Oil (Aust) Ltd[8], where his Honour said:
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] (1963) 1B IPR 523 (at 528)
Dealing firstly with the Applicant’s DR DRIP (word) trade mark, when this is compared side by side with the Drip Doctor mark the difference between the two marks is, I believe, quite apparent. Each mark contains only two elements and neither their first element nor their second element is the same, albeit the marks contain what are essentially the same elements in reverse order. I consider this difference is sufficient for the two trade marks to be readily distinguished one from the other, both visually and aurally. Taking this into account I accordingly conclude the DR DRIP trade mark is not substantially identical to the Opponent’s Drip Doctor mark.
The Applicant’s Logo Mark is obviously even further removed from the Opponent’s Drip Doctor mark, featuring as it does a distinctive device in addition to containing the words “Dr. DRiP”. The two marks are plainly not substantially identical when compared side by side.
I thus turn to the issue of whether either of the Applicant’s marks is deceptively similar to the Drip Doctor trade mark. In this regard s 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 trade mark that it is likely to deceive or cause confusion”. This is not however an abstract question, but rather will depend upon the context in which the marks under comparison may be used.
As was pointed out[9] by French J (as he then was) in Registrar of Trade Marks v Woolworths Ltd[10] (“the Woolworths Metro case”), the logic of s 44 suggests the determination of whether, and to what degree, an applicant’s goods or services are similar to, or closely related to, relevant other goods and services is “logically antecedent to” assessing the deceptive similarity of the trade marks under comparison. Indeed, French J explicitly approves the observation in Wilcox J’s first instance decision in the Woolworths matter[11] that, “The closer the relationship between the services and particular goods, the more likely any similarity in marks will prove deceptive”.
[9] In the context of closely related goods and services, but relevant also in the context of “similar services” as defined in s 14(2) of the Act.
[10] (1999) 45 IPR 411
[11] Woolworths Limited v Registrar of Trade Marks (1998) 42 IPR 615 (at 624)
Neither the Opponent nor the Applicant addressed the question of whether the opposed applications cover similar services to the “Plumbing maintenance” services covered by the Opponent’s Registration. Nevertheless, with the arguable exception of “franchising services” (not specifically limited to any particular field) in Class 35, I am satisfied the opposed applications do otherwise cover similar services, indeed do cover the same services in the case of the “maintenance services” mentioned in their Class 37 specifications. Bearing this in mind, I confirm I have considered the deceptive similarity issue on the basis that both parties’ trade marks might in principle be used for essentially the same services.
In comparing trade marks with a view to assessing whether they are deceptively similar, Dixon and McTiernan JJ provided the following guidance in Australian Woollen Mills Limited v F S Walton and Co Limited[12]:
In deciding this question, the marks ought not, of course, to be compared side by side. An attempt should be made to estimate the effect or impression produced on the mind of potential customers by the mark or device for which the protection of an injunction is sought. The impression or recollection which is carried away and retained is necessarily the basis of any mistaken belief that the challenged mark or device is the same. The effect of spoken description must be considered. If a mark is in fact or from its nature likely to be the source of some name or verbal description by which buyers will express their desire to have the goods, then similarities both of sound and of meaning may play an important part. The usual manner in which ordinary people behave must be the test of what confusion or deception may be expected. Potential buyers of goods are not to be credited with any high perception or habitual caution. On the other hand, exceptional carelessness or stupidity may be disregarded. The course of business and the way in which the particular class of goods are sold gives, it may be said, the setting, and the habits and observation of men considered in the mass affords the standard. Evidence of actual cases of deception, if forthcoming, is of great weight.
[12] (1937) 58 CLR 641

