Karben Industries Pty Ltd v Grayson's International Pty Ltd

[2024] ATMO 125

TRADE MARKS ACT 1995

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

Re:Opposition by Karben Industries Pty Ltd to registration of trade mark application number 2248940 (class 6) – LEAFSCREENER (composite) – in the name of GRAYSON'S INTERNATIONAL PTY LTD

Delegate:

Benjamin Goldsworthy

Representation:

Opponent: Self-represented
Applicant: Self-represented

Decision:

2024 ATMO 125

Trade Marks Act 1995 (Cth) – opposition under s 52 – ss 41 and 58 pressed – neither established – trade mark may proceed to registration subject to the resolution of any pending oppositions.

Background

1. On 12 February 2022 (‘Relevant Date’) an application was filed under the Trade Marks Act 1995 (Cth)[1] in the name of GRAYSON’S INTERNATIONAL PTY LTD (‘Applicant’) for a trade mark with the following details:

   Trade mark number: 2248940

   Trade mark:   

   (‘Trade Mark’)

   Priority date: 12 February 2022

   Goods: Class 6: Metallic building materials and components including, roof materials, large items of hardware, plumbing accessories, drainage parts, gutter protection parts, gutter guards, meshes, barriers, fire ember guards, fixing devices, grids, guttering, spouting, pipes, tubes, water storage containers, coverings for guttering, wire, props, posts, collars, bolts, screws, angle trims, fittings, anchors, clip clamps, screens, sheets, channels, extrusions, castings, wire products and small items of hardware (‘Designated Goods’)

   [1] Unless specified otherwise, a reference in these reasons to a section is a reference to such in the Trade Marks Act 1995 (Cth).

2. The Trade Mark was examined under s 33 and acceptance was advertised 13 July 2022.

3. On 18 July 2022 Karben Industries Pty Ltd (‘Opponent’) filed its Notice of intention to Oppose.[2] The Opponent filed its Statement of Grounds and Particulars (‘SGP’) on 25 July 2022. On 1 October 2022 the Applicant filed its Notice of Intention to Defend.

   [2] Whilst the Notice of Intention to Oppose was filed in name Karben Industries, the Opponent clarified in writing on 4 April 2024 that the correct name of the Opponent is Karben Industries Pty Ltd.

4. On 22 December 2022 the Opponent filed its Evidence in Support (‘EIS’), consisting of a declaration of Ben Stewart, Director of the Opponent, dated 22 December 2022 with Annexures A to V (‘Stewart-1’).

5. On 26 March 2023 and 27 March 2023 the Applicant filed its Evidence in Answer (‘EIA’) consisting of a letter of Grayson O’Connor, owner and authorised representative of the Applicant, dated 27 March 2023, with Appendixes 1 to 8 (‘O’Connor’).

6. The Opponent filed its Evidence in Reply (‘EIR’) on 21 April 2023, being a declaration of Ben Stewart, dated 21 April 2023 (‘Stewart-2’).

7. On 28 April 2023 the Applicant requested to be heard by video conference. On 5 April 2024 the Opponent requested to be heard by way of written submissions and on 6 April 2024 the Opponent filed its written submissions.

8. I heard the matter on 15 April 2024. Grayson O’Connor, Director of the Applicant, appeared on behalf of the Applicant and made oral submissions in support of the previously filed written submissions. Ben Stewart was present as an observer.

9. I am to decide the matter as a delegate of the Registrar of Trade Marks on the basis of the submissions and the evidence presented by both parties.

Grounds

1. The SGP nominated grounds of opposition under ss 41, 43 and 58. The Opponent presses grounds of opposition under ss 41 and 58. I consider ground of opposition under s 43 abandoned.

2. The Opponent has the onus to prove at least one ground of opposition[3] and the standard of proof is that of the balance of probabilities.[4]

Evidence

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

[4] Telstra Corporation Ltd v Phone Directories Co Pty Ltd [2015] FCAFC 156, [133] (Besanko, Jagot and Edelman JJ).

EIS

1. In summary Stewart-1 is a mixture of factual assertions and legal arguments about the grounds of opposition. Mr Stewart states that he has worked continuously in the ‘leaf screener (gutter guard) industry’ for the past 20 years.

2. Gerald Michael Sylvstre Sichel is said to have invented a device in the 1980s, which has sometimes been referred to as a ‘leafscreener’.[5] This product said to have been used as a particular type of gutter protection system using mesh. Annexures B and C to Stewart-1 suggest that this product won a design award in the early 1990s.

