Kaeser Kompressoren SE v Atlas Copco Drills AB
[2018] ATMO 77
•17 May 2018
TRADE MARKS ACT 1995
DECISION OF A DELEGATE OF THE REGISTRAR OF TRADE MARKS WITH REASONS
Re:Opposition by Kaeser Kompressoren SE to extension of protection to Australia of IRDA no. 1687593 (7, 12, 37) - EASER - in the name of Atlas Copco Rock Drills AB.
Delegate: M. Cooper Representation: Opponent: Fisher Adams Kelly Callinans
Holder: Written submissions from Spruson & FergusonDecision: 2018 ATMO 77
Opposition to extension of protection to IRDA – r.17A.33 of the Trade Marks Regulations 1995 - grounds under sections 42(b), 43, 44, 58, 60 and 62A of the Trade Marks Act 1995 and r.4.15A of the Trade Marks Regulations 1995 pressed – no ground of opposition established – protection of IRDA to be extended to Australia.Background
1. In these proceedings under the Trade Marks Regulations 1995 (‘the Regulations’) Atlas Copco Rock Drills AB (‘the Holder’) seeks extension to Australia of the protection afforded by its international registration of the trade mark detailed below.
IRDA No: 1687593
IR No.: 1242812
Filing Date: 21 January 2015
Convention Priority Date: 3 December 2014
Trade Mark: EASER (‘the Trade Mark’)
Specification of Goods & Services:
Class 7:
Construction and mining equipment namely mobile drilling rigs and parts and fittings for mobile drilling rigs
Class 12:
Vehicles and conveyances namely vehicles for mobile drilling rigs and parts and fittings for vehicles and conveyances for mobile drilling rigs
Class 37:
Installation and repair of mobile drilling rigs; installation and repair of remote control apparatus for controlling of mobile drilling rigs; installation and repair of vehicles and conveyances for mobile drilling rigs
2. On 21 January 2015, the Holder applied to extend protection of its International Registration to Australia. The Trade Mark was examined as mandated by regulation 17A.12 of the Regulations and advertised as accepted for possible protection on 7 May 2015 in the Australian Official Journal of Trade Marks.
3. On 18 June 2015, Kaeser Kompressoren SE (‘the Opponent’) filed a Notice of Intention to Oppose the extension of protection to the IRDA. Reg 17A.34 of the Regulations relevantly provides that protection of an IRDA may be opposed on any of the grounds on which a domestic trade mark application may be rejected (s39 to 44) and also on the grounds of opposition set out under sections 58 to 61 and 62A of the Trade Marks Act 1995 (‘the Act’). On 9 July 2015 it filed its Statement of Grounds and Particulars (‘SGP’) which specified grounds under sections 42, 43, 44, 58, 60, 62A of the Act and r.4.15A of the Regulations.
4. The Holder filed a Notice of Intention to Defend on 19 August 2015.
5. The parties requested a cooling off period which expired on 21 June 2017.
6. On 3 August 2017 IP Australia wrote to the Holder and the Opponent noting that neither party had requested a hearing and advising that a decision would be made on the basis of the evidence and any submissions filed.
7. Evidence and submission/s were filed as discussed below.
Evidence
8. Evidence in Support was filed by the Opponent on 24 November 2015. It comprised a statutory declaration by Peter Eckberg, Managing Director of KAESER Compressors Australia Pty Ltd., a wholly owned subsidiary of the Opponent, and associated exhibits, PE-1 to PE-33 (‘the Eckberg Declaration’).
9. In his declaration Mr. Eckberg outlined the Opponent’s history, noting it commenced operation in 1919 in Germany as a machine workshop and started manufacturing reciprocating compressors in the 1950s. He claimed that ‘the Opponent ranks amongst the world’s largest and most successful compressor manufacturers’ and is represented globally ‘in over 100 countries.’ In relation to Australia, he noted that KAESER Compressors Australia Pty Ltd started operation in 1990 and has its head office in Dandenong, from which it ‘provides comprehensive air compressor sales, blower sales, compressor services and compressor repairs.’ Prior to this, from 1984, its goods and services were provided in Australia by independent distributors. In addition, it has ‘a nationwide network of sales and service centres and authorised partners.’ The registered and pending Australian KAESER trade marks were listed and exhibited to the Eckberg Declaration (‘the KAESER trade marks’). A table was also provided claiming to demonstrate the use of the KAESER trade marks in Australia since 1984 in relation to various goods including compressors, dryers, filters and separators, air receivers, blowers, pumps and other equipment. In addition, Mr. Eckberg claimed that since 1990 the KAESER trade marks had been used in relation to services such as air service repair and maintenance, preventative maintenance service agreements, the ‘Kaeser’ energy saving system, and air demand analysis, among others. The list of industries to which the goods and services are provided was also listed and included construction, mining, agriculture, building materials, and many others.
10. Mr. Eckberg stated that ‘Manufacturing Managers, Maintenance Managers, Engineering Managers, and Project Managers from the above industries most commonly purchase the Opponent’s KAESER Goods and Services.’ He also claimed that ‘approximately 36% of KAESER Compressors Australia Pty Ltd.’s Australian customers are directly or indirectly related to the mining sector.’
11. Evidence of sales revenue and advertising expenses for the period 2004-2013 was provided Copies of invoices were also exhibited however only one of the invoices bore the Opponent’s trade mark. Conversely significant evidence of the Opponent’s use of the KAESER trade marks was demonstrated in the exhibits to the Eckberg Declaration via promotional materials, brochures, product guides, press releases, magazine articles and evidence of the Opponent’s social media presence.
12. Noting that the goods and services of the IRDA are related to mobile drilling rigs and associated parts and fittings, Mr. Eckberg claimed that the ‘Opponent’s KAESER Goods, especially compressors, are adapted for use on, or in conjunction with, drilling rigs.’ He claimed that the Opponent and the Holder ‘compete in tendering and quoting in 85% of all cases in the mining and non-mining sector.’ He stated that he had an ‘extensive knowledge of the market’ and it was his opinion ‘that consumers will mistakenly believe the products and services provided under the EASER trade mark are manufactured by, sourced from, associated with and/or endorsed by the Opponent or its Australian subsidiary.’ And further that ‘[s]uch incorrect and misleading representations are likely to cause damage to the business and goodwill of the Opponent and its Australian subsidiary.’