In the same case, Dixon and McTiernan JJ went on to say:
It depends on a combination of visual impression and judicial estimation of the effect likely to be produced in the course of the ordinary conduct of affairs.
As mentioned above, in assessing whether trade marks are deceptively similar one should keep in mind the context and the marketplace in which the trade marks are, or might fairly be, used. In the often quoted words of Parker J (as he then was) in In Re Application by the Pianotist Co Ltd[13]:
You must take the two words. You must judge of them, both by their look and by their sound. 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. In fact, you must consider all the surrounding circumstances; and you must further consider what is likely to happen if each of those trade marks is used in a normal way as a trade mark for the goods of the respective owners of the marks.
[13] (1906) 1A IPR 379 (at 380)
The further matters to be borne in mind under the Act in assessing deceptive similarity were conveniently summarised by French J in the Woolworths Metro case at [50]:
In Southern Cross Refrigerating Co v Toowoomba Foundry Pty Ltd (1954) 91 CLR 592 at 594-5, which concerned the 1905 Act, Kitto J set out a number of propositions which have frequently been quoted and applied to the 1955 Act. The essential elements of those propositions continue to apply to the issue of deceptive similarity under the 1995 Act. Applied also to service marks and absent the imposition of an onus upon the applicant they may be restated as follows:
(i) To show that a trade mark is deceptively similar to another it is necessary to show a real tangible danger of deception or confusion occurring. A mere possibility is not sufficient.
(ii) 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.
(iii) In considering whether there is a likelihood of deception or confusion all surrounding circumstances have to be taken into consideration. These include the circumstances in which the marks will be used, the circumstances in which the goods or services will be bought and sold and the character of the probable acquirers of the goods and services.
(iv) The rights of the parties are to be determined as at the date of the application.
(v) The question of deceptive similarity must be considered in respect of all goods or services coming within the specification in the application and in respect of which registration is desired, not only in respect of those goods or services on which it is proposed to immediately use the mark. The question is not limited to whether a particular use will give rise to deception or confusion. It must be based upon what the applicant can do if registration is obtained.
In respect of the last proposition, Mason J observed in Berlei Hestia Industries Ltd v The Bali Company Inc [1973] HCA 43; (1973) 129 CLR 353 at 362:
“...the question whether there is a likelihood of confusion is to be answered, not by reference to the manner in which the respondent has used its mark in the past, but by reference to the use to which it can properly put the mark. The issue is whether that use would give rise to a real danger of confusion.”
In the analysis which follows I will concentrate on a comparison of the DR DRIP (word) mark with the Drip Doctor mark, since on the face of it this mark is more similar to the Opponent’s mark than is the Applicant’s Logo Mark.
When the Applicant’s DR DRIP word mark, in particular, is compared with the Opponent’s Drip Doctor mark, there can be no doubt the two marks are “similar” in the ordinary English sense of the word. They share the essentially identical elements, albeit in reverse order. In my view, however, this is not of itself sufficient reason to characterise the marks as “deceptively similar” as defined in s 10 of the Act and in the sense discussed by the Courts in the cases quoted above.
The initial elements of the marks, DR (or DOCTOR) and DRIP, neither look alike nor sound alike and it has long been held that, as was said in London Lubricant’s (1920) Application[14], “…the first syllable of a word is, as a rule, far the most important for the purpose of distinction”.
[14] (1925) 42 RPC 264 (at 279)
Moreover, it has likewise long been held that marks must be compared as wholes and in this regard too the marks as wholes neither look alike nor sound alike. As was said in Clark v Sharp[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 general effect of the respective wholes.
[15] (1898) 15 RPC 141 (at 146)
In her written submissions Ms Gorton argued in addition that, as wholes, the DR DRIP and Drip Doctor marks did not necessarily convey the same meaning:
There is also a major different (sic) in the connotation of the respective marks. One alludes to a “Dr” title and the other to a field of activity. For example, if someone was called Dr Knee and someone else offered services under KNEE DOCTOR, the two would not be confused.
It is in any event well established that conveying the same meaning, or the same “idea”, is not determinative of deceptive similarity. That is to say, to the extent that the DR DRIP mark does convey a similar idea to that of the mark Drip Doctor in the context of plumbing maintenance services, this would not of itself dictate a finding of deceptive similarity. This is particularly so where the idea is itself a common one or entails a tinge of descriptiveness. In concluding the trade mark “Rainmaster” was not deceptively similar to the registered mark “Rain King”, (where both marks were used or proposed for use in connection with water sprinklers), the High Court noted in Cooper Engineering Co Pty Ltd v Sigmund Pumps Ltd[16] that any similarity in the idea conveyed was something that might be taken into account when the marks being compared otherwise “really looked alike or sounded alike”. As previously mentioned, the elements the parties’ marks share notwithstanding, the marks are readily distinguishable both visually and aurally in my opinion.
[16] (1952) 86 CLR 536 (at 539)
In my view a particularly significant factor in assessing whether the parties’ marks are deceptively similar is that neither mark contains a great deal of inherent distinctiveness in respect of plumbing related services, notwithstanding the marks qualify for registration on a prima facie basis under IP Australia’s current practice regarding such marks[17]. The shared element DRIP obviously alludes to the services in question. On this point, by way of example, Burchett J in comparing the trade marks VOGUE and EUROVOGUE (for clothing) said in Conde Nast Publications Pty Ltd v Virginia Taylor[18]:
At the same time, it should be borne in mind that ``vogue'’ is neither a made-up word nor a word wholly without any direct application, in the ordinary use of language, to the goods in question. A trader is not entitled to monopolise such a word, denying its use entirely to other traders. Deceptive or confusing use is barred by the applicant's registration, but the court should be careful not to shut out inappropriately other traders from the fair use of the language in ways that will not in reality deceive or confuse.
[17] See Paragraph 13.2 of Part 22 of the Australian Trade Marks Manual of Practice and Procedure, which sets out guidelines for Examiners considering trade marks which feature the word “doctor”.
[18] (1998) 41 IPR 505 (at 511-12)
Moreover, the shared element DOCTOR commonly appears in registered trade marks in both Classes 35 and 37. Indeed, a check of the Register suggests the desire of traders to combine the element DOCTOR with other, apparently descriptive, words is extremely common. Currently registered marks of this kind in Class 37 (all owned by different parties) include, for example, HOSE DOCTOR, THE TAP DOCTOR & Device, PUMP DOCTOR & Device, THE SHOWER DOCTOR & Device, The Sprinkler Doctor, Doctor Damp, Dr GAS, Dr DRAINS, DOCTOR GUTTER and many, many others.
It is apparent, too, that minor differences between marks of this kind have in the past been considered sufficient for them to coexist on the Register (and presumably in the marketplace). Thus, for example, the following registrations currently coexist covering the same computer related services in Class 37, all owned by different parties:

