Legend (Pacific) Pty Ltd v Multi-Holding AG

[2015] ATMO 50

TRADE MARKS ACT 1995

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

Re:Opposition by Legend (Pacific) Pty Ltd to extension of protection to international registration designating Australia 1514302 (International Registration No. 962958) – MC4 – held by Multi-Holding AG.

Delegate:	Bianca Irgang
Representation:	Opponent: Written submissions Holder: Mr Ed Heerey of counsel instructed by Allens.
Decision:	2015 ATMO 50 reg. 17A.29: – Sections 41 and 58 pressed – no ground of opposition established.

Background

1. Multi-Holding AG (‘the holder’) has applied for extension of protection of International Registration Designating Australia (‘IRDA’) 1514302 in class 9 of the International Classification of Goods and Services. Relevant details of the IRDA are set out below:

   Trade mark:  MC4

   IRDA:  1514302

   International Registration:  962958

   Priority Date:  5 July 2012

   Specification:  Class 9: Electric, electromechanical and electronic components; connectors and electrical contact devices.

2. The IRDA was advertised as accepted for possible protection in the Australian Official Journal of Trade Marks on 10 January 2013. Legend (Pacific) Pty Ltd (‘the opponent’) filed a Notice of Opposition (‘the Notice’) to protection on 9 April 2013. Thereafter the opponent and holder filed evidence as provided by the Trade Mark Regulations 1995 (‘the Regulations’).

3. I heard the matter in Melbourne on 16 March 2015 as a delegate of the Registrar of Trade Marks. Ed Heerey of Counsel instructed by Allens Patent and Trade Marks Attorneys for the holder. The opponent was not present at the hearing but did provide written submissions for consideration.

   Grounds of Opposition

4. In terms of Regulation 17A.31 the Notice nominated the four grounds of opposition under sections 41, 58, 60 and 62A under the Trade Marks Act 1995 (‘the Act’). However, on 2 March 2014 the opponent filed written submissions which only pressed those grounds of opposition under sections 41 and 58 of the Act.

5. The onus is upon the opponent to establish one or more of its grounds of opposition. Gyles J has referred to the standard of proof required in terms of a ‘balance of probabilities’.[1] His findings upon that issue, arrived at after a consideration of the relevant authorities, have been discussed with approval by Sundberg J in Chocolaterie Guylian NV v Registrar of Trade Marks[2].

   [1] See Pfizer Products Inc v Karam [2006] FCA 1663; (2006) 70 IPR 599

   [2] [2009] FCA 891, para 22-27 (2009) 82 IPR 13. See also Sports Warehouse Inc v Fry Consulting [2010] FCA 664; (2010) 87 IPR 300 at [36] to [39]; NV Sumatra Tobacco Trading Company v British American Tobacco Services Limited [2011] FCA 1051 (9 September 2011) at [16] to [32]

6. Therefore, the grounds of opposition I am considering are those under sections 41 and 58 of the Act. Should the opponent establish one ground of opposition in relation to all of the listed goods, there is no requirement for the other ground of opposition to be considered.

   Evidence

7. The evidence consists of the following statutory declarations:

Declarant	Position	Date Made	Exhibits
Evidence in Support
Hamish McEwin	Chief Financial Officer of Legend (Pacific) Pty Ltd	3.07.13	HM-1 to HM-9
Evidence in Answer
David Faux	National Product Manager – Energy of DKSH Australia Pty Ltd	5.12.13	DF-1 to DF-16
Evidence in Reply
Hamish McEwin	Chief Financial Officer of Legend (Pacific) Pty Ltd	4.03.14	-
Holder’s Further Evidence
Matthias Mack	Global Manager Photovoltaic and an Executive Board Member of Multi-Contact AG	19.12.14	MM-1
Frank D’Amico	Director of PV Technical Support and former Senior Technical Compliance Specialist at the Clean Energy Council	21.01.15	FD-1 to FD-4

Opponent’s Evidence

1. The first declaration of Hamish McEwin (the ‘McEwin 1 declaration’) states that the opponent is an Australian engineering solutions provider operating in the electrical, information technology, semi-conductor, medical and power utility industries. According to Mr McEwin the opponent commenced business in Adelaide in 1962 and now has operations throughout Australia, China and the United States of America. 