13. The Evidence in Answer was filed by the Holder on 24 February 2016. It comprised the statutory declaration of Hanna Knutsson, Global Communications and Brand Manager for the Holder, and was accompanied by exhibits 1-8 (‘the Knutsson declaration’).
14. Ms. Knutsson outlined the Holder’s company structure and history, noting that it was established in Sweden in 1873 and that there are now 340 companies in the Atlas Copco group. She stated that the company manufactures and sells goods and services in more than 189 countries and has business operations in 90 countries. She listed the four main business sectors in which the company provides goods and services including compressors, construction, mining and drilling and power tools. The many different trade marks owned by the Holder, across the world and in Australia, were exhibited.
15. Ms. Knutsson then outlined the Holder’s history in Australia, stating that the first office was established in 1950 and the company soon expanded across the country, to ‘over 40 sales and service locations’. She stated that the Holder is ‘part of Atlas Copco’s mining and drilling business sector, manufacturing and selling mining, drilling and rock excavation equipment in Australia and worldwide, as well as providing maintenance and support services for those goods.’
16. In relation to claims in the Eckberg Declaration, that the Holder is in direct competition with Opponent and that they compete in 85% of tenders and quotes relating to mining and non-mining applications, she noted, in summary, that
· The Atlas Copco Group and the Opponent are competitors and do compete in ‘various tender and quotation processes’, however
· only a ‘small fraction of those tender and quotation processes would relate to the goods and services provided under the Holder’s EASER mark’. The ‘vast majority’ of tenders and quotations relate to other trade marks owned by different Atlas Copco companies and , in any event,
· during a tender or quote process ‘each company involved in that process submits its own tender or quotation document referring to its own goods or services. It is therefore abundantly clear to anyone viewing those documents which company is offering which goods and services, and under which trade marks.’
17. In this context Ms. Knutsson denied that there would be any consumer deception or confusion as to the origin of the goods. She also contended that ‘there is no likelihood that consumers would confuse or otherwise believe that the goods and services provided by my company under the EASER mark are related to, or associated in any way with, Kaeser or its goods and services.’
18. Ms. Knutsson stated that the Opponent has opposed registration of the Trade Mark in several other jurisdictions, including in Chile. She attached as an exhibit to her declaration a decision of the Chilean Trademark Office in which the Opponent had also similarly challenged registration of the Trade Mark. That opposition failed with the decision maker in that instance finding that
‘it is demonstrated that each has an independent sign and both are owners of their own concept which can be easily recognized and distinguishable by the public consumer, which allows it to be reasonably assumed that these could coexist peacefully in the market.’
19. It was further determined that:
‘it is not shown how the requested Trademark could cause error or confusion, regarding the quality, genre, or origin of the coverage that is being protected.’[1]
[1] Exhibit 7
20. Ms. Knutsson further noted, and attached exhibits demonstrating, that the Trade Mark and the KAESER trade marks co-exist in the European Union, Canada and Peru.[2]
[2] Exhibit 8
Submissions
21. Only the Holder provided written submissions.
22. In those submissions the Holder’s representative addressed each of the grounds of Opposition as particularised in the SGP. They are discussed further below in the consideration of the opposition grounds.
Grounds and Onus
23. The Opponent bears the onus of establishing one or more grounds of opposition on the balance of probabilities.[3]
[3] Telstra Corporation Limited v Phone Directories Company Pty Ltd [2015] FCAFC 156 affirming the approach of Gyles J in Pfizer Products Inc. v Karam [2006] FCA 1663; (2006) 70 IPR 599 [6-26]
24. The relevant date at which the grounds under regulation 17A.34 must be considered is the filing date of the opposed application.[4]
[4] Southern Cross Refrigerating Co v Toowoomba Foundry Pty Ltd (1954) 91 CLR 592 [595]
Consideration and reasons
25. The Opponent has particularised a number of grounds of opposition however it has not provided any submissions articulating the basis for its assertions in this regard. In the circumstances I have had regard to the materials filed by the Opponent, that is, its SGP and the Eckberg declaration, in an effort to understand the basis for its claims.
Grounds of Opposition
26. Section 42 of the Act provides:
Trade mark scandalous or its use contrary to law
An application for the registration of a trade mark must be rejected if:
(a) the trade mark contains or consists of scandalous matter; or
(b) its use would be contrary to law.
27. In relation to this ground, the SGP asserted that use of the opposed Trade Mark ‘is contrary to Australian Law within the meaning of section 42(b) of the Trade Marks Act 1995, because such use would be contrary to the Competition and Consumer Act 2010 including sections 18 and 29 of the Australian Consumer Law.’ It was further submitted that use of the opposed mark ‘is contrary to Australian Law within the meaning of s.42(b) of the Trade Marks Act1995 because such use amounts to passing off at common law.’
28. The contents of the Eckberg Declaration do not support the above claims. As a result, there is neither evidence nor submissions before me establishing how, it is contended, that the Trade Mark contravenes these laws.
29. In relation to s.42(b), the Holder relied on its submissions regarding s.60 and contended that the ground was not established.
30. As was noted by Rangiah J in Primary Health Care Limited v Commonwealth of Australia, with whom, in this regard, Katzmann J and Greenwood J agreed:
Section 42(b)of the TMA requires that the use of atrade mark “would be” contrary to law. It is not enough for a party opposing registration to show that s 18 of the ACL or s 52 of the TPA might be contravened. The opponent must prove, on the balance of probabilities, that the provision would be contravened by use of thetrade mark[5]
[5] Primary Health Care Limited v Commonwealth of Australia [2017] FCAFC 174 [411]
31. Therefore the onus is on the Opponent to establish that use of the Trade Mark would be, rather than could be, contrary to law on the balance of probabilities.
32. As I have mentioned, nothing has been provided by the Opponent that substantiates its claims in this regard.
33. In the circumstances, the Opponent has not established this ground of opposition.
Section 43
34. Section 43 of the Act provides:
Trade mark likely to deceive or cause confusion
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.
