Kenner Electrics Vic Pty Ltd v Wealth Trading Pty Ltd

[2022] ATMO 201

TRADE MARKS ACT 1995

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

Re: Opposition by Kenner Electrics Vic Pty Ltd to registration of trade mark application number 2089353 (Class 37) – K Kenner with device – in the name of Wealth Trading Pty Ltd.

Delegate:	Blake Knowles
Representation:	Opponent: Edwina Whitby of counsel instructed by Baxter IP. Applicant: Andrew Sykes of counsel instructed by RNG Lawyers.
Decision:	2022 ATMO 201 Trade Marks Act 1995 (Cth) – opposition under s 52 – grounds of opposition pursued under ss 42(b), 44, 58, 58A, and 60 – s 44 partially established – application amended to limit services – registration to proceed.

Background

1.     This is a decision in the opposition by Kenner Electrics Vic Pty Ltd (‘Opponent’) to trade mark number 2089353 (‘Application’) filed by Wealth Trading Pty Ltd (‘Applicant’) on 19 May 2020 (‘Relevant Date’) for the following trade mark and services:

(‘Trade Mark’)[1]

Class 37: Diagnosis of faults; Diagnostic maintenance services; Electric appliance installation; Electric appliance installation and repair; Electrical apparatus installation; Electrical apparatus repair; Electrical installation services; Installation of electrical apparatus; Maintenance and repair of electrical apparatus; Maintenance, installation and repair of electrical items and equipment; Repair of electrical appliances; Installation of electronic apparatus; Installation of freezers; Installation of kitchen appliances; Installation of kitchen equipment; Installation of machines; Installation of safes; Kitchen equipment installation; Machinery installation services; Machinery installation, maintenance and repair; Maintenance and repair of electronic installations; Maintenance, installation and repair of household items and equipment; Provision of information in relation to the repair, maintenance and installation of goods; Repair, maintenance and installation advisory services; Repair, maintenance and installation consultancy services; Machinery repair; Maintenance and repair of electronic apparatus; Providing information relating to repairs; Repair of cooking apparatus; Repair of electronic apparatus; Repair of freezers; Repair of kitchen appliances; Repair of machines; Repair services; Safe maintenance and repair; Machinery maintenance services; Servicing of apparatus; Servicing of equipment; Electric appliance repair; Servicing of machines

[1] The Trade Mark consists of a series comprising eighteen representations of the same mark presented in different colours.

(‘Applicant’s Services’)

2. The Application was examined under s 31 of the Trade Marks Act 1995,[2] and subsequently accepted and advertised for opposition on 13 November 2020 with an endorsement indicating that the provisions of s 44(4) had been applied. The Opponent filed a notice of its intention to oppose on 14 January 2021, followed by a statement of grounds and particulars (‘SGP’) on 1 February 2021. The Applicant filed a notice of intention to defend on 26 March 2021.

[2] Unless otherwise stated, each reference to a section or regulation is a reference to a section of the Trade Marks Act 1995 (Cth) (‘Act’) or regulation of the Trade Marks Regulations 1995 (Cth) (‘Regulations’).

3.     The parties had the opportunity to file evidence in accordance with reg 5.14. The Opponent filed Evidence in Support (‘EIS’) on 30 June 2021. The Applicant filed Evidence in Answer (‘EIA’) between 11 and 13 August 2021. The Applicant filed Evidence in Reply (‘EIR’) on 18 October 2021.

4.     The Applicant filed additional evidence on 3 August 2022 (‘AAE’). The AAE clarified errors made in previous declarations and its inclusion was not objected to by the Opponent. As such, I have exercised discretion under reg 21.15(4) to take this information into account.

5.     The parties were given the opportunity to be heard by video conference or written submissions. Both parties elected to be heard by videoconference. The matter was heard before me, as a delegate of the Registrar of Trade Marks, on 22 August 2022. The Opponent was represented by Edwina Whitby of counsel instructed by Warren Chandler of Baxter IP. The Applicant was represented by Andrew Sykes of counsel, instructed by Patrick Toscano of RNG Lawyers. I have decided this matter based on the particulars in the SGP, the evidence, and the written and oral submissions of the parties.

6.     This matter was heard concurrently with an opposition to trade mark application number 2000422 (‘Opponent’s Application’) involving the same parties. However, for the sake of clarity, a separate decision has been issued for each matter.

Grounds and onus

7.     The SGP nominates grounds of opposition under ss 42(b), 44, 58, 58A, and 60.

8.     The Opponent carries the burden of establishing one or more of the grounds of opposition on the balance of probabilities.[3] The rights of the parties are assessed as at the Relevant Date.  

[3] Pfizer Products Inc v Karam [2006] FCA 1663, [22] (Gyles J); Telstra Corporation Limited v Phone Directories Company Pty Ltd [2015] FCAFC 156, [133] (Besanko, Jagot and Edelman JJ).

Evidence

9.     The Opponent’s evidence consists of two declarations, and the Applicant’s evidence consists of seven declarations. For the sake of brevity, I have included a list of all evidentiary declarations in Annexure A.

EIS & EIR

10. Mr Kenner declares that he is a qualified electrician, and that the Opponent adopted the mark KENNER ELECTRICS (‘Opponent’s Word Mark’) due to KENNER being his surname and due to the association of that name with his uncle who previously owned electrical services businesses in NSW and the ACT for over 20 years.

11.     Mr Kenner declares that prior to starting the Opponent’s business, he conducted ASIC and online searches using Google to assess the availability of the Opponent’s Word Mark. He concluded the name was available and commissioned a graphic designer to create a logo on 13 May 2014. An invoice dated 27 May 2014 from Digisign & Print Pty Ltd is annexed, which includes a proof of the following mark:

(‘Opponent’s Composite’)

12.     Mr Kenner declares that the Opponent specialises in domestic, commercial, and industrial electrical work. Mr Kenner declares that the Opponent has continuously used the Opponent’s Word Mark and Opponent’s Composite (collectively, ‘Opponent’s Marks’) since 2014.