   [5] Stewart-1, Annexures B and C.

3. Annexure A to Stewart-1 is a copy of lapsed Australian trade mark application 534772 for goods in class 6, details of which I reproduce below:

   Filing: 23 May 1990

   Status: lapsed not accepted

   Lapsed: 2 December 1992

   Owner: Gerald Michael Sylvestre Sichel

   Trade mark:

   (‘Leafscreener Original’)

   Goods: class 6: Metal building materials; small hardware items; goods of common metals not included in this category; and all other goods in this class

4. Other Annexures to Stewart-1 include:

   • undated news articles which mention a product which was apparently called ‘leafscreener’ in relation to the Designated Goods at times prior to the Relevant Date shown at Annexures B and C. The date of any use of this word is not specified.
   • a list of 54 results obtained on 26 October 2022 from a search of the Australian Business Register for business names which contain the word ‘leafscreener’ at Annexure D. No indication of when these business names were registered is provided. There is no indication of what kind of goods or services have been provided under these business names. Many of the results show the business names as having the status of ‘cancelled’.
   • a list of 53 results obtained on 26 October 2022 from a search of the Australian Business Register for business names which contain the words ‘leaf screen’ at Annexure E. No indication of when these business names were registered is provided. There is no indication of what kind of goods or services have been provided under these business names. Many of the results show the business names as having the status of ‘cancelled’.
   • undated brochures containing the business name Australian Leafscreener System Pty Ltd at Annexure G which shows use of the following trade mark in relation to guttering systems:
   • Annexures H and J are not dated and show use of the words ‘leafscreener system’ and/or ‘leafscreener’ in relation to gutters, valley protection systems and roofing.
   • brochures of Australian LeafScreener System Pty Ltd with the words ‘authorised for 1998’, at Annexure I contains the plain word ‘leafscreener’ and the following trade mark in relation to guttering systems:

   (‘Leaf Screener System-2’)

   • Annexure K is a tax invoice dated 27 June 2013 showing the following trade mark for ‘supply and install leafscreener mesh’ issued by a business named ‘Gutter Protection Systems’:

   (‘Complete Leafscreener’)

   • Annexure K1 is an extract of documents showing the Australian Business Number and other corporate details of the Applicant. The information shows that the Applicant was registered on 12 December 2018.
   • Annexure L is an extract from the Australian Securities and Investments Commission register which shows that Complete Leafscreener Services Pty Ltd was registered on 7 June 1995.
   • Annexure M is a screen capture of the website leafscreener.com.au, which is undated, and shows the Trade Mark in relation to guttering systems.
   • Annexure N is a letter from an individual expressing gratitude to a company named ‘Australian Leafscreener (WA) Pty Ltd’, dated 6 May 2004, for the inspection and installation of a product named a ‘Gutterguard’ to guttering.
   • leaflets at Annexures O and P show the plain word ‘leafscreener’ and the following trade mark in relation to guttering systems:

   (‘Leaf Screener System-3’)

   • Various letters of demand, dated in July and August 2022, from the Applicant addressed to the Opponent and other persons at Annexures Q and R. I need not further summarise the contents of these.
   • Various other statutory declarations of persons who declare that they have run a business and used trade marks which include the word ‘leafscreener’ or words ‘leaf screener’, at Annexures F and S to V before the Relevant Date.

EIA

1. O’Connor introduces eight appendixes. The appendixes include a letter from Peter Whittle, dated 24 March 2023, and documentation from the Australian Securities and Investments Commission which confirm the transfer and registration of the business name ‘leafscreener’ to the Applicant, dated 15 February 2023. Much of the remaining evidence of the Applicant is not dated and does not assist in this matter. I also note that the Applicant is the registered owner of six other trade marks on the Register which contain the word ‘leafscreener’.

EIR

1. Stewart-2 responds to each of the appendixes to O’Connor further and makes submissions that need not be summarised.

Preliminary

1. At the hearing Mr Grayson also referred to various other documents not before me in the present matter and not filed during the proceedings for this opposition. I confirm that have I have not relied on documents outside of those filed in the proceedings. No clear reason was given for why this material was not provided in the course of evidence, nor was it appropriate to have regard for this material, given the Opponent has not had the opportunity to review such material.

Consideration

Section 41

1. The Opponent presses the ground of opposition under s 41, which relevantly provides:

   41  Trade mark not distinguishing applicant’s goods or services

   (1)  An application for the registration of a trade mark must be rejected if the trade mark is not capable of distinguishing the applicant’s goods or services in respect of which the trade mark is sought to be registered (the designated goods or services) from the goods or services of other persons.