2. The McEwin 1 declaration states that the opponent as well as other traders in Australia and overseas, make available MC (multiple contact) connectors and cable extensions which are used for wiring both residential and commercial solar panels. He states that the opponent does not use the term MC4 as a trade mark but it is a term that is required to describe to customers that the cables and/or connectors confirm to standard industry dimensions and/or shape which are well recognized under the acronym MC4. Exhibit HM-1 accompanying the McEwin 1 declaration contains a copy of one of the opponent’s invoices using the term MC4 as part of the product code for a particular range of connectors. Exhibit HM-2 contains a copy of an invoice from a manufacturer in China referencing the term MC4 in the product description of the connector goods it sold to the opponent.

3. Mr McEwin states that MC is a recognizable acronym meaning multiple contact and comes from the fact that the connectors have a bunch of small spring loaded gold plated fingers that ensure good multiple contact.  He further asserts that within the solar industry MC now refers to both MC cables and/or MC connectors and they are the only descriptive terms used for the most part in connection with wiring and solar arrays and nearly all major manufacturers supply and identify their connectors and cables through the use of the terminology MC.

4. To support his assertions of the generic and descriptive nature of the opposed trade mark, Mr McEwin has provided a number of exhibits accompanying his first declaration which contain copies of various web pages and articles relating to the solar power industry. Briefly:

   ·Exhibit HM4 is an extract from the Northern Arizona Wind and Sun website which contains an article called ‘what are MC connectors and cables?’;

   ·Exhibit HM5 is an extract taken from the Wholesale Solar website wherein MC cables are referenced;

   ·Exhibit HM6 is an extract taken from the Solar Power Mart website for an article ‘How to size wiring and cabling for your system’;

   ·Exhibit HM7 is an extract taken from Solar Energy Products in Australia where they are making MC connectors under their brand Marisol;

5. Interestingly, I note that the first paragraph of the article in exhibit HM4 states:

   MC connectors are specially designed for low contact resistance and good stable connections under a wide range of conditions. The term “multi-contact” comes from the fact that the connectors have a bunch of little spring loaded gold plated fingers that insure good contact. The first company to manufacture them is also named Multi-Contact, but Tyco connectors are used on some modules. (emphasis added)

6. Exhibit HM9 contains a copy of one of the opponent’s internal market bulletins dated 7 June 2012 which makes reference to a range of solar accessories including assembled leads, cables and connectors which have used the term MC4 as part of the descriptor or ‘order number’.

   Holder’s Evidence

7. The declaration of David Faux (the ‘Faux declaration’) states that he is the National Product Manager - Energy of DKSH Australia Pty Ltd which is the Australian subsidiary of the Swiss-Based DKSH group of companies which has operations in 35 countries marketing a range of products for power, control, instrumentation, telecommunications and data applications, including cables and connectors. DKSH Australia Pty Ltd is the exclusive Australian distributor of the products of Multi-Contact AG and has had a business relationship with that company for more than 20 years. The holder, Multi-Holding AG, is a holding company for certain assets of the Staubli Group[3] including intellectual property rights. Mr Faux states that the Multi-Contact AG is authorized to use the holder’s intellectual property under its authority and control.

   [3] Multi-Contact AG is part of the Staubli Group of companies whose head office in also in Switzerland

8. According to the Faux declaration Multi-Contact AG was established in Basel, Switzerland in 1962 by the Swiss electrical engineer Rudolf Neidecker. Its core business involved the production of high-quality contact elements and connectors, and tools for their manipulation or modification. Mr Faux states that “MC” is the acronym for the name of Multi-Contact AG which is why it was adopted as a brand for the company’s products and is prominently displayed on product brochures and other company information (Exhibits DF1 to DF4).

9. According to the Faux declaration Multi-Contact AG began selling its MC brand products in Australia in 1975. The products were initially sold through a company called Multi-Contact Australia Pty Ltd. In around 2001, Multi-Contact AG’s products were distributed in Australia by a company called Edward Keller, which later became part of DKSH and, by extension, DKSH Australia Pty Ltd.

10. Mr Faux states that ‘MC’ has been registered as a trade mark by the holder in Australia since 1979 under trade mark registration no. 340560. The details of this registration are as follows:

    Trade mark:  MC

    Trade Mark Registration:    340560

    Priority Date:  26 November 1979

    Specification:  Class 9: Electrical connectors, sockets for electrical connectors, laboratory leads to be used for making electrical connections, connecting cables, disconnectors and distributors, crossbar connectors, connection washers, slide isolators, short circuit bridges, and multicomponent electrical plug and socket units.

11. The holder is also the owner of a number of trade mark registrations for its MC, MC3 and MC4 trade marks in countries including Austria, Italy, Germany, United States of America, Spain and Switzerland.