13.     Mr Kenner declares that the Opponent’s Marks have been used extensively in advertising and promotional activities, including on the website (‘Opponent’s Website’) vehicles, uniforms, stickers (placed on customer switchboards), stationery, flyers and banners. The Opponent also promotes the Opponent’s Marks via Google AdWords, SEO activities, numerous online directories, and in social media (Facebook and Instagram). Annexed extracts from the Opponent’s Facebook page include numerous positive reviews between 2014 and 2019. Mr Kenner declares that the Applicant has won or been a finalist for several business awards between 2014 and 2019.

14.     Mr Kenner annexes Internet Archive Wayback Machine extracts of the Opponent’s Website from between January 2016 and March 2021. Mr Kenner also annexes numerous invoices for various electrical services provided by the Opponent between 2014 and 2019 bearing the Opponent’s Composite.

15.     Mr Kenner provides figures which indicate that services provided under the Trade Mark have generated a reasonable level of revenue between 2014 and 2019. A relatively modest amount has also been spent on advertising and promotion of the Opponent’s Marks.   

16.     Mr Kenner declares that, in relation by claims by the Applicant that it provides after sales services in relation to various goods being gun safes, scales, soda blasters, camera bags, torches, portable fridges, and electric gate openers, that:

“these goods are not requiring electrical services that would be provided by usual electricians.  They might be provided by an auto electrician that specialises in vehicles outsourced to a sub-contractor”.

Mr Kenner goes on to say that:

“The Cai declaration also suggests that electric gate openers/garage door openers and portable fridges and freezers are electrical in nature. I confirm that a portable fridge or freezer is a powered mobile cooling system that runs off a vehicle’s 12-volt electrical system to keep food and drinks cold (or frozen) indefinitely. The nature of a portable fridge is that a gas or liquid refrigerant absorbs heat from food or drink and is pumped by a compressor which removes the heat and replenishes the refrigerant. There is nothing electrical about the operation of a portable fridge or freezer”.

“The services provided by Kenner Electrics Vic include those detailed in paragraph 25 (above) and in evidence. These services have nothing to do with goods of gun safes, scales, soda blasters, camera bags, torches, portable fridges and electric gate openers’. The customers of these goods would not be looking for an award-winning local A-grade domestic electrician”.

17.     Mr Kenner declares that he is not aware of any instances of confusion in the marketplace between his business and the Trade Mark, despite trading since 2014 and despite the proximity of the two businesses. However, Mr Kenner expresses his concern that the Applicant’s intention to provide general domestic electrical services will cause confusion in the marketplace.  

18.     Mr Kenner declares that the Applicant’s evidence indicates that after sales services provided in relation to its products are limited to providing replacement products, and that neither Mr Cai or Mr Cui in their declarations identify themselves as having any experience or qualification in the electrical trade. Further, there is no evidence that the Applicant employs any person with any specialist or technical skill providing after sales service. Mr Kenner also refers to the DIY nature of the Applicant’s automatic gate openers, the user manual for which states that ‘should electricity be required, use a certified electrician only’.

19.     The remainder of the EIS consists of customer declarations wherein customers refer to electrical services provided by the Applicant in the Melbourne area since 2014.

EIA

20.     Mr Cai in his declarations declares that the Applicant was incorporated in June 2009 and that it developed the KENNER brand in 2011. The Applicant selected KENNER as it has a positive meaning in German, namely, ‘great’ or ‘good’. Mr Cai provides a Google translation that indicates that the German meaning for KENNER is ‘connoisseur’.

21.     Mr Cai declares that the Applicant is the owner of various earlier registered trade marks for KENNER (‘Applicant’s Word Mark’) and the Trade Mark. For the sake of convenience, I shall refer at times to both marks collectively as the ‘Applicant’s Marks’. Full details of the trade mark registrations owned by the Applicant are in Annexure B.

22.     Mr Cai declares that the Applicant has used the Applicant’s Marks in Australia continuously since 2011 in relation to electric gate openers, garage door openers, portable fridges and freezers, scales, soda blasters, gun safes, office safes, camera bags, and camera tripods, gun bags, and torches. Annexed to the declarations are examples of use. Each of the products referred to has been sold in Australia prior to the Relevant Date except gun bags and torches. As such, I will refer to goods sold prior to the Relevant Date, namely: electric gate openers, garage door openers, portable fridges and freezers, scales, soda blasters, gun safes, office safes, camera bags, and camera tripods, as the ‘Applicant’s Relevant Goods’. 

23.     Mr Cai declares that in addition to eBay, the products offered by the Applicant under the Applicant’s Marks are sold on the websites (established 2012) and (established March 2018).  Products have also been sold on the Amazon Australia website since July 2018. Annexed to the declaration is an extract from one of the Applicant’s websites which states that ‘We provide 12 months warranty for most of our products, also after-sales service to our customers, including replacement parts, technical support, repair, and consulting service.’ Also annexed to Mr Cai’s declaration are copies of receipts which Mr Cai declares relates to after sales services. I note that while some of these receipts mention particular products, there is no description of the actual after sales service that was provided.

24.     Mr Cai declares that the Applicant offers after sales services to its Australian customers in the nature of installation, repair, servicing, and maintenance of its products. Mr Cai also refers to various YouTube instructional videos published by the Opponent prior to the Relevant Date, namely:

(i)Video entitled ‘Kenner gate opener remote learning’.

(ii)Video entitled ‘Kenner gate opener external receiver learning’.

(iii)Video entitled ‘How to install electric solar automatic gate opener motor actuator remote control kenner KNL01’.

25.     Mr Cai declares that the Applicant also sells various parts and accessories for KENNER products. Some parts and accessories are not themselves branded with the Applicant’s Marks but are endorsed as being suitable for use with such products by being included in marketing material which displays the Applicant’s Marks. Further, the Applicant’s Marks also appear on a manual that is sometimes sold with parts and accessories.  Mr Cai also notes that several parts and accessories are of an electrical nature, namely wires, battery boxes, alarm lamps, electric locks, exit wands, external receivers, photocells, wall push buttons and keypads, solar controllers, and sliding gate hardware kits.

26.     Mr Cai declares that the Applicant’s Marks were also displayed prior to the Relevant Date at the Opponent’s Bayswater showroom, on product packaging, and on product manuals.