35. The meaning of ‘connotation’ was discussed by Gyles J in Pfizer Products Inc v Karam (‘Pfizer’) when he commented:
‘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 similarity with other marks (TGI Friday’s Australia Pty Ltd v TGI Friday’s Inc [2000] FCA 720; (2000) 100 FCR 358 at [43]; McCorquodale v Masterson at [25]–[26]).[6]
[6]Pfizer Products Inc v Karam [2006] FCA 1663 [53]
36. Any relevant connotation within the Trade Mark must be more than mere ‘allusion’ or ‘suggestion’[7]. Further, for a mark to be rejected under s 43, there must be a ‘real tangible danger of deception or confusion’[8]. It is insufficient that exceptionally stupid or careless consumers might be confused[9].
[7] Aktion Zahnfreundlich v Suntory Limited (1998) 42 IPR 593 and Effem Foods P/L v Star-Kist Foods Inc (2000) 50 IPR 121
[8] McCorquodale v Masterson [2004] FCA 1247 [63]
[9] Scotch Whisky Association v De Witt [2007] FCA 1649 [61]
37. With regard to this ground, the Holder submitted that there was no relevant connotation in the word ‘EASER’, that it ‘is an invented word and it has neither meaning nor any meaning sufficiently tangible to amount to deception or confusion’.
38. In its SGP, the Opponent claimed in this regard that ‘the opposed trade mark contains a connotation and/or secondary meaning that would reasonably be expected to cause deception or confusion in the marketplace.’ It was asserted that the Opponent had acquired ‘significant goodwill and a strong reputation in its Trade Marks in the relevant market’ and that the Trade Mark is ‘substantially identical with, or deceptively similar to, the Opponent’s KAESER Trade Marks’ and ‘specifies the same or similar goods to those of the Opponent, or goods that are closely related to the opponent’s services’ and ‘services that are the same or similar .. or closely related to.. those of the Opponent’ such that it contains a connotation or secondary meaning which infers that the goods and services provided under the Trade Mark are connected in the course of trade, or approved or endorsed by or affiliated with the Opponent.
39. The enquiry under section 43 is concerned with something inherent in the mark itself which results in a likelihood that it will, when used, be likely to deceive or cause confusion. As Pfizer makes clear, the connotation must arise from the Trade Mark itself, and not through a comparison with another trade mark.
40. In the absence of any further articulation or clarification of its contentions in this regard, or of any evidence demonstrating how a secondary meaning was claimed to arise or how or why consumers would be deceived or confusion caused, there is no cogent evidential support for this allegation by the Opponent.
41. On this basis I am not satisfied that the use of the Trade Mark in relation to the specified goods and services gives rise to any connotation such that its use would be likely to deceive or cause confusion within the meaning of s.43 of the Act.
42. It follows that, for the above reasons, I am not satisfied that the Opponent has established the ground of opposition under section 43 of the Act.
Section 44/Regulation 4.15A
43. Section 44 of the Act relevantly provides:
44. Identical etc. trade marks
(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.
Note 4: The regulations may provide that an application must also be rejected if the trade mark is substantially identical with, or deceptively similar to, a protected international trade mark or a trade mark for which there is a request to extend international registration to Australia: see Part 17A.
(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).
Note 3: For priority date see section 12.
Note 4: The regulations may provide that an application must also be rejected if the trade mark is substantially identical with, or deceptively similar to, a protected international trade mark or a trade mark for which there is a request to extend international registration to Australia: see Part 17A.
(3) If the Registrar in either case is satisfied:
(a) that there has been honest concurrent use of the 2 trade marks; or
(b) that, because of other circumstances, it is proper to do so;
the Registrar may accept the application for the registration of the applicant's trade mark subject to any conditions or limitations that the Registrar thinks fit to impose. If the applicant's trade mark has been used only in a particular area, the limitations may include that the use of the trade mark is to be restricted to that particular area.
Note: For limitations see section 6.
(4) If the Registrar in either case is satisfied that the applicant, or the applicant and the predecessor in title of the applicant, have continuously used the applicant's trade mark for a period:
(a) beginning before the priority date for the registration of the other trade mark in respect of:
(i) the similar goods or closely related services; or
(ii) the similar services or closely related goods; and
(b) ending on the priority date for the registration of the applicant's trade mark;
the Registrar may not reject the application because of the existence of the other trade mark.
Note 1: An authorised use of the trade mark by a person is taken to be a use of the trade mark by the owner of the trade mark (see subsection 7(3)).
Note 2: For predecessor in title see section 6.
Note 3: For priority date see section 12.
44. Regulation 4.15A is essentially identical to s.44 of the Act. It applies in this matter because the Opponent relies on its protected international trade marks under the Madrid Protocol, which it refers to as its IRDA’s (listed below), for this opposition ground.
45. Reg. 4.15A relevantly provides:
Grounds for rejection--trade mark identical etc to trade mark protected under Madrid Protocol
(1) For section 189A of the Act, and subject to subregulations (3) and (5), 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 protected international trade mark; or
(ii) a trade mark in respect of which the Registrar has received notification of an IRDA;
held by another person in respect of similar goods or closely related services; 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 other trade mark in respect of the similar goods or closely related services.
(2) For section 189A of the Act, and subject to subregulations (3) and (5), 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) the applicant’s trade mark is substantially identical with, or deceptively similar to:
(i) a protected international trade mark; or
(ii) a trade mark in respect of which the Registrar has received notification of an IRDA;
held by another person in respect of similar services or closely related goods; 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 other trade mark in respect of the similar services or closely related goods.
(3) If, in a case mentioned in subregulation (1) or (2), the Registrar is satisfied:
(a) that there has been honest concurrent use of the 2 trade marks; or
(b) that, because of other circumstances, it is proper to do so;
the Registrar may accept the application for the registration of the applicant's trade mark subject to any conditions or limitations that the Registrar thinks fit to impose. If the applicant's trade mark has been used only in a particular area, the limitations may include that the use of the trade mark is to be restricted to that particular area.
(4) If the applicant's trade mark has been used only in a particular area, the limitations may include that the use of the trade mark is to be restricted to that particular area.
(5) If, in a case mentioned in subregulation (1) or (2), the Registrar is satisfied that the applicant, or the applicant and the predecessor in title of the applicant, have continuously used the applicant's trade mark for a period:
(a) beginning before the priority date for the other trade mark in respect of:
(i) the similar goods or closely related services; or
(ii) the similar services or closely related goods; and
(b) ending on the priority date for the registration of the applicant's trade mark;
the Registrar may not reject the application because of the existence of the other trade mark.