12. The Faux declaration states that in 1994 Multi-Contact AG began to produce and sell photovoltaic connectors designed primarily for use with solar panels (Exhibit DF-1). Multi-Contact AG was the first company to manufacture such connectors and it remained the sole producer of photovoltaic connectors until 2001 when Tyco Electronics launched a similar product, becoming Multi-Contact AG’s first competitor. According to Mr Faux the first photovoltaic connectors were sold in Australia in 1997 under the ‘MC’ brand. In 2000, the photovoltaic facilities for the Sydney Olympic village were equipped with MC branded connectors produced by Multi-Contact AG (Exhibit DF-2).

13. In 1994 Multi-Contact AG informally marketed its first generation of photovoltaic connectors and associated products under the MC3 brand and in 2003 it began marketing those products informally by reference to the MC4 brand. Although there is nothing in the evidence before me to support this claim. According to Mr Faux, the ciphers “3” and “4” included in these brands do not refer to the nominal diameter of the connector plugs’ pins.

14. In 2009 Multi-Contact AG formally launched the MC3 and MC4 brands. Both the MC3 and MC4 products continued to bear the imprint ‘MC’ on the actual product. However, MC3 and MC4 were and continue to be used on advertising materials and packaging and sometimes on accompanying invoices. At paragraph 22 of the Faux declaration there is a table provided of approximate promotional expenditure in Australia in Australian dollars in relation to MC, MC3 and MC4 branded products. However, these figures have not been broken down to show how much advertising expenditure relates solely to the MC4 trade mark.

15. The Faux declaration also goes into great detail about the growing number of counterfeit copies of Multi-Contact AGs photovoltaic connectors appearing in the marketplace and that a large number of manufacturers produce photovoltaic connectors which they describe as “MC4 compatible” (exhibit DF-10). According to Mr Faux the use of counterfeit, “MC4 compatible” or “MC4 like” connectors carries significant safety risks as there are no ‘standard industry dimensions’ for photovoltaic connectors. The wrong connector or the mis-matching of different brands can cause high resistance connections or allow water egress which can result in premature failure of the solar array and possibly fire. Mr Faux states there are no regulations or standards which stipulate the exact shape or dimensions required for photovoltaic connectors.

16. Mr Faux goes on to state that in light of the significant safety concerns, Multi-Contact AG, as the market leader and owner of the MC4 brand, has embarked on an extensive campaign to educate the market of the presence of and dangers of using counterfeit MC4 connectors. This education has been in place since at least 2010 and includes information on Multi-Contact AG’s website, counterfeit-specific information brochures/newsletters, warnings in product brochures and presentations to industry groups. Exhibit DF-11 contains a copy of a counterfeit-specific brochure/newsletter entitled “PV Power – Dangers of using counterfeit connectors”. In August 2011 the brochure was sent via email to in excess of 8,300 members of the solar industry in Australia as well as electrical contractors and wholesalers. The brochure was also made available at trade shows such as Clean Energy Week 2011, 2012 and 2013, All Energy 2011 and 2012 and National Manufacturing Week 2011 and 2012.

17. Additional and extensive use of Multi-Contact AG’s counterfeit specific information brochures, newsletters, catalogues, exhibitions and presentations is demonstrated in exhibits DF-12, DF-14, DF-15 and DF-16. These exhibits contain examples of advertisements and notices placed in magazines, newsletters and displayed at trade shows and exhibitions which enjoyed a large distribution. Notably, exhibit DF-16 includes photographs of exhibits at the 2010 Intersolar Exhibition (the world’s largest trade show for the solar industry) at which Multi-Contact AG removed counterfeit MC4 connectors from a trader’s display.

18. Mr Faux’s declaration also points out that on 16 July 2012 the amended Australian/New Zealand Standard for ‘Installation and Safety Requirements for Photovoltaic (PV) Arrays’ was published. In recognition of the serious risks posed by the mating of photovoltaic connectors made by different manufacturers, Standard 4.3.7. AS/NZS 5033:2012 was amended to state:

    4.3.7. Plugs, sockets and connectors

    Plugs, sockets and connectors shall –

    (k) only be mated with those of the same type from the same manufacturer.