27.     Mr Cai provides revenue and promotional expenditure figures relevant to the Applicant’s Marks between 2013 and 2019. Mr Cai also provides information regarding the level of customer engagement with the Applicant’s eBay store. Overall, the figures are appreciable but not enormous, and indicate that the Applicant is carrying on a genuine and profitable business for a variety of goods including those sold under the Applicant’s Marks. I note that the figures are aggregations that apply to the entire range of the Applicant’s Relevant Goods, and no specific figures have been provided regarding particular categories of goods. However, Mr Cai does however provide a product schedule that indicates the number of views that each product has received on the Applicant’s eBay stores since it was first listed. I note that the electric gate openers, garage door openers, fridge / freezers, safes, scales, camera tripods, and portable soda blasters sold under the Applicant’s Marks have all received a significant number of views.

28.     Mr Guo in his declarations provides additional information regarding the Applicant’s activities, including Internet Archive Wayback Machine extracts of the Applicant’s websites between 2012-2020. Mr Guo also provides a copy of a business card bearing the Trade Mark used by the Applicant’s employees in providing after sales service since 2011. The business cards are handed out by employees at the time of rendering after sales services, and are also available at the Applicant’s warehouse and showroom. Mr Guo also provides photographs of T-shirts bearing the Trade Mark worn by staff members.

29.     Mr Guo confirms that a three-month warranty applies to products sold by the Applicant, during which time the Applicant will repair any defective products free of charge. Other after sales services (such as installation, servicing, and maintenance) are charged on a case-by-case basis. 

30.     Mr Guo refers to further YouTube instructional videos published by the Applicant, namely:

(i)Videos entitled ‘Kenner garage roller door opener – erase all remotes’ and ‘Kenner garage roller door opener – remotes learning’.

(ii)Video entitled ‘Kenner garage opener learn remotes’.

(iii)Video entitled ‘How to learn remotes for Kenner garage opener’.

(iv)Video entitled ‘How to check the limit switch of Kenner swing gate opener’.

(v)Video entitled ‘How to check whether limit switch of Kenner swing gate opener (far end)’.

Discussion

Section 58

1. To establish this ground, the Opponent must show use in Australia, by some person other than the Applicant, of a trade mark that is substantially identical with the Trade Mark,[4] and which has been used for goods or services that are the ‘same kind of thing’ as the Applicant’s Services.[5] The trade mark/s relied on by the Opponent must have been used in the course of trade prior to the Relevant Date, or prior to the date of first use of the Trade Mark, whichever is earlier.

   [4] Carnival Cruise Lines Inc v Sitmar Cruises Ltd (1994) 120 ALR 495, 513 (Gummow J).

   [5] Re Hicks's Trade Mark (1897) 22 VLR 636, 640 (Holroyd J).

2. The test for whether two marks are substantially identical requires that they be assessed as follows:

   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.[6]

   [6] The Shell Co of Australia Ltd v Esso Standard Oil (Australia) Ltd (1963) 109 CLR 407, 414 (Windeyer J).

3. In Pham Global Pty Ltd v Insight Clinical Imaging Pty Ltd (‘Pham’), the Full Federal Court held that a comparison of marks for determining whether they are substantially identical is to be carried out cognisant of the essential elements of the trade marks, noting that essential elements are unlikely to be found in mere descriptive elements.[7] The court went on to find that the following two trade marks were substantially identical, based on the common presence of the word INSIGHT and a similar device, and notwithstanding differences in font, stylisation, and descriptive material:

   [7] [2017] FCAFC 83, [51]-[52] (Greenwood, Jagot, and Beach JJ).

4. However, more recently in PDP Capital Pty Ltd v Grasshopper Ventures Pty Ltd,[8] the Full Federal Court held that the following two trade marks were not substantially identical, having regard to the stylised tail appearing on the last letter of the first mark, and the font and block characteristics of the second mark:

   [8] [2021] FCAFC 128, [160]-[162] (Jagot, Nicholas, Burley JJ).

   35.     The Opponent in the SGP alleges that the Trade Mark is substantially identical with the Opponent’s Word Mark (including as used as part of the domain name and the Opponent’s Composite.  The parties in submissions agreed that the Trade Mark is substantially identical with the Opponent’s Composite. I note that it is unusual for parties to agree on an issue on which the outcome of a matter may turn. However, the agreement appears to be driven by the fact that each party considers their position stronger in respect of which of them first used their respective trade mark for relevant services.

   36.     I give due weight to the concession of the parties regarding substantial identity, and I would defer to it if the matter was borderline. However, I am required to be satisfied that the respective trade marks are substantially identical, and I am not bound to reach this finding simply because the parties agree on the issue. The Trade Mark and the Opponent’s Composite are compared below:

   37.     While both marks share the word KENNER, each also contains a prominent and distinctive device as an essential element. The respective device elements, if considered in isolation, are in my view not deceptively similar. I also consider the devices in this case to be more memorable than the abstract and conceptually similar device elements that formed part of the trade marks under comparison in Pham. Given the overall impact of the distinctive device elements on the respective trade marks, I am not satisfied that the Trade Mark is substantially identical with the Opponent’s Composite.

   38.     Further, given the presence of the K device in the Trade Mark, I am not satisfied that the Trade Mark is substantially identical with the Opponent’s Word Mark. To conclude otherwise would be to effectively ignore a distinctive and prominent essential element of the Trade Mark. This element is more than mere window dressing and is an appreciable cognitive cue. This renders the Trade Mark as not being substantially identical to KENNER ELECTRICS.  

   39.     As the Opponent has not established that the trade marks it had used prior to the Relevant Date are substantially identical with the Trade Mark, the ground under s 58 is not established.

   Section 44

1. To establish grounds of opposition under s 44, the Opponent must rely on at least one pending or registered trade mark with a priority date earlier than the priority date of the Application (in this case, the Relevant Date), and which is in the name of a person other than the Applicant. The earlier mark must be either substantially identical with or deceptively similar to the Trade Mark. The earlier mark must also be filed or registered in respect of services that are similar to the Applicant’s Services, or goods that are closely related to the Applicant’s Services.