679356 PC DOCTOR
809168 COMPUTER DOCTOR & Cross Device
841607 Dr. PC & Cross Device
1226096 AUSTRALIAN COMPUTER DOCTORS & Device
1292837 THE MOBILE COMPUTER DOCTOR & Device

Indeed, the Applicant’s own registration 962682 Dr. DRiP & Device (shown in paragraph 4 above) has already coexisted on the Register with the Opponent’s registration 793839 DRIP DOCTOR & Device (shown in paragraph 6 above) for several years and in fact pre-dates the Opponent’s registration 1191583 Drip Doctor, which the Opponent relies on as the basis for his s 44 ground.
Nor do the parties’ relevant marks merely coexist on the Register. As mentioned earlier, the Opponent claims that “from 1998 [he has] carried on business as a plumbing contractor in Queensland using the name ‘Drip Doctor’”. For its part, the Applicant has filed and served considerable evidence of its use of trade marks containing or consisting of the words “Dr. Drip”, (shown, inter alia, through copies or pictures of tax returns, advertising and promotional materials, signage and banners, uniforms, fleet vehicles, newsletters and testimonials), since at least 2001. Notwithstanding this apparent concurrent use over many years, I agree with Ms Gorton’s submission that the few examples of instances of actual confusion contained in the Opponent’s evidence are, to put it kindly, less than impressive and are certainly not particularly significant.
When all the foregoing matters are weighed up and when I consider the DR DRIP and Drip Doctor marks as wholes and attempt to assess their likely effect or impression in the minds of relevant consumers, I am not satisfied deception or confusion amongst a significant number of people was likely as at the relevant date. I do not on balance believe there was a real tangible danger of a number of persons being left in doubt or caused to wonder whether the parties’ services dealt with under their respective trade marks came from the same source.
I have reached the same conclusion as regards the Applicant’s Logo Mark and the Opponent’s Drip Doctor mark.
The Opponent’s s 44 ground is accordingly not established.