46. For ease of reference, for the purposes of s.44 and r.4.15A, a side by side comparison between the Trade Mark and the Opponent’s nominated marks appears below.
Trade Mark
Opponent’s Mark
TM/IR number/s
Classes of Goods and Services
(Opponent)
EASER
545898
7
EASER
666873
7
EASER
666884
7
EASER
Kaeser
1330908
(IR1017027)7
EASER
Kaeser
1674229
(IR1235273)4,6,7,9,11,16,37,39,40,41,42
40
EASER
1675520
(IR1235603)
4,7,9,11,16,37,39,40,41,42
42
EASER
1675523
(IR1235617)
4,7,9,11,16,37,39,40,41,42
Opponent’s trade marks 545898, 666873 and 666884.
47. In the SGP, in relation to s.44, the Opponent claimed the Trade Mark is substantially identical with, or deceptively similar to, its trade marks numbers 545898, 666873 and 666884 (together ‘the Opponent’s trade marks’) and that the designated goods and services are similar and/or closely related to the Opponent’s goods.
48. No submissions or further evidence were provided in this regard other than the statements in the Eckberg declaration at paragraphs 58-61 which are summarized above at paragraph 12.
49. In respect of the identified trade marks, in order to establish the section 44 ground of opposition under subsections 44(1) and 44(2), the Opponent must demonstrate, subject to subsections (3) and (4), that the Trade Mark:
· issubstantially identical with or deceptively similar to at least one of the Opponent’s trade marks 545898, 666873 and 666884, and
· is in respect of similar goods or closely related services (s.44(1)(a)(i)) and/or similar services or closely related goods (s.44(2)(a)(i)), and
· has a priority date not earlier than that of the other trade marks (s.44(1)(b) and s.44(2)(b)).
50. In its submissions the Holder acknowledged that the Opponent’s trade marks have an earlier priority date than the IRDA. It disputed however that the Opponent’s class 7 goods are closely related or similar to its goods and services claimed in the IRDA. The Holder’s submissions also contended that the Opponent’s goods ‘have a different nature, purpose and trade channels than the mobile drilling rigs and related services covered by the Applicant’s mark’ and the marks ‘are neither substantially identical nor deceptively similar.’
Similar goods or closely related goods and/or services
51. The Opponent’s trade marks in this respect designate only class 7 and are expressed to cover the following goods:
· 545898: Compressed air refrigerated dryers, air filters, desiccant dryers and hydrocarbon absorbers for industrial use
· 666873: Dental air compressors and compressed air refrigeration dryers for supplying compressed air for use in the dental industry.
· 666884: Compressed air refrigerated air dryers, air filters, desiccant dryers and hydrocarbon absorbers for industrial use.
52. Section 14 of the Act provides as follows:
Definition 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.(2) For the purposes of this Act, services are similar to other services:
(a) if they are the same as the other services; or
(b) if they are of the same description as that of the other services.
53. The Eckberg declaration stated that the goods and services of the Trade Mark ‘are related to mobile drilling rigs and parts and fittings for mobile drilling rigs. The Opponent’s KAESER goods, especially compressors, are adapted for use on, or in conjunction with, drilling rigs.’ While I have no reason to doubt this relationship, on the face of it, and without further explanation or evidence, the nature of that relationship is unclear. I also note that the scope of the goods for 545898 and 666884 indicates only that they are ‘for industrial use’, while the goods for trade mark 666873 are for use in the dental industry. While the evidence demonstrated that both the Holder and the Opponent operate, at least in part, in the mining industry, it does not necessarily follow that their goods as claimed in the respective specifications are similar. There is nothing in the exhibits which demonstrates any similarity between mobile drilling rigs, their parts or conveyances and the Opponent’s designated goods in its trade marks 545898, 666873 and 666884. Even if the Opponent’s designated goods happen to be used upon or in conjunction with drilling rigs it does not necessarily follow, in the absence of evidence otherwise, that they are the same or of the same description.
54. With regard to s.44(1)(a), in respect of the Trade Mark’s class 7 and class 12 goods, there is no clear or obvious similarity between them and the class 7 goods as designated in the Opponent’s trade marks (545898, 666873 and 666884). On the face of it, they appear quite different, particularly in respect of the dental equipment designated in trade mark 666873. The Opponent has not provided any submissions or material which persuades me to a different view. On this basis I am not satisfied that s.44(1)(a)(i) is met and it is therefore unnecessary to consider the remaining provisions of s.44(1).
55. With regard to s. 44(2), and the comparison between the class 37 services designated in the Trade Mark and the goods specified in the Opponent’s trade marks, the comments of French J (with whom Tamberlin J agreed) in Registrar of Trade Marks v Woolworths Ltd (‘Woolworths’) are apposite:
The term “closely related” recognises that goods and services are different things. There will be classes of goods which are similar to each other. There will also be classes of services which are similar to each other. But the word “similar” does not apply as between goods and services. So there must be some other form of relationship between the services covered by one mark and the goods covered by another to enable the goods or services in question to be described as “closely related”. …[10]
[10] Registrar of Trade Marks v Woolworths Ltd (1999) 93 FCR 365; [1999] FCA 1020 [37].
56. In this connection His Honour also said that “closely related” is a term of wider import than “similar”.[11]
[11] Ibid.
57. In this context I note that the class 37 services designated by the Trade Mark, which specify the installation and repair of mobile drilling rigs, remote control apparatus and vehicles and conveyances for such rigs, indicate no clear or obvious relationship to the Opponent’s goods listed in its trade marks 545898, 666873 and 666884.
58. Even if it was accepted that there is some form of relationship between the Trade Mark’s class 37 services and the Opponent’s designated goods in its trade marks 545898, 666873 and 666884, the evidence falls short of establishing that it is a close relationship: s.44(2)(a)(i). This is particularly the case for dental equipment in the specification for trade mark no. 666873.
59. Therefore, as ss.44(1)(a)(i) and s.44(2)(a)(i) are not met, it is unnecessary to consider whether the marks are substantially identical or deceptively similar.
60. It follows that the Opponent has failed to establish any ground of opposition under s.44, in relation to its trade marks 545898, 666873 and 666884.
Opponent trade marks 1330908, 1674229, 1675520 and 1675523 (International Registrations 1017027, 1235273, 1235603 and 1235617 respectively).