2. The Opponent relies on the Opponent’s Application as the basis for the s 44 ground. The Opponent’s Application has a priority date of 3 April 2019 and seeks registration of the Opponent’s Composite in respect of the following services:

   Class 37: Electrical apparatus installation; Electrical apparatus repair; Electrical installation services; Electrical wiring services; Installation of audio electrical apparatus; Installation of electrical apparatus; Maintenance and repair of electrical apparatus; Maintenance, installation and repair of electrical items and equipment; Repair of electrical appliances; Residential, commercial and industrial installation and repair of electrical and computer wiring and cabling; Installation of security systems; Maintenance and servicing of security alarms; Burglar alarm installation; Burglar alarm installation and repair; Electric appliance installation; Electric appliance installation and repair; Installation and repair of air conditioning apparatus; Installation and repair of air-conditioning apparatus; Installation and repair of telecommunication apparatus; Installation of alarms; Installation of apparatus for air-conditioning; Installation of apparatus for heating; Installation of apparatus for ventilating; Installation of burglar alarms; Installation of cable television systems; Installation of communications network apparatus; Installation of communications network instruments; Installation of data network apparatus; Installation of data processing apparatus; Installation of electronic apparatus; Installation of kitchen appliances; Installation of kitchen equipment; Installation of lighting systems; Installation of telecommunications apparatus; Kitchen equipment installation; Provision of information in relation to the repair, maintenance and installation of goods; Telephone installation; Telephone installation and repair; Television equipment installation and repair; all of the aforesaid excluding installation of electric gate openers and garage door openers, and repair and maintenance of electric gate openers, garage door openers, portable fridge / freezers, safes, scales, camera tripods, and portable soda blasters[9]

   [9] The ‘all of the aforesaid exclusion’ appearing at the end of the specification was agreed to by the Opponent during the opposition to the Opponent’s Application.

   (‘Opponent’s Application Services’)

3. The priority date of the Opponent’s Application is earlier than the Relevant Date. As such, I must consider whether the Trade Mark is substantially identical with or deceptively similar to the Opponent’s Composite. If that is the case, then I must consider whether the Applicant’s Services are similar to the Opponent’s Application Services.

4. I have already determined under s 58 that the Opponent’s Marks are not substantially identical with the Trade Mark. As such, I will turn to the assessment of deceptive similarity.  The test for whether trade marks are deceptively similar is broader than the test for whether they are substantially identical and requires that one trade mark so nearly resemble another so that it is likely to deceive or cause confusion.[10] In determining deceptive similarity, I am guided by the following principles:

   [10] Trade Marks Act 1995 (Cth) s 10.

   -There must be a real, tangible danger of confusion, not just a mere possibility.[11] Likelihood of confusion can be established if a number of consumers would be caused to wonder whether the applicant’s goods or services come from some other source. It is enough if the ordinary person entertains a reasonable doubt.[12]

   [11] Southern Cross Refrigerating v Toowoomba Foundry (1954) 91 CLR 592, 595 (Kitto J).

   [12] Coca‑Cola Co v All‑Fect Distributors Ltd [1999] FCA 1721, [39] (Black CJ, Sundberg and Finkelstein JJ); Southern Cross Refrigerating Co v Toowoomba Foundry Pty Ltd (1954) 91 CLR 592, 595 (Kitto J).

   -The impression of the respective marks as a whole must be considered, including the size and prominence of word and device elements and their relationship to each other.[13] However, deceptive similarity can also be found where one mark uses an essential feature of the other.[14]

   [13] Optical 88 Ltd v Optical 88 Pty Ltd (No 2) [2010] FCA 1380, [100] (Yates J); Crazy Ron's Communications Pty Ltd v Mobileworld Communications Pty Ltd [2004] FCAFC 196, [91]-[103] (Moore, Sackville, and Emmett JJ).

   [14] Saville Perfumery Ltd v June Perfect Ltd (1941) 58 RPC 147, 174-5 (Viscount Maugham); De Cordova v Vick Chemical Co (1951) 68 RPC 103, 105-6 (Lord Radcliffe).

   -Consumers may retain an imperfect recollection of a mark or its essential features.[15]

   [15] Crazy Ron’s Communications Pty Ltd v Mobileworld Communications Pty Ltd [2004] FCAFC 196, [79] (Moore, Sackville, and Emmett JJ).

   -It may be relevant that an element of the trade marks under consideration is descriptive. However, descriptiveness does not preclude a finding of deceptive similarity.[16]

   [16] Lift Shop P/L v Easy Living Home Elevators P/L [2014] FCAFC 75, [64] (Besanko, Yates, and Mortimer JJ).

   -The impression of the mark on ordinary consumers is relevant, not the impression on those who are particularly perceptive or cautious, or those who are exceptionally careless or stupid.[17]

   [17] Australian Woollen Mills Ltd v FS Walton & Co Ltd (1937) 58 CLR 641, 658 (Dixon and McTiernan J).

   -It must be considered how the goods or services are ordinarily sold or provided.[18]

   [18] Ibid.

5. I consider the presence of the word KENNER in the Trade Mark, being a distinctive and memorable feature, clearly renders the Trade Mark deceptively similar to the Opponent’s Composite. There is a real, tangible danger that a consumer relying on imperfect recollection may be caused to wonder whether services provided under the respective trade marks originate from the same trade source or are otherwise connected in some way. As such, I must now consider whether the Applicant’s Services are similar to the Opponent’s Application Services.  

   45.     Services will be considered similar to other services, if they are either the same or ‘of the same description’.[19] The test for determining whether services are of the same description as other services is a practical judgement formed by looking at a number of factors, falling within the categories of the nature of the services being considered, their respective purposes, and the trade channels through which they are commonly provided, with no single factor being determinative.[20]

   [19] Trade Marks Act 1995 (Cth), s 14.

   [20] Re Jellinek’s Application (1946) 63 RPC 59, 70.