Section 58A

Insofar as relevant to these oppositions s 58A of the Act provides:
(1)This section applies to a trade mark ( section 44 trade mark ) the application for registration of which has been accepted because of:
(a) subsection 44(4);
Note: Subsection 44(4) prevents rejection of an application for registration of a trade mark that is substantially identical with, or deceptively similar to, a registered trade mark or a trade mark whose registration is being sought where the first‑mentioned trade mark has been continuously used since before the priority date of the other trade mark.
The Opponent’s submission with respect to its s 58A ground was as follows:
The section 58A ground would become relevant in the event that one, part of or both applications for registration by the Applicant would be accepted (whether or not subject to any conditions or limitations) because of subsection 44(4).
Section 44(4) of the Act, as indicated in the “Note” to s 58A(1) reproduced above, might only be invoked where an applicant has relied upon evidence of prior continuous use to overcome an objection to registration taken under ss 44(1) or 44(2). In the present oppositions no such objection has been taken and the Applicant does not in any event make any claim to have used the opposed trade marks prior to any relevant use by the Opponent. Thus s 44(4) is not applicable to the opposed applications and neither can s 58A be.
The opposition ground based on s 58A of the Act is therefore not established.

Section 60

Section 60 of the Act is reproduced below:

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.

The Opponent submits that his trade mark Drip Doctor had acquired the requisite reputation as at the 25 September 2008 and 28 October 2008 priority dates of the opposed applications. As with the s 44 ground discussed above, what needs to be considered in the case of s 60 is the notional use the Applicant might make of the opposed trade marks rather than the actual manner in which they may have been used in the past. The issue is whether such use would be likely to deceive or cause confusion in light of the reputation of the Opponent’s Drip Doctor trade mark as at the relevant dates. What, then, does the evidence say about the Opponent’s use of his trade mark and the reputation it may have thereby achieved?
Evidence concerning the use and reputation of the Drip Doctor trade mark, such that it is, is principally contained in the declaration by the Opponent himself, Jon Patrick Bennett. The matters attested to by Mr Bennett which occurred before the relevant dates and which might be considered relevant to the mark’s claimed reputation are summarised below:

He says, “that from 1998 [he has] carried on business as a plumbing contractor in Queensland using the name ‘Drip Doctor’”.
On 9 April 1999 he applied to register “Drip Doctor” as a business name in Queensland. He annexes an extract from the relevant register indicating his business of “plumbing maintenance” commenced from 1 May 1999, with its “principal place of business” and its “trading address” in Buderim, Queensland. The extract, obtained on 10 December 2008, indicates recordal of assignment of the registration to “Drip Doctor Australia Pty Ltd” (a company incorporated on 9 January 2007) was made on 1 March 2007.
On 13 May 1999 he and his wife filed what is now registration 793839 DRIP DOCTOR & Device in Class 37 (detailed in paragraph 6 above).
On 1 August 2004 he obtained an Australian Business Number from the Australian Taxation Office. The extract from the ATO’s Australian Business Register annexed to his declaration indicates he was then trading under the name “DRIP DOCTOR” as a “sole trader”.
On 2 February 2005 he registered <dripdoctor.com.au> as a domain name.
On 10 July 2005 he and his wife filed what is now registration 1064036 DRIP DOCTOR & Device in Class 11 (detailed in paragraph 6 above).
On 9 January 2007 he had the company “Drip Doctor Australia Pty Ltd” incorporated “with a view to the business which [he] had previously conducted in partnership with [his] wife being acquired and operated through the company”.
On 7 August 2007 he and his wife filed what is now registration 1191583 Drip Doctor in Class 37 (detailed in paragraph 6 above).
On 8 August 2007 he had the company “Drip Doctor Holdings Pty Ltd” incorporated “with the intention that it would act as the holding company for the intellectual property in the name of ‘Drip Doctor’ and that it would license the intellectual property to a company Drip Doctor Franchising Pty Ltd ACN 132 635 280”.
On 8 August 2007 he also had the company “Drip Doctor Franchising Pty Ltd” incorporated “with the intention of establishing a franchise system for a vehicle based plumbing maintenance service using the intellectual property which [he] had acquired jointly with [his] wife Belinda Kate Bennett in the name ‘Drip Doctor’”.