61. The SGP reflects the r.4.15A grounds relied on by the Opponent. It is claimed that the Trade Mark is substantially identical with, or deceptively similar to its International Registrations 1017027, 1235273, 1235603 and 1235617 (Australian trade marks 1330908, 1674229, 1675520 and 1675523 respectively). In addition it is claimed that the Trade Mark’s goods are the same as, or similar to, the Opponent’s goods and are closely related to the Opponent’s services as designated in the above marks. Further, it is claimed that the Trade Mark’s services are closely related to the goods and similar to the services under the Opponent’s IR marks.
62. As previously noted, the Holder acknowledges the priority of the Opponent’s marks.[12]
[12] Holder’s submissions, Paragraph 19
63. In its submissions the Holder also acknowledged and, in the absence of evidence otherwise, I accept, that the class 7 goods and/or the class 37 services covered by the Opponent’s above IR mark registrations are similar to the Holder’s goods and services in classes 7 and 37. It disputed however that the marks were either substantially identical or deceptively similar.
Substantially identical
64. In Shell Co of Australia Ltd v Esso Standard Oil (Australia) Ltd (‘Shell’) Windeyer J 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 features of the registered mark and the total impression of resemblance or dissimilarity that emerges from the comparison.[13]
[13] Shell Co of Australia Ltd v Esso Standard Oil (Aust) Ltd [1963] HCA 66 [13].
65. As noted above, the Opponent has simply made bald assertions as to the deceptive similarity/substantial identity between the marks.
66. In this regard, the Holder submitted that the marks were not substantially identical, that the ‘different spellings, pronunciations and connotations are clearly apparent such that the marks cannot be considered to be substantially identical’.
67. The issue of substantial identity was most recently considered by the Full Federal Court decision Pham Global Pty Ltd v Insight Clinical Imaging Pty Ltd (‘Pham Global’)[14]. Referring to ‘dominant cognitive cues’ and ‘essential elements’ of trade marks in the prior Accor decision[15], the court said:
There is no doubt in our view that the Full Court in Accor in using the phrase “dominant cognitive cues” was making analogical reference to the “essential features” of the mark for the purposes of a side by side comparison in determining whether marks are substantially identical consistent with the observations of Windeyer J in Shell at 414 as earlier recognised by the court in the reasons. The dominant cognitive cues are the essential features striking the eye in a side by side comparison so as to determine whether marks are substantially identical.[16]
[14] Pham Global Pty Ltd v Insight Clinical Imaging Pty Ltd (‘Pham Global’) [2017] FCAFC 83
[15] Accor Australia & New Zealand Hospitality Pty Ltd v Liv Pty Ltd (‘Accor’) [2017] FCAFC 56
[16] Pham Global [51]
68. As can be seen in the table at paragraph 46, the Opponent’s trade marks 1675520 and 1675523 contain additional word elements and are in different typeface to the Trade Mark. Overall, they are strikingly different visually and aurally to the Trade Mark and do not share ‘essential features’ with it. On the contrary, I consider that a total impression of dissimilarity between the marks emerges such that it refutes any suggestion that these marks are substantially identical. I am therefore not satisfied that the Opponent’s marks 1675520 (IR 1235603) and 16675523 (IR 1235617) are substantially identical to the Trade Mark.
69. In relation to the marks 1330908 and 1674229, the Holder submitted that their different spellings, pronunciations and connotations are clearly apparent such that they cannot be considered to be substantially identical. I accept these submissions because, in my assessment, a side by side comparison of Kaeser and EASER does not give rise to ‘total impression of resemblance’. With regard to ‘essential features striking the eye’ I note that one starts with a consonant and the other with a vowel. The spellings and pronunciations are different and I am not satisfied that the Trade Mark is substantially identical to the Opponent’s marks as listed above.
Deceptive similarity
70. Section 10 of the Act defines deceptive similarity as follows:
Section 10 - Definition of deceptively similar
For the purposes of this Act, 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.
71. In assessing trade marks for deceptive similarity, Windeyer J said in Shell at [13]:
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 plaintiff’s mark that persons of ordinary intelligence and memory would have; and, on the other hand, the impressions that such persons would get from the defendant’s television exhibitions. To quote Lord Radcliffe again: “The likelihood of confusion or deception in such cases is not disproved by placing the two marks side by side and demonstrating how small is the chance of error in any customer who places his order for goods with both the marks clearly before him . . . . It is more useful to observe that in most persons the eye is not an accurate recorder of visual detail, and that marks are remembered rather by general impressions or by some significant detail than by any photographic recollection of the whole”: de Cordova v. Vick Chemical Co (1951) 68 RPC, at p 106. And in Australian Woollen Mills Ltd v. F.S. Walton & Co. Ltd. [1937] HCA 51; (1937) 58 CLR 641 Dixon and McTiernan JJ. said: “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” (1937) 58 CLR, at p 658.
[...]
The deceptiveness that is contemplated must result from similarity; but the likelihood of deception must be judged not by the degree of similarity alone, but by the effect of that similarity in all the circumstances.
72. Therefore a determination of ‘deceptive similarity’requires an assessment of the likelihood of deception or confusion arising from an imperfect recollection or impression of the trade marks by potential customers of the goods/services.
73. The SGP asserted that the Trade Mark is substantially identical with or deceptively similar to the Opponent’s trade marks however, as noted, no evidence or submissions were provided that supported these claimed similarities or any resulting confusion other than the statement in the Eckberg declaration as previously outlined at paragraph 12. While he stated that there was ‘likely’ to be confusion, there was no suggestion or indication that there has in fact been any such confusion. While not required, in the context of undisputed evidence as to the co-existence of the marks in other jurisdictions[17], such evidence would have added significant weight to the Opponent’s claims.
[17] Exhibit 8 to the Knutsson Declaration
74. In its submissions, the Holder referred to the decisions in Woolworths and Australian Woollen Mills noting that a possibility of confusion is not sufficient and there must be a real tangible danger of confusion.[18] It was submitted, in summary, that the marks EASER and KAESER are not deceptively similar because:
· the only similarity is the suffix ‘-SER’….
· the suffix (sic) elements ‘KAE’ and ‘EA’ are visually, phonetically and conceptually different and these differences play a significant role in how the marks as a whole would be viewed by consumers, ensuring deception or confusion would not arise.