6. Both the Applicant’s Services and the Opponent’s Application Services cover a very broad range of services that relate to installation, maintenance, and repair, including of electrical devices and appliances. I am satisfied that the broad claims of the Opponent’s Application Services would directly encompass or include services that are the same or of the ‘same description’ as each of the items claimed in the Applicant’s Services (or vice versa). The Applicant also concedes that the respective services are conflicting, and focuses its submissions on honest concurrent use and/or other circumstances under s 44(3) and prior and continuous use of the Trade Mark under s 44(4).

7. The Applicant relies on evidence of use of the Trade Mark in relation to its after sales services for products sold under the Trade Mark, and in relation to goods. I am satisfied on the evidence that the Opponent prior to the Relevant Date at various times likely provided some after sales service. However, I note that invoices provided by the Applicant lack detail as to what specific services were actually provided to customers in particular instances. There is also little other evidence (aside from statements regarding warranties that apply to the Applicant’s Relevant Goods) which substantiates the claim that the Applicant provides maintenance and repair services. Further, there is no evidence that the Applicant actually installed products requiring installation (i.e. electric gate and garage door openers) for customers.

8. I do however consider that the provision of videos on YouTube relating to the Applicant’s gate and garage door openers to be a relevant ‘provision of information service’, in the sense that such videos provide information to consumers assisting with self-installation of the devices in question. I am also satisfied that these videos were available on YouTube from a date prior to the Relevant Date, continuously up until the Relevant Date. I therefore consider that the Applicant has established prior and continuous use in relation to ‘provision of information in relation to the installation of garage door openers and gate openers’ and the provisions of s 44(4) should be applied in relation to these services.  

9. I am not satisfied based on the evidence that the Applicant has established prior and continuous use in relation to the remainder of the Applicant’s Services. As such, I will turn to s 44(3).

10. It is clear that the Applicant has been selling the Applicant’s Relevant Goods under the Trade Mark for a long period of time. I consider that the Applicant has established reputation in the Trade Mark in relation to electric gate openers, garage door openers, portable fridge / freezers, safes, scales, camera tripods, and portable soda blasters. I give weight to the Applicant’s submission that the Applicant would suffer an unjustified hardship if prevented from registering the Trade Mark in relation to the installation, maintenance and repair of such goods. I consider that the circumstances justify registration of the Trade Mark under the provisions of s 44(3)(b) in relation to installation of electric gate openers and garage door openers; repair and maintenance of electric gate openers, garage door openers, portable fridge / freezers, safes, scales, camera tripods, and portable soda blasters.

11. In summary, I consider that the ground of opposition under s 44 is established for all services except for provision of information in relation to the installation of garage door openers and gate openers; installation of electric gate openers and garage door openers; repair and maintenance of electric gate openers, garage door openers, portable fridge / freezers, safes, scales, camera tripods, and portable soda blasters.

12. I will now consider the remaining grounds of opposition in respect of those services mentioned in the paragraph above.   

    Section 58A

13. Section 58A is applicable where a prima facie ground of opposition has been established under s 44, and the Applicant has successfully overcome the ground of opposition by relying on evidence of prior and continuous use under s 44(4). In such cases, if the Opponent can demonstrate that it has used its mark (i.e. the mark forming the basis for the ground for rejection under s 44) in relation to the same or similar services prior to the first use of the Trade Mark continuously up until the Relevant Date, then the Trade Mark must be rejected.  

14. The Applicant has established that s 44(4) should be applied only in respect of provision of information in relation to the installation of garage door openers and gate openers. The evidence does not demonstrate any use by the Opponent of the Opponent’s Composite in relation to the same or similar services. As such, the ground for rejection under s 58A fails in respect of those services.

15. With regards to installation of electric gate openers and garage door openers; repair and maintenance of electric gate openers, garage door openers, portable fridge / freezers, safes, scales, camera tripods, and portable soda blasters, I have decided that the Trade Mark should be registered for these services under the provisions of s 44(3)(b). As such, s 58A does not apply in relation to these services.

    Section 60

    56.     To establish this ground, the Opponent must demonstrate a reputation in a trade mark existing in Australia at the Relevant Date. The Opponent must then prove that because of this reputation, use of the opposed Trade Mark is likely to deceive or cause confusion.

    57.     The Opponent relies on reputation in the Opponent’s Marks as the basis for this ground. The Opponent must establish a reputation and a likelihood of confusion exists amongst a substantial number of consumers.[21] Reputation can be demonstrated in several ways. For example, it can be established by demonstrating that a significant number of consumers are regularly exposed to a particular trade mark or that a mark is viewed with a certain level of esteem in the market. It may also be inferred from a high volume of sales combined with substantial advertising figures and other promotions.[22] The length of use of a trade mark in the Australian market is also relevant in determining the existence of reputation and its extent. However, it is possible for a trade mark to accrue reputation in a relatively short period of time, particularly given the capacity of the Internet and social media to bring immediate and widespread attention to new products and brands.

    [21] Renaud Cointreau v Cordon Bleu International Ltee [2001] FCA 1170, [74]-[75] (Moore, Tamberlin and Goldberg JJ).

    [22] McCormick & Company Inc v McCormick [2000] FCA 1335, [86] (Kenny J).

    58.     The EIS indicates that the Opponent has operated a successful domestic electrician business under the Opponent’s Marks for several years prior to the Relevant Date. While the revenue generated by the Opponent’s Business is not particularly high, it is at the very least indicative of a local reputation in Victoria. Taking this reputation into account, and having regard to the essential feature of the Trade Mark and the Opponent’s Marks being the word KENNER, I am satisfied there is a likelihood of confusion if the Trade Mark was used for services that would normally be provided by a domestic electrician.

16. However, I am not satisfied that confusion is likely to result if the Trade Mark were used in relation to provision of information in relation to the installation of garage door openers and gate openers; installation of electric gate openers and garage door openers; repair and maintenance of electric gate openers, garage door openers, portable fridge / freezers, safes, scales, camera tripods, and portable soda blasters.

    60.     The Opponent has conceded that there has been no confusion between the businesses of the respective parties, notwithstanding their geographical proximity. Further, it is clear from Mr Kenner’s evidence that the Opponent’s primary concern was the likelihood of confusion if the Applicant were to provide general electrical services. Mr Kenner also expressly states that the Opponent’s services ‘…have nothing to do with goods of gun safes, scales, soda blasters, camera bags, torches, portable fridges and electric gate openers’ and that the Applicant’s Relevant Goods are ‘not requiring electrical services that would be provided by usual electricians’. While there is some remote potential for confusion given that some of the Applicant’s Relevant Goods require electricity to operate, I do not consider that this fact gives rises to a ‘real, tangible, danger’.