   Note:          For goods of a person and services of a person see section 6.

   (2)  A trade mark is taken not to be capable of distinguishing the designated goods or services from the goods or services of other persons only if either subsection (3) or (4) applies to the trade mark.

   (3)  This subsection applies to a trade mark if:

   (a)  the trade mark is not to any extent inherently adapted to distinguish the designated goods or services from the goods or services of other persons; and

   (b)  the applicant has not used the trade mark before the filing date in respect of the application to such an extent that the trade mark does in fact distinguish the designated goods or services as being those of the applicant.

   (4)  This subsection applies to a trade mark if:

   (a)  the trade mark is, to some extent, but not sufficiently, inherently adapted to distinguish the designated goods or services from the goods or services of other persons; and

   (b)  the trade mark does not and will not distinguish the designated goods or services as being those of the applicant having regard to the combined effect of the following:

   (i)  the extent to which the trade mark is inherently adapted to distinguish the goods or services from the goods or services of other persons;

   (ii)  the use, or intended use, of the trade mark by the applicant;

   (iii)  any other circumstances.

   Note 1:       Trade marks that are not inherently adapted to distinguish goods or services are mostly trade marks that consist wholly of a sign that is ordinarily used to indicate:

   (a)    the kind, quality, quantity, intended purpose, value, geographical origin, or some other characteristic, of goods or services; or

   (b)    the time of production of goods or of the rendering of services.

   Note 2:       For goods of a person and services of a person see section 6.

   Note 3:       Use of a trade mark by a predecessor in title of an applicant and an authorised use of a trade mark by another person are each taken to be use of the trade mark by the applicant (see subsections (5) and 7(3) and section 8).

2. In deciding whether the s 41 ground of opposition can be established, I must ask whether the Trade Mark is capable of distinguishing the Designated Goods as those of the Applicant from those of other traders. If I am satisfied that the Trade Mark is not so capable, s 41 requires that the Trade Mark be rejected. Relevant to the assessment of capacity to distinguish is whether the Trade Mark has inherent adaptation to distinguish. If the Trade Mark has sufficient inherent adaptation to distinguish the Designated Goods, the s 41 ground of opposition will not be established. However, if I am satisfied that the Trade Mark does not have sufficient inherent adaptation to distinguish, the next question will be whether it has any inherent adaptation to distinguish the Designated Goods. If the Trade Mark has no inherent adaptation, the ground of opposition will be established only if I am satisfied that at the Relevant Date it did not in fact so distinguish, taking account of the extent of the Applicant’s use.[6] If the Trade Mark has some inherent adaptation to distinguish, the ground of opposition will be established only if I am satisfied that, after considering the level of inherent adaptation of the Trade Mark, the extent of the Applicant’s use, and other relevant circumstances, the Trade Mark does not and will not distinguish the Designated Goods.[7]

   [6] Section 41(3).

   [7] Section 41(4).

3. In deciding a trade mark’s inherent adaptation to distinguish, Kitto J in Clark Equipment Co v Registrar of Trade Marks explained:

   [T]he question whether a mark is adapted to distinguish be tested by reference to the likelihood that other persons, trading in goods of the relevant kind and being actuated only by proper motives - in the exercise, that is to say, of the common right of the public to make honest use of words forming part of the common heritage, for the sake of the signification which they ordinarily possess - will think of the word and want to use it in connexion with similar goods in any manner which would infringe a registered trade mark granted in respect of it.[8]

   [8] (1964) 111 CLR 511, 514 cited with approval in Cantarella Bros Pty Ltd v Modena Trading Pty Ltd [2014] HCA 48, [26] (French CJ, Hayne, Crennan and Kiefel JJ) (‘Cantarella’).

4. The High Court of Australia has recognised that the assessment of inherent adaptation involves a two-step process: (1) determining the ordinary signification of the sign to those who would purchase, consume or trade in the goods; and (2) having determined the ordinary signification, the likelihood of the sign being honestly desired for use by other traders.[9]

   [9] Cantarella (n 8) [71].

5. In Fry Consulting Pty Ltd v Sports Warehouse Inc (No 2) Dodds-Streeton J said:

   It is established that a combination mark may be capable of distinguishing by the overall impression it creates, even if the individual elements in isolation lack any such capacity, because, for example, they are commonplace in a trade, or, by parity of reasoning, merely or highly descriptive. When assessing whether a combination trade mark such as the Fry trade mark is adapted to distinguish, it is necessary to consider the combination as a total composition, rather than the individual constituent elements in isolation.[10]

   [10] [2012] FCA 81, [61].