· Phonetically, the applicant’s mark would be pronounced either ‘e-ser’ or ‘ease-r’ as compared to the Opponent’s mark which would be either ‘ki-ser’ or ‘kay-ser’, with the emphasis being placed on the different syllables of each mark.
· ‘Cited marks registration nos. …. 1675520 and 1675523 all contain additional word elements, further differentiating them from the Applicant’s EASER mark.’
[18] Australian Woollen Mills v F S Walton and Co Ltd (1937) 58 CLR 641; Registrar of Trade Marks v Woolworths Ltd (1999) 93 FCR 365; [1999] FCA 1020
75. These submissions were not challenged by the Opponent. Given this, and the striking differences in the appearance between the Trade Mark and the Opponent’s trade marks 1675520 and 1675523, I do not consider that the Trade Mark ‘so nearly’ resembles either of those marks in any material way such that it would be ‘likely to deceive or cause confusion’ among ‘persons of ordinary intelligence and memory’.
76. In relation to marks 1330908 and 1674229 however there is arguably a degree of resemblance in the visual appearance between the trade marks. This is because, notwithstanding the different pronunciation and spelling, the words contain some letters that are the same and they appear in almost the same order.
77. In this context I note the view that the first syllable should generally be given the most weight when comparing marks: London Lubricants (1920) Ltd's Appn, (1925) 42 RPC 264, and that in revisiting the tests for deceptive similarity, Finn J said, in C A Henschke & Co v Rosemount Estates Pty Ltd :
[P]articular attention ought be paid to the first part of a name for generally the first word or syllable provides the most important means of distinguishing marks... save where the initial word or syllable is both common to the marks and is common to the trade or is commonly used by a number of trade mark proprietors, in which case the emphasis is to fall on other portions of the mark as a means of distinguishing them. [19]
[19] C A Henschke & Co v Rosemount Estates Pty Ltd, [1999] FCA 1561, [35]
78. With regard to the first part or syllable of the marks, they are different. There is no indication or suggestion of commonality in the trade in relation to the marks as a whole and there is therefore no justification for placing emphasis on other parts of the marks for comparison purposes.
79. In addition, in light of the technical and specific nature of the goods and services, I accept the Holder’s submission that they ‘are highly specialized and would only be provided to sophisticated consumers.’ Given the acknowledgment by both parties of the quoting and tendering processes required for such goods and services, I also accept that in such an environment the consumers would be well aware of the individual parties’ positions and any likelihood of confusion or deception between the trade marks would, as a consequence, be significantly diminished.
80. The Holder also cites the case of Idameneo (No 789) Ltd v Symbion Pharmacy Services Pty Ltd [2011] FCAFC 164 (15 December 2011) where the Full Federal Court of Australia repeated with approval the following statement from Lord Diplock in GE Trade Mark [1973] RPC 297:
where goods are of a kind which are not normally sold to the general public for consumption or domestic use but are sold in a specialised market consisting of persons engaged in a particular trade, evidence of persons accustomed to dealing in that market as to the likelihood of deception or confusion is essential.
81. As noted above, other than the Eckberg declaration opining that confusion is ‘likely’, there is no evidential support for the claim of likely deception or confusion by the relevant consumers.
82. No claims have been made or evidence provided in relation to rr.4.15A(3) or (4). It is therefore unnecessary to consider them further.
83. For the above reasons I am not satisfied that the Trade Mark is deceptively similar to the Opponent’s trade marks as listed above within the meaning of r.4.15A(1) and (2). The ground of opposition has not been established.
Section 58
84. Section 58 of the Act provides:
58 Applicant not owner of trade mark
The registration of a trade mark may be opposed on the ground that the applicant is not the owner of the trade mark.
Note: For applicant see section 6.
85. The Opponent’s SGP asserted that the Holder is not the owner of the opposed mark because it is the same, or substantially the same as the Opponent’s KAESER Trade Marks. It was further asserted that the ‘goods and services of the opposed IRDA are the same as, or are ‘the same kind of thing’ as those of the Opponent.
86. In the Holder’s submission regarding section 58, it relied on Carnival Cruise Lines Inc. v Sitmar Cruises (1994) 31 IPR 375 as establishing the principle that the use relied on must be use of a trade mark that is substantially identical, not merely deceptively similar, to the Trade Mark. The Opponent’s evidence showed use of the word ‘KAESER’ in each of its trade marks however the Holder maintained that the Opponent’s marks were not substantially identical to the Applicant’s marks for the purposes of s.58.
87. In relation to s.58, the Full Federal Court in Pham Global identified the relevant principles as follows:
It is not in dispute that the primary judge correctly identified the applicable principles, noting the following:
It was common ground that to succeed on the ground of opposition under s 58 of the Trade Marks Act, Insight Clinical Imaging must establish that:
(a) the IR composite mark is identical or substantially identical to the ICI composite mark: Carnival Cruise Lines Inc v Sitmar Cruises Limited [1994] FCA 936; ..
(b) the ICI composite mark has been used in respect of goods or services as “the same kind of thing” as the IR composite mark: Re Hicks’ Trade Mark [1897] VicLawRp 118; ..and(c) it had the earlier claim to ownership based on its use of the ICI composite mark before the filing of the IR composite mark application or any use of the IR composite mark by Insight Radiology: Settef SpA v Riv-Oland Marble Co (Vic) Pty Ltd 10 IPR 402 at 413.[20][20] Pham Global Pty. Ltd. v Insight Clinical Imaging Pty. Ltd. [2017] FCAFC 83 [50]
88. I have already found, (paragraphs 68-9) that the Trade Mark is not identical or substantially identical to the Opponent’s marks 1330909, 1674229, 1675520 and 1675523. In relation to its other cited marks, 545898, 666873 and 666884, a side by side comparison (see table at paragraph 46) demonstrates the significant dissimilarity between the marks. On this basis, I also find that these marks are not identical or substantially identical with the Trade Mark.
89. It is therefore unnecessary to canvas the other aspects of s.58.
90. It follows that the Opponent has not established its s.58 ground of opposition.
Section 60
91. Section 60 of the Act provides as follows:
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 firstmentioned trade mark would be likely to deceive or cause confusion.Note: For priority date see section 12.