17. I consider the evidence is insufficient to establish that use of the Trade Mark for provision of information in relation to the installation of garage door openers and gate openers; installation of electric gate openers and garage door openers; repair and maintenance of electric gate openers, garage door openers, portable fridge / freezers, safes, scales, camera tripods, and portable soda blasters would lead to deception or confusion. As such, the ground under s 60 is not established.

    Section 42(b)

18. The Opponent under s 42(b) alleges that use of the Trade Mark would constitute a breach of ss 18 and 29 of the Australian Consumer Law (‘ACL’) and the tort of passing off.

19. As stated under s 60, I am not satisfied that use of the Trade Mark gives rise to a likelihood of confusion in relation to provision of information in relation to the installation of garage door openers and gate openers; installation of electric gate openers and garage door openers; repair and maintenance of electric gate openers, garage door openers, portable fridge / freezers, safes, scales, camera tripods, and portable soda blasters due to reputation in the Opponent’s Marks. For similar reasons, I do not think that consumers would be likely to be misled or deceived, and as such, the claims that use of the Trade Mark would breach ss 18 and 29 of the ACL or constitute passing off are not established.

20. As the Opponent has not established that use of the Trade Mark would be contrary to law, the ground under s 42(b) is not established.

    Resolution of opposition

21. In Apple Inc. v Registrar of Trade Marks, Yates J stated that:

    My finding that the application for registration of APP STORE for the designated services in Class 35 must be rejected determines the fate of the application as a whole. This is because there are no separate applications for registration of the mark for the designated services Classes 38 and 42. There is but one application covering registration of the mark for all the services that have been specified. If the application fails in one respect, it fails as a whole. In these circumstances, is not necessary for me to proceed to determine the registrability of APP STORE for the designated services in Class 38 or Class 42.[23]

    [23] [2014] FCA 1304, [232].

22. In circumstances where an opposition has been established in respect of some, but not all, of the goods or services under consideration, the Registrar may proceed to reject the application in its entirety, under the principles outlined above. However, the Registrar also has a discretion to offer an amendment allowing an applicant to amend the application to remove goods or services for which a ground of opposition has been established.

23. I offered the Applicant the opportunity to amend the specification to:

    Class 37: Provision of information in relation to the installation of garage door openers and gate openers; installation of electric gate openers and garage door openers; repair and maintenance of electric gate openers, garage door openers, portable fridge / freezers, safes, scales, camera tripods, and portable soda blasters.

24. This amendment in my view sufficiently encompasses the services for which I consider the Applicant is entitled to registration.

25. The Applicant agreed to the proposed amendment, which has now been made. On that basis I find that the opposition has not been established for the amended Applicant’s Services. 

    Decision and award of costs

26. I find that, subject to the amendment referred to above, the Opponent has not established any of the grounds of opposition. The Trade Mark may proceed to registration not less than one month from the date of this decision for the following services:

    Class 37: Provision of information in relation to the installation of garage door openers and gate openers; installation of electric gate openers and garage door openers; repair and maintenance of electric gate openers, garage door openers, portable fridge / freezers, safes, scales, camera tripods, and portable soda blasters.

27. An endorsement should be applied indicating that the Trade Mark was registered under the provisions of s 44(4) and 44(3)(b).

28. If the Registrar is served with a notice of appeal, I direct that registration shall not occur until either the appeal is withdrawn or discontinued.  Otherwise, the disposition of the Application should be in accordance with the Court’s order or direction.

1. Both parties sought an award of costs in their favour. Costs generally follow the event. As both parties have had a measure of success, I decline to award costs.

   Blake Knowles

   Hearing Officer

   Delegate of the Registrar of Trade Marks

   14 November 2022

   Annexure A- Evidence declarations

   EIS

   1.Declaration of Jamin Kenner, Managing Director of the Opponent, made on 30 June 2021, with Exhibits JK-1 to JK-38.

   EIA

   2.First declaration of Ming Cai, Director of the Applicant, made on 10 August 2021, with Exhibits MC-1 to MC-173.

   3.Second declaration of Ming Cai, made on 11 August 2021, with Exhibit MC-174.

   4.First declaration of Yin Guo, Company Secretary of the Applicant, made on 10 August 2021, with Exhibits YG-1 to YG-17.

   5.Second declaration of Yin Guo, made on 13 August 2021.

   6.First declaration of Patrick Toscano, solicitor for the Applicant, made on 9 August 2021, with Exhibits PT-1 to PT-36.

   7.Declaration of Shuo Cui, made on 11 August 2021, with Exhibit SC-1 to SC-2.

   EIR

   8.Second declaration of Jamin Kenner, made on 18 October 2021, with Exhibit JK-1.

   AAE

   9.Third declaration of Ming Cai, made on 3 August 2022.

   Annexure B – Applicant’s Registrations

   Trade mark number:   1876005

   Trade Mark: [24]   

   [24] This registration consists of a series comprising eighteen representations of the same mark presented in different colours.