6. The SGP states:

   “Leafscreener or Leaf Screener” has been used as a term to describe products and systems used in the roofing industry for the purpose of eliminating leaves and debris from roof guttering since the late 1980's. In the same way that Hair Dressing or Screen Printing is used as a broad term to identify the basic group of activities that each of those terms are associated with. The term Leafscreener or Leaf Screener has been long established within the building industry as evidenced by the 54 business names that include the word leafscreener, listed on the Australian Business Register including 11 current ABN's, and registrations from at least 1991.

7. The Opponent’s submissions focus on the fact that the Trade Mark contains the word ‘LEAFSCREENER’. However, the Trade Mark is comprised of more than simply the plain word ‘LEAFSCREENER’. It consists of the combination of that word presented in a stylised manner placed above an image of a leaf shaped device with a gridded interior. The Trade Mark is that total combination and not solely the plain word ‘LEAFSCREENER’.

8. I note the decision of a delegate of the Registrar in Grayson’s International Pty Ltd (‘Grayson’s’).[11] Grayson’s concerned trade mark application number 2085666 for goods in class 6, including all of the Designated Goods, for the plain word ‘LEAFSCREENER’. The delegate in Grayson’s decided that word lacked any inherent adaption to distinguish the Designated Goods and it was the subject of a s 41(3) ground of rejection. The application for that trade mark was therefore rejected. I agree with the conclusions of the delegate that the word ‘LEAFSCREENER’ lacks any inherent adaptation to distinguish the Designated Goods. In particular, the word ‘leafscreener’ refers to a device which filters leaves.

   [11] [2022] ATMO 141 (Hearing Officer Butson) (‘Grayson’s’).

9. I note that the device element of the Trade Mark is significant and distinctive. I do not consider this to be a mere illustration of the word ‘LEAFSCREENER’. The device element is a wavy stylised outline of a leaf with an interior grid. The Opponents’ submissions do not persuade me that other traders would honestly desire to use the combination of elements forming the Trade Mark in relation to their own goods, or something so nearly resembling the Trade Mark for the sake of its ordinary signification. The total combination of the device and word elements has sufficient inherent adaptation to distinguish the Designated Goods. For these reasons the Trade Mark is capable of distinguishing the Designated Goods from those of other persons.

10. Accordingly, the s 41 ground of opposition has not been established.

Section 58

1. Section 58 provides that, ‘registration of a trade mark may be opposed on the ground that the applicant is not the owner of the trade mark’. The term ‘owner’ is not defined in the Act. However, it is well established that the owner of a trade mark is the person who first uses it in Australia, or first files a trade mark for it in Australia, whichever is the earlier.

2. To make out this ground, the Opponent must be establish that:

   • a person other than the Applicant used the Trade Mark, or a trade mark with additions or alterations which do not substantially affect the identity of the Trade Mark,[12] in the course of trade in Australia; and
   • the use was before the filing date of the Trade Mark (here the Relevant Date), or before use of the Trade Mark by the Applicant, whichever is the earlier; and
   • the use was in relation to the Designated Goods or in relation to goods considered to be the same kind of thing as the Designated Goods.[13]

   [12] Carnival Cruise Lines Inc v Sitmar Cruises Ltd [1994] FCA 936 (Gummow J). See also, s 7(1).

   [13] Re Hicks Trade Mark (1897) 22 VLR 636 (Holroyd J).

3. The SGP states:

   The applicant did not design or invent Leafscreener and has no rights to the tradmark [sic]. The person attributed with the concept, design and development was a person by the name of Michael Sichel who was awarded an Australian Design award in 1991 as evidenced by the link provided from the applicants own website.

4. For completeness, I note that no dated use of the Trade Mark by the Applicant is provided in the evidence. Therefore, I must decide whether use of the Trade Mark, or a substantially identical trade mark, by another person has occurred before the Relevant Date. The Opponent does not specify on which use of a trade mark shown in the evidence it seeks to rely for its s 58 ground of opposition. However, below I consider each of the Annexures to Stewart-1 in this respect.