92. Therefore the Opponent must first establish that the trade marks on which it relies had a reputation in Australia at the Trade Mark’s priority date and, secondly, that because of that reputation, the Holder’s use of the Trade Mark would be likely to deceive or cause confusion. That is, the Opponent’s evidence must establish a causal link between its reputation in its trade mark/s and the likelihood that use of the Trade Mark will cause deception or confusion.
93. The remarks of Kenny J in McCormick & Co Inc v McCormick in relation to s.60 and the measurement of reputation are relevant:
In practice, it is commonplace to infer reputation from a high volume of sales, together with substantial advertising expenditures and other promotions, without any direct evidence of consumer appreciation of the mark, as opposed to the product: see, e.g., Isuzu-General Motors Australia Ltd v Jackeroo World Pty Ltd (1999) 47 IPR 198; Marks & Spencer plc v Effem Foods Pty Ltd (2000) AIPC 91-560; Photo Disc Inc v Gibson (1998) 42 IPR 473; and RS Components Ltd v Holophane Corp (1999) 46 IPR 451. This Court has followed this approach as well, acknowledging that public awareness of and regard for a mark tends to correlate with appreciation of the products with which that mark is associated, as evidenced by sales volume, amongst other things. Thus, in Toddler Kindy Gymbaroo Pty Ltd v Gymboree Pty Ltd [2000] FCA 618 (“Gymboree”), Moore J accepted at [94] that the applicant had established a reputation for the purposes of s 60 solely on the basis of use and promotion of the relevant mark. Another example of this approach is Nettlefold Advertising Pty Ltd v Nettlefold Signs Pty Ltd (1997) 38 IPR 495 (“Nettlefold”), in which Heerey J relied upon the public visibility of the applicant’s marks over approximately two decades as well as a $100,000 promotional campaign in finding that a reputation for the purposes of s 28 of the 1955 Act existed.[21]
[21] McCormick & Co Inc. v McCormick [2000] FCA 1335; (2000) 51 IPR 102; [2000] AIPC 38-192 [86].
94. Therefore, as opposed to the ‘notional fair use’ consideration required by s.44, s.60 requires a consideration of the actual manner in which the earlier trade marks have been used.
95. According to its SGP, the Opponent relies in this regard on its use of the ‘Kaeser trade marks’ in Australia and overseas as having established significant goodwill and a strong reputation before the priority date of the Trade Mark. The exhibits to the Eckberg declaration demonstrate substantial use of the Opponent’s marks in relation to its various goods and services, including references by third parties. The Eckberg declaration claimed that, because of the reputation arising from use, the Trade Mark would be likely to deceive or cause confusion. This was said to arise because the Holder and the Opponent are direct competitors, tendering and quoting in the mining and non-mining sectors, and the goods the subject of the Opponent’s trade marks are stated to be related to mobile drilling rigs and their parts and fittings. It was further claimed that because of the Opponent’s reputation in its marks, the use of the Trade Mark would cause confusion because consumers ‘will mistakenly believe the products and services provided by the Applicant’s mark are manufactured and sourced from or associated or endorsed by the Opponent.’
96. In its submission, the Holder declined to concede that the Opponent’s Kaeser marks had acquired a reputation in Australia. Alternatively, even if they did have the requisite reputation, the Holder contended that it was 'insufficient to establish that use of the Applicant’s mark would be likely to deceive or cause confusion.’ It was further claimed that the direct competition to which the Opponent referred related mainly to other goods and services under other trade marks and not those designated under this Trade Mark. In addition, it was submitted that the specialised nature of the goods, and how they are marketed and sold within the relevant industry, and the skill and care exercised by consumers when choosing between competing goods and services, ‘is such that the likelihood of deception and confusion would be low’. This likelihood was said to be further diminished when ‘one takes into consideration the significant visual, phonetic and conceptual differences between the Applicant’s EASER mark and the KAESER trade marks of the Opponent’. The Applicant submitted that in these circumstances there was no likelihood of deception or confusion occurring and the section 60 ground was not established.
97. The Opponent did not specify on which marks it relied to establish its reputation. While its SGP referred to the ‘KAESER Trade Marks’ as embracing trade mark nos. 545898, 666873, 666884, 1330908, 1674229, 1675520 and 1675523, the material provided in its Evidence in Support in relation to the reputation of its marks appeared to cover the whole of its Australian and some overseas operations.[22] On the basis of the filed materials, I accept that the Opponent’s marks, particularly 545898, 666884 and 1675520, have acquired a significant reputation in Australia in respect of air compressor use and service across several industries. The Opponent however has not provided any probative material in support of its claims that its reputation is such that use of the Trade Mark would be likely to deceive or cause confusion.
[22] According to an Australian Trade Mark Search the Opponent has 25 registered trade marks and 6 pending applications in Australia.
98. Notwithstanding the Opponent’s claim that the goods and services the subject of its marks are related to the goods and services designated by the Trade Mark, I was able to discern very little of this relationship in over 500 pages of exhibits. While I acknowledge it is not necessary for the purposes of s.60 to establish a nexus between the goods and/or services the subject of the marks, Yates J said in Qantas v Edwards (Qantas), noting that the standard of deception or confusion under s.60 ‘is the same as under s.44(1) of the Act’, that it was not necessary that the ‘other’ marks ‘have acquired a reputation in Australia that is specific to the goods or services which are the subject of the opposed application’ however it was accepted that ‘it is likely to be a most material consideration to be taken into account when considering the likelihood of confusion resulting from use of the opposed mark’[23]. The goods and services the subject of the opposed application relate to mobile drilling rigs and associated parts and services. The Eckberg declaration indicated that construction and mining are only 2 of the 15 industries in which the Opponent promotes and sells its products and services. Only 2 sets of the exhibits (15 and 18) were specified to contain material demonstrating use of the Opponent’s marks in the construction and mining industry. I was only able to identify one article in which the Opponent’s goods were directly associated with a drilling rig. It was an article describing the supply of a Kaeser compressed air station to a Bauer drilling rig in Germany. Overall therefore there was very little that demonstrated a connection between the goods and services the subject of the Holder’s Trade Mark and those the subject of the Opponent’s marks. In such a context I consider there is very little likelihood that, because of the reputation of the Opponent’s marks, use of the Trade Mark would be likely to deceive or cause confusion.