   Filing / Priority Date:  27 September 2017

   Goods/Services:

   Class 6: Cash safes; Cash safes of metal; Cash safes, other than of metal; Fire safe cabinets (safes) of metal; Lockable security containers (safes); Safes (metal or non-metal); Safes, electronic; Security boxes (safes); Security cases (safes) for money; Security chests (safes); Security units (safes); Stores (safes); Strongboxes (safes) not of metal; Strongboxes (safes) of metal; Strongchambers (safes) not of metal; Strongchambers (safes) of metal; Strongrooms (safes) of metal; Safety cashboxes; Safety chains of metal; Safety deposit boxes; Security boxes (money boxes) of metal; Security boxes (money boxes), not of metal; Security boxes of metal; Ammunition boxes of metal; Boxes for stacking purposes (metal); Boxes for storage purposes (metal); Boxes of common metal; Storing boxes of common metal; Cash drawers of metal; Cashboxes (metal or non-metal); Fire safe boxes; Fire surrounds (mantels andmantelpieces) of metal; Fireproof cabinets of metal (other than furniture); Key cabinets (not furniture) of metal; Mechanisms of metal (non-electric) for lifting doors; Mechanisms of metal (non-electric) for lifting windows; Mechanisms of metal (non-electric) for locking doors; Mechanisms of metal (non-electric) for locking windows; Mechanisms of metal (non-electric) for opening doors; Mechanisms of metal (non-electric) for opening windows; Mechanisms of metal (non-electric) for sliding doors; Mechanisms of metal (non-electric) for sliding windows; Portable boxes (containers) of metal; Metal cabinets (other than furniture); Metal security cabinets (other than furniture); Lockable boxes (metal) for cash and valuables; Lockable boxes of metal for tools (empty); Lockable chests of metal for tools (empty); Lockable security containers made of metal; Metal safety boxes; Metal safety valves (other than parts of machines); Safe boxes; Safe deposit boxes; Safety and caution cones (beacons of metal, non-luminous); Security closures of metal; Security containers of metal; Security devices (locks) of metal for vehicles; Security devices of metal, other than for vehicles; Security gratings of metal for the outside of buildings; Security shutters of metal; Security trays of metal; Storage units of metal (other than furniture); Storage units of metal for use in vehicles; Storage vessels of metal (other than for household use); Tool chests of metal (empty); Fire-dogs (andirons); Fireplace mantles of metal; Security door frames of metal for buildings; Security doors of metal for buildings

   Class 7: Automatic door apparatus (electric); Automatic door closing apparatus (electric); Automatic door opening apparatus (electric); Electromechanical apparatus for opening doors; Electromechanical devices for closing doors; Electromechanical devices for closing garage doors; Electromechanical devices for opening garage doors; Electric closers for doors; Electric closers for windows; Electric door closers; Electric door motors, other than for land vehicles; Electric door openers; Electric motors for use with doors; Electric motors for use with windows (other than land vehicle windows); Machines for operating gates (pneumatic or hydraulic); Mechanical closers (electric) for doors; Mechanical closers (electric) for windows; Motorised operating rods for blinds; Motorised operating rods for curtains; Motorised operating rods for doors; Motorised operating rods for roller shutters; Motorised operating rods for windows; Sanding machines; Electricity generating sets; Electricity generators; Automatic closers (electric) for doors; Door openers, electric; Door openers, hydraulic; Door openers, pneumatic; Electrical apparatus for opening doors; Electrical apparatus for opening skylights; Electrical openers for garage doors; Electrical soldering bits; Electrical soldering irons; Electrical welding apparatus; Electrical welding instruments; Electrically heated soldering irons; Electrically operated desoldering hand piece; Electrically operated door closers; Electrically operated drive units for closing doors; Electrically operated drive units for closing garage doors; Electrically operated drive units for closing grilles; Electrically operated drive units for closing shutters; Electrically operated drive units for opening doors; Electrically operated drive units for opening garage doors; Electrically operated drive units for opening grilles; Electrically operated drive units for opening shutters; Electrically operated window closers; Electrically powered machines

   Class 9: Metal tripods for photographic apparatus; Mounts for attachment to tripods for cameras; Tripods for binoculars; Tripods for cameras; Tripods for electronic apparatus; Tripods for loudspeakers; Tripods for microphones; Tripods for photographic apparatus; Tripods for video cameras; Metal monopods for photographic apparatus; Bags adapted for carrying photographic apparatus; Cases adapted for photographic apparatus; Cases adapted for photographic equipment; Cases adapted for photographic instruments; Holders for photographic films; Light flashing apparatus (photographic apparatus); Light sources (flashlamps) for photographic use; Lighting (flashlamps) for photographic use; Fitted bags for photographic apparatus; Photographic apparatus; Photographic apparatus and instruments; Photographic darkroom lighting; Photographic equipment; Photographic racks; Photographic screens; Pouches for photographic apparatus; Stands for photographic apparatus; Bags adapted or shaped to contain cameras; Bags adapted to carry video apparatus

   Class 15: Tripods for musical instruments; Music stands; Music stands adapted for use with musical instruments; Stands for musical instruments

   Trade mark number:   1876629

   Trade Mark:   kenner

   Filing / Priority Date:  9 October 2017

   Goods/Services:  

   Class 6: Cash safes; Cash safes of metal; Cash safes, other than of metal; Fire safe cabinets (safes) of metal; Lockable security containers (safes); Safes (metal or non-metal); Safes, electronic; Security boxes (safes); Security cases (safes) for money; Security chests (safes); Security units (safes); Stores (safes); Strongboxes (safes) not of metal; Strongboxes (safes) of metal; Strongchambers (safes) not of metal; Strongchambers (safes) of metal; Strongrooms (safes) not of metal; Strongrooms (safes) of metal; Safety cashboxes; Safety chains of metal; Safety deposit boxes; Security boxes (money boxes) of metal; Security boxes (money boxes), not of metal; Security boxes of metal; Ammunition boxes of metal; Boxes for stacking purposes (metal); Boxes for storage purposes (metal); Boxes of common metal; Cash drawers of metal; Cashboxes (metal or non-metal); Fire safe boxes; Fire surrounds (mantels and mantelpieces) of metal; Fireproof cabinets of metal (other than furniture); Key cabinets (not furniture) of metal; Metal cabinets (other than furniture); Metal security cabinets (other than furniture); Lockable boxes (metal) for cash and valuables; Lockable boxes of metal for tools (empty); Lockable chests of metal for tools (empty); Lockable security containers made of metal; Metal safety boxes; Metal safety valves (other than parts of machines); Portable boxes (containers) of metal; Safe boxes; Safe deposit boxes; Safety and caution cones (beacons of metal, non-luminous); Security closures of metal; Security containers of metal; Security devices (locks) of metal for vehicles; Security devices of metal, other than for vehicles; Security gratings of metal for the outside of buildings; Security shutters of metal; Security trays of metal; Storage units of metal (other than furniture); Storage units of metal for use in vehicles; Storage vessels of metal (other than for household use); Storing boxes of common metal; Tool boxes of metal (empty); Tool cabinets of metal (empty); Strongboxes (cash boxes); Strongboxes (metal or non-metal); Mechanisms of metal (non-electric) for lifting doors; Mechanisms of metal (non-electric) for lifting windows; Mechanisms of metal (non-electric) for locking doors; Mechanisms of metal (non-electric) for locking windows; Mechanisms of metal (non-electric) for opening doors; Mechanisms of metal (non-electric) for opening windows; Mechanisms of metal (non-electric) for sliding doors; Mechanisms of metal (non-electric) for sliding windows; Tool chests of metal (empty); Fire-dogs (andirons); Fireplace mantles of metal; Security door frames of metal for buildings; Security doors of metal for buildings