5. I first consider Annexure K to Stewart-1 which shows use of Complete Leafscreener in 2013 in relation to ‘leafscreener mesh’. A threshold issue is whether the use of Complete Leafscreener is use of a trade mark which is substantially identical to the Trade Mark. To establish this ‘it is necessary to find that a total impression of similarity emerges from a comparison between the two marks’.[14] I must compare the trade marks side by side, note the similarities and differences and assess the importance of these having regard to the essential features of the trade marks.[15] Whilst both trade marks contain the word ‘leafscreener’, a number of additions and alterations are present in Complete Leafscreener. The Trade Mark includes a depiction of a leaf which contains a grid, below a wavy font rendering the word ‘LEAFSCREENER’. By contrast Complete Leafscreener contains a generic depiction of a single leaf, with different placement, contained in a square. Complete Leafscreener also contains the additional word ‘complete’. I am not satisfied that on a side by side comparison between the Trade Mark and Complete Leafscreener a total impression of resemblance emerges. Therefore, the use demonstrated in Annexure K does not assist the Opponent.

   [14] Optical 88 Limited v Optical 88 Pty Limited (No 2) [2010] FCA 1380 (Yates J).

   [15] Shell Company of Australia Ltd v Esso Standard Oil (Australia) Ltd [1963] HCA 66, [12](Windeyer J).

1. There are also a number of notable differences when comparing Leaf Screener System-2 with the Trade Mark, such as the differing device elements and placement of the device elements, differing stylisation and additional words in Leaf Screener System-2. Applying the same principles as those in paragraph [33] of these written reasons, I am also not satisfied that a total impression of resemblance emerges on a side by side comparison. Accordingly, Annexure I does not assist the Opponent.

2. I note that Annexure A to Stewart-1 shows that an application to register Leafscreener Original as a trade mark lapsed on 2 December 1992. There is no other corroborating evidence of any use of Leafscreener Original and over 30 years have passed since the application lapsed. Regardless, Leafscreener Original is not substantially identical with the Trade Mark as there are also additions or alterations which render the respective marks not substantially identical, such as the presence of the leaf device in the Trade Mark. Therefore, Leafscreener Original does not assist the Opponent in establishing that, as at the Relevant Date, a person other than the Applicant owned the Trade Mark.

3. Regarding Annexures B to E, G to H, J, M, O and P to Stewart-1, these are not dated. Accordingly, this material does not satisfy me that use of a trade mark, including for example Leaf Screener System-1 and Leaf Screener System-3, occurred before the Relevant Date. Annexures Q and R to Stewart-1 are dated after the Relevant Date. Accordingly, Annexures B to E, G to H, J, M and O to R to Stewart-1 do not assist the s 58 ground of opposition.

4. I note that the use of a business name is not necessarily use of a trade mark, which requires use as a badge of origin over an identifiable set of goods or services. There is no evidence before me showing the types of goods or services (if any) offered under the business names shown at Annexures L, K1 and N. Therefore, the business names shown at Annexures L, K1 and N on which the Opponent relies cannot not assist the Opponent for the ground of opposition under s 58.

5. Regarding the statutory declarations at Annexures F and S to V to Stewart-1, where other traders declare that their businesses have used various trade marks that include the word ‘leafscreener’ (‘Word Marks’), I note that none of the declarations contain corroborating evidence of use of the Word Marks. The Word Marks mentioned in the declarations all appear on their face to have additions or alterations, such as the absence of the device element in the Trade Mark, which substantially alter the identity of the Trade Mark. This is also so for Annexures B and C to Stewart-1 insofar as they mention use of ‘leafscreener system’.

6. For these reasons, none of the use of trade marks on which the Opponent relies satisfy the thresholds for a ground of opposition under s 58. Accordingly, the ground of opposition under s 58 has not been established.

Decision

1. Section 55 relevantly provides:

   55  Decision

   (1)  Unless subsection (3) applies to the proceedings, the Registrar must, at the end, decide:

   (a)  to refuse to register the trade mark; or

   (b)  to register the trade mark (with or without conditions or limitations) in respect of the goods and/or services then specified in the application;

   having regard to the extent (if any) to which any ground on which the application was opposed has been established.

2. The Opponent has not established any ground of opposition. Accordingly, the Trade Mark may proceed to registration after the appeal period expires and pending the outcome of any other opposition(s) to registration of the Trade Mark.

3. If the Registrar is served with a notice of appeal before that time, I direct that registration shall not occur until the appeal has been decided or discontinued and that the disposition of the application should otherwise be in accordance with the Court’s order or discretion.

Costs

1. Ther Applicant sought its costs and costs will ordinarily follow the event. I award costs against the Opponent in accordance with Schedule 8 to the Trade Marks Regulations 1995 (Cth).

Benjmain Goldsworthy
Hearing Officer
Oppositions and Hearings
Trade Marks and Designs
9 July 2024