The Opponent makes the further (unsubstantiated) statements in his declaration in relation to the use and reputation of his Drip Doctor trade mark:
I say that each of the registrations of the business names (sic), Trade Marks, company names and domain names (sic) have been used continuously by myself and my wife and by our company Drip Doctor Australia Pty Ltd since they were registered.
My wife and I and our company Drip Doctor Australia Pty Ltd have established goodwill and a reputation in respect of the name “Drip Doctor” which is a valuable commercial asset.
It is the intention of myself and my wife to develop, jointly with Darren Wedge, a business associate, an Australia wide franchise system using the name and Trade Marks including the words “Drip Doctor”.
…
I say that the Trade Marks registered in the name of the Opponent (sic) 1064036 and 1191583 have acquired a reputation in Australia.
Belinda Kate Bennett does not add anything more of significance to the Opponent’s s 60 ground in her brief declaration, merely saying that she is the Opponent’s wife and joint owner of trade mark registrations 793839, 1064036 and 1191583 and that:
I have read the Statutory Declaration of JON PATRICK BENNETT made on the 28^th day of May 2009 and say that all the matters set out in that Statutory Declaration which are within my knowledge are true and that all the other matters set out in it I believe to be true.
Nor do the remaining five declarations constituting the Opponent’s evidence add anything of significance to the Opponent’s s 60 ground. The declarations were all made on 1 June 2009 and are in the identical format, as reproduced below:
1. I am a [        ] of the business “Drip Doctor”.
2. I have known Jon Patrick Bennett for [   ] years.
3. I say that Jon Patrick Bennett has a reputation in relation to the use of the name “Drip Doctor” in respect of the business carried on under that name and has, to my knowledge, had that reputation since about [    ].
4. I am informed that a business providing similar services to those provided by Jon Patrick Bennett under the name “Drip Doctor” is being conducted under the name “Dr Drip”.
5. I believe that the names “Drip Doctor” and “Dr Drip” are so similar as to cause confusion in the minds of customers and suppliers dealing with either or both of the two businesses.
For the sake of completeness I mention that the “blanks” in paragraphs 1, 2 and 3 above are completed by Neil McCarthy, Desley Jeanneret, Janet Lind-Hansen, Melanie Ferguson and Ziggy Kaperon respectively in the following manner:
1. “customer”, “customer”, “customer”, “customer” and “customer”.
2. “2”, “3”, “4”, “5” and “2”.
3. [left blank], “2006”, “~~about~~ I’ve known him”, “2004” and [left blank].
As highlighted by Ms Gorton, there is no evidence before me of any actual revenue generated through use of the Drip Doctor trade mark and, indeed, no examples of the mark in use in the course of trade for any goods or services. Nor is there any information concerning how the mark may have been advertised or promoted, other than Mr Bennett’s statement that on 2 February 2005 he registered <dripdoctor.com.au> as a domain name.
I am thus unable to say whether the Opponent’s Drip Doctor trade mark in fact enjoyed the kind of reputation contemplated by s 60 as at the relevant dates (or at all). Nor am I able to speculate on the issue. As was noted by the Registrar’s delegate in Sara Lee Corporation v Bali Blue Pty Ltd[19]:
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.
[19] (2003) 59 IPR 619 (at 624)

I accordingly find that the Opponent has not established his s 60 ground.