[23] Qantas Airways Limited v Edwards [2016] FCA 729 [142 and 143]
99. Yates J further noted in Qantas that ‘the degree of similarity between the allegedly conflicting marks will be a relevant consideration to be taken into account when considering the likelihood of confusion resulting from use of the opposed mark.’[24] As previously found, there is no substantial identity or deceptive similarity between the cited marks and the Trade Mark and therefore little likelihood of confusion.
[24] Ibid.
100. As the court also commented in Torpedoes Sportswear Pty Limited v Thorpedo Enterprises Pty Limited :
The test for reputation required under s 60, as set out by Kitto J in The Kendall Co v Mulsyn Paint and Chemicals [1963] HCA 1; (1963) 109 CLR 300 at 305 is that any substantial number of persons likely to be concerned in the purchasing of goods must either infer that the goods have come from the same source or at least be caused to wonder whether that might be so but it is necessary for a party relying on reputation to establish it by evidence.[25]
[25] Torpedoes Sportswear Pty Limited v Thorpedo Enterprises Pty Limited [2003] FCA 901 [107]
101. According to the Eckberg declaration, the persons concerned in the purchasing of the Opponent’s goods and services are ‘Manufacturing Managers, Maintenance Managers, Engineering Managers and Projects Managers’. Given this, and the specialised nature of the goods and services, and the fact that such goods and services might be the subject of tender or quote, the type of person ‘likely to be concerned’ would most likely have a high degree of knowledge and responsibility in the industry and would carefully assess any such purchases. Consequently they would be well aware of the relevant brands and associated products and would be unlikely to resort to inference or have cause to wonder as to the source of any designated equipment or services.
102. In this context, I consider that the evidence falls far short of demonstrating a ‘real tangible danger’ of deception or confusion occurring in the marketplace by virtue of the use of the Holder’s Trade Mark. Conversely, in my assessment, any risk of deception or confusion would be remote and therefore far from ‘likely’.
103. For these reasons I am not satisfied that the s.60 ground has been established.
Section 62A
104. Section 62A provides:
Application made in bad faith
The registration of a trade mark may be opposed on the ground that the application was made in bad faith.
105. The Opponent has asserted in its SGP that the Applicant filed the Trade Mark in bad faith and that ‘a reasonable person, standing in the shoes of the Applicant, would be aware that they ought not to apply for protection of the opposed trade mark in Australia in relation to the goods and services specified in the opposed IRDA’.
106. I have had regard to the other material filed by the Opponent and it does not disclose any further detail or evidence of the alleged bad faith filing of the Trade Mark.
107. The Holder cited the relevant test for bad faith as ‘whether the Opponent has established this ground of evidence on the balance of probabilities’ and submitted that ‘there is nothing in the Opponent’s evidence which proves, on the balance of probabilities or otherwise, that the applicant has acted in bad faith when applying to register’ the Trade Mark.
108. Section 62A was considered in Fry Consulting Pty Ltd v Sports Warehouse Inc (No 2) where Dodds-Streeton J said:
It is clear that bad faith for the purposes ofs 62Amust be at the time of the application in this case (22 December 2006) and must relate to the making of the subject of that application, which in this case is the composite word and device mark, rather than the mark TENNIS WAREHOUSE or TENNIS WAREHOUSE AUSTRALIA. Further, the onus of proving bad faith rests on the opponent. While the seriousness of an allegation of bad faith that “impugns the character of an individual or collective character of a business...” requires correspondingly cogent evidence (statement of the Hearing Officer in Maslyukov v Diageo Distilling Ltd [2010] EWHC 443 (“Maslyukov”), quoted with approval by Arnold J at [36] and [37]), the standard of proof is the balance of probabilities, rather than that of beyond reasonable doubt[26]
[26] Fry Consulting Pty Ltd v Sports Warehouse Inc (No 2) [2012] FCA 81 [145]
109. And after examining the various UK and Australian authorities Dodds-Streeton J concluded at 165-167:
The formulation in United Kingdom authority of bad faith as falling short of the standards of acceptable commercial behaviour observed by reasonable and experienced persons in a particular area is, in my view, an apt touchstone. An overly literal application may, however, tend to negate the relevance attributed to the applicant’s mental state in the combined test preferred in Harrison.
Further, in my view, mere negligence, incompetence or a lack of prudence to reasonable and experienced standards would not, in themselves, suffice, as the concept of bad faith imports conduct which, irrespective of the form it takes, is of an unscrupulous, underhand or unconscientious character….
The question is whether, in all the particular circumstances, the applicant’s knowledge was such that his decision to apply for registration at the relevant date would be regarded as in bad faith by persons adopting proper standards.[27]
[27] Fry Consulting Pty Ltd v Sports Warehouse Inc (No 2) [2012] FCA 81 [165-7]
110. The Opponent has made a bald allegation of bad faith but has not produced any material supporting these claims. There is no cogent evidence before me which suggests any conduct by the Holder such that might be said to constitute a ‘falling short of the standards of acceptable commercial behaviour observed by reasonable and experienced persons.’
111. In the circumstances the Opponent has not established this ground of opposition.
Decision
112. Reg. 17A.34N of the Regulations provides:
(1) Unless the opposition proceedings are discontinued or dismissed, the Registrar must decide:
(a) to refuse protection in respect of all of the goods or services listed in the IRDA; or
(b) to extend protection in respect of some or all of the goods or services listed in the IRDA (with or without conditions or limitations);
having regard to the extent (if any) to which the grounds on which the IRDA was opposed have been established.
(2) The Registrar must notify the International Bureau of the Registrar's decision.
113. I have found that the Opponent has not established any of its grounds of opposition. I therefore direct that protection of the IRDA be extended to Australia one month from the date of this decision in respect of all of the goods and services listed.
114. If the Registrar has been served with a notice of appeal before that time, I direct that extension of protection shall not occur until the appeal has been decided or discontinued or, if this decision be successfully appealed, that the IRDA be dealt with as the Court sees fit. If there is no appeal the International Bureau will be notified of this decision as soon as practicable after the appeal period has ended, in accordance with reg. 17A.34N(2).
Costs
115. The Holder sought an award of costs. As the successful party, it is appropriate that costs be awarded against the Opponent at the scale set out in Schedule 8 to the Regulations.
Mary-Ann Cooper
Hearing Officer
Oppositions and Hearings
17 May 2018
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21
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