   Class 7: Automatic door apparatus (electric); Automatic door closing apparatus (electric); Automatic door opening apparatus (electric); Electromechanical apparatus for opening doors; Electromechanical devices for closing doors; Electromechanical devices for closing garage doors; Electromechanical devices for opening garage doors; Electric closers for doors; Electric closers for windows; Electric door closers; Electric door motors, other than for land vehicles; Electric door openers; Electric motors for use with doors; Electric motors for use with windows (other than land vehicle windows); Machines for operating gates (pneumatic or hydraulic); Mechanical closers (electric) for doors; Mechanical closers (electric) for windows; Motorised operating rods for blinds; Motorised operating rods for curtains; Motorised operating rods for doors; Motorised operating rods for roller shutters; Motorised operating rods for windows; Sanding machines; Electricity generating sets; Electricity generators; Automatic closers (electric) for doors; Door openers, electric; Door openers, hydraulic; Door openers, pneumatic; Electrical openers for garage doors; Electrical soldering bits; Electrical soldering irons; Electrical welding apparatus; Electrical welding instruments; Electrically heated soldering irons; Electrically operated desoldering hand piece; Electrically operated door closers; Electrically operated drive units for closing doors; Electrically operated drive units for closing garage doors; Electrically operated drive units for closing grilles; Electrically operated drive units for closing shutters; Electrically operated drive units for opening doors; Electrically operated drive units for opening garage doors; Electrically operated drive units for opening grilles; Electrically operated drive units for opening shutters; Electrically operated window closers; Electrically powered machines; Electrical apparatus for opening doors; Electrical apparatus for opening skylights

   Trade mark number:   1916372

   Trade Mark: [25]   

   [25] This registration consists of a series comprising eighteen representations of the same mark presented in different colours.

   Filing / Priority Date:  28 March 2018

   Goods/Services:  

   Class 11: Beverage cooling apparatus; Beverage refrigerators for use in automobiles; Beverage-cooling apparatus; Refrigerating apparatus for beverages; Domestic appliances for producing ice; Domestic appliances for refrigerating; Domestic machines for making ice; Electric cool boxes; Electric cooling apparatus for use with milking installations; Food display units (refrigerated or heated); Food servery units (refrigerated or heated); Refrigerated cabinets for the display of food; Refrigerated cabinets for the storage of food; Refrigerators for foodstuffs; Freezer display units; Freezer installations; Freezer storage units; Freezers; Freezing apparatus; Freezing cupboards; Freezing installations; Fridge-freezers; Refrigerating enclosures for freezing; Refrigerating or freezing apparatus for cool rooms; Ice dispensing apparatus; Ice machines; Ice machines and apparatus; Ice makers; Ice making apparatus; Ice making machines; Ice producing apparatus; Ice storage apparatus; Installations for refrigerating; Meat chests (refrigerated); Meat safes (refrigerated); Portable refrigerating boxes (electric); Refrigerated boxes; Refrigerated cabinets; Refrigerated cabinets for the display of drink; Refrigerated cabinets for the storage of drink; Refrigerated counters; Refrigerated display cases; Refrigerated display units; Refrigerated holding and display tanks for live fish and seafood; Refrigerated merchandising apparatus; Refrigerated units; Refrigerating apparatus; Refrigerating appliances; Refrigerating cabinets; Refrigerating chambers; Refrigerating containers (gas); Refrigerating counters; Refrigerating installations; Refrigerating receptacles; Refrigerating rooms; Refrigeration installations; Refrigeration units; Refrigerators; Milk coolers; Milk cooling installations

   Trade mark number:   1916373

   Trade Mark:   kenner

   Filing / Priority Date:  10 April 2018

   Goods/Services:  

   Class 11: Beverage cooling apparatus; Beverage-cooling apparatus; Beverage refrigerators for use in automobiles; Domestic appliances for producing ice; Domestic appliances for refrigerating; Domestic machines for making ice; Electric cool boxes; Electric cooling apparatus for use with milking installations; Food display units (refrigerated or heated); Food servery units (refrigerated or heated); Refrigerated cabinets for the display of food; Refrigerated cabinets for the storage of food; Refrigerators for foodstuffs; Freezer display units; Freezer installations; Freezer storage units; Freezers; Freezing apparatus; Freezing cupboards; Freezing installations; Fridge-freezers; Ice dispensing apparatus; Ice machines; Ice machines and apparatus; Ice makers; Ice making apparatus; Ice making machines; Ice producing apparatus; Ice storage apparatus; Installations for refrigerating; Refrigerating apparatus; Refrigerating apparatus for beverages; Refrigerating appliances; Refrigerating cabinets; Refrigerating chambers; Refrigerating containers (gas); Refrigerating counters; Refrigerating enclosures for freezing; Refrigerating installations; Refrigerating or freezing apparatus for cool rooms; Refrigerating receptacles; Refrigerating rooms; Meat chests (refrigerated); Meat safes (refrigerated); Refrigerated boxes; Refrigerated cabinets; Refrigerated cabinets for the display of drink; Refrigerated cabinets for the storage of drink; Refrigerated counters; Refrigerated display cases; Refrigerated display units; Refrigerated holding and display tanks for live fish and seafood; Refrigerated merchandising apparatus; Milk coolers; Milk cooling installations; Portable refrigerating boxes (electric); Refrigerators; Refrigerated units; Refrigeration units