Section 62A

Section 62A of the Act provides:
The registration of a trade mark may be opposed on the ground that the application was made in bad faith.
The Opponent’s submission in relation to this ground was essentially that bad faith on the Applicant’s part might be “inferred”, based on the fact that it applied to register the opposed trade marks after the Opponent had obtained his registrations 793839, 1064036 and 1191583 (and notwithstanding the Applicant was already the owner of registration 962682 and had already been using the “Dr. Drip” name and trade mark for some seven years). The Opponent further submitted that bad faith might be inferred with respect to the “franchising services” in the Class 35 specifications because:
At the relevant date (sic) of the applications Class 35, in particular “franchising service” (sic), was made (sic) without an intention to use the mark (sic) in franchising services and there has been no evidence of any plan to carry on such services in Australia.
Dealing firstly with the claimed lack of intention to use, this is not a matter with which s 62A is concerned and is not in any event supported by any of the evidence before me. Had the Opponent wanted to press such a claim then his proper course would have been to nominate such ground under s 59 of the Act and to provide relevant evidence. I would only add that the High Court’s decision in Aston v HarleeManufacturing Co[20] is longstanding authority that applying to register a trade mark is prima facie evidence of intention to use. Subsequent decisions indicate this prima facie presumption may be rebutted where the evidence readily gives rise to the drawing of an adverse inference and that evidence remains unchallenged and unrebutted by the applicant[21]. The onus does not however shift to an applicant merely because an opponent questions the applicant’s intention in its Notice of Opposition or submissions[22] and provides no relevant supporting evidence.
[20] (1960) 103 CLR 391
[21] See for example Phillip Morris Products SA v Sean Ngu [2002] ATMO 96; Sapient Australia Pty Ltd and Sapient Corporation v SAP Aktiengesellschaft (2002) 55 IPR 638; Danjaq, LLC v Resource Capital Australia Pty Ltd (2004) 61 IPR 651
[22] See for example Medley Distilling Company v Croakers Gully Australia (2000) 53 IPR 430; Wal-Mart Stores Inc v Ozark-London Ltd (2004) 62 IPR 165
Nor am I prepared to draw the inference of bad faith sought by the Opponent regarding the balance of the services claimed by the opposed applications. Based on the evidence before me the position here is in my view in no way analogous to that in the cases the Opponent referred to in his submissions, namely Hard Coffee Pty Ltd v Hard Coffee Main Beach Pty Ltd[23]and Wilkshire v Bombala Council[24]. In this regard I agree with Ms Gorton’s summary of the kind of things the Hearing Officer in the Hard Coffee case suggested an opponent would need to show to make out a case under s 62A, namely:

An element of intentional dishonesty;
A deliberate attempt to mislead the Registrar in some way; or
(Where an applicant claims innocence or ignorance concerning the matters alleged to constitute bad faith), whether a “reasonable man standing in the shoes of the applicant” should have been aware he ought not have applied for registration.
[23] [2009] ATMO 26 (1 April 2009)
[24] (2009) 82 IPR 325

I accordingly find that the Opponent has not established his ground under s 62A.

Decision

Section 55 of the Act provides:
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.
I have found that none of the opposition grounds the Opponent sought to press has been established. I have accordingly decided the opposed trade mark applications may proceed to registration one month from the date of this decision. If the Registrar has been served with a notice (or notices) of appeal before that time, I direct that registration shall not occur until the appeal(s) has/have been decided or discontinued.

Costs

Both parties made a claim for costs. As there is nothing before me suggesting that costs should not follow the general rule, I award costs against the Opponent in accord with Schedule 8 of the Trade Mark Regulations 1995, with costs for the second of the two oppositions to be assessed as set out in the table attached to the Hearing Officer’s decision in James Hardie & Co Pty Ltd v Hume Industries (Malaysia) Berhad (2001) 53 IPR 591.

Michael Kirov

Hearing Officer

Trade Marks Hearings

22 September 2010

[2010] ATMO 89

22 September 2010

Key Legal Topics

Areas of Law

Civil Procedure

Negligence & Tort

Legal Concepts

Appeal

Costs

Damages

Duty of Care

Negligence

Standing