19. The above statement by Mr Faux is corroborated and further discussed in the declaration of Frank D’Amico and exhibit FD-3 accompanying the D’Amico declaration. Mr D’Amico has experience in the solar energy industry and he became an accredited installer in 2010. I also note he was a Senior Technical Compliance Specialist at the Clean Energy Council (‘CEC’)[4] from February 2011 until September 2013 and that he has been in the Australian solar industry since at least 2004. Mr D’Amico states that in 2009 the Australian Solar Industry started to grow considerably which he attributes to the Government rebates being offered. He states that at that time Multi-Contact AG’s MC3 branded connectors were the most common and readily available in the Australian marketplace and were supplied with the majority of solar panels available on the market.

    [4] The peak industry association made up of over 550 companies operating in the fields of renewable energy and energy efficiency.

20. According to Mr D’Amico, he has been aware of Multi-Contact AG’s MC4 branded connectors since 2009. He states that as the emphasis on safety in the photovoltaic industry around the world increased, Multi-Contact AG released its MC4 branded connector in 2009. Exhibit MM-1 accompanying the declaration of Mattias Mack is a table setting out the total numbers of MC3 and MC4 branded sets of photovoltaic connectors sold both in Australia and world wide from 1998 to September 2014. The numbers provided for sets of connectors sold in Australia from 2008 under either the MC3 or MC4 trade mark are considerable though I note that sales of the MC3 branded connectors understandably decreased whilst the MC4 connector sales increased over the years. However, I note that no invoices relating to these sales have been provided in the evidence to support the claims.

21. Considering the holder’s evidence, the MC4 branded connectors are best described as including a positive action spring clip which requires a dual action to lock and unlock the connector – which means the connectors cannot simply be pulled apart. At the time of its release in 2009 the MC4 product was the only connector available in the Australian marketplace which employed the dual lock system. Mr D’Amico states that as a result of this innovation the MC4 branded connector became, and remains, the highest standard for ‘dual-lock action type’ solar connectors in Australia.

22. Mr D’Amico states that he is aware that Multi-Contact AG has endeavored to educate members of the Australian solar industry of the prevalence of non-genuine ‘MC4’ connectors. Further to this, following changes to the Standard for  “Installation and Safety Requirements for Photovoltaic (PV) Arrays” in 2012 the CEC engaged in significant programs within the Solar Industry to educate installers and suppliers about the Standard and the importance of correctly identifying the products of the manufacturer and the risks involved in failing to do so.

23. The CEC education programs included presentations to members of the solar industry in each capital city of Australia as well as a presentation delivered during Clean Energy Week held at the Sydney Convention Centre on 25-27 July 2012 which I note is after the priority date of the IRDA. The conference was attended by 2,500 local and international delegates of the solar industry. The CEC also sought to educate members of the solar industry about the importance of brands in the use of connector, both in terms of quality and compliance with Australian standards, by means of the installer bulletin which was distributed monthly to every installer in Australia but it is unclear if this occurred before or after the priority date.

24. Mr D’Amico states that he is of the opinion that the result of the combined effect of Multi-Contact AG’s counterfeit warnings and the CEC’s extensive education campaign that the majority of the Australian solar industry understands and recognizes that “MC4” is the brand of Multi-Contact AG rather than a generic description for a type of connector. Mr D’Amico also states branding is critical in the photovoltaic connector industry for two reasons being:

    ·In order for the installation of photovoltaic arrays to comply with Australian/New Zealand standard 5033:2012, connectors can only be mated with those of the same type from the same manufacturer. For this reason it is necessary for the manufacturer of each connector to be easily and correctly identified; and

    ·The mating of connectors from different manufacturers carries significant and potentially life-threatening consequences. There is no standard testing for the compatibility of two connectors. Therefore the risk of fire caused by water egress or high resistance connections is immense.  

    Section 41: Trade mark not distinguishing holder’s goods or services

25. At the priority date, section 41 of the Act stated:

    41 Trade mark not distinguishing applicant’s goods or services

    (1) For the purposes of this section, the use of a trade mark by a predecessor in title of an applicant for the registration of the trade mark is taken to be a use of the trade mark by the applicant.

    Note 1: For applicant and predecessor in title see section 6.

    Note 2: If a predecessor in title had authorised another person to use the trade mark, any authorised use of the trade mark by the other person is taken to be a use of the trade mark by the predecessor in title (see subsection 7(3) and section 8).

    (2) 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 (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.

    (3) In deciding the question whether or not a trade mark is capable of distinguishing the designated goods or services from the goods or services of other persons, the Registrar must first take into account the extent to which the trade mark is inherently adapted to distinguish the designated goods or services from the goods or services of other persons.

    (4) Then, if the Registrar is still unable to decide the question, the following provisions apply.

    (5) If the Registrar finds that the trade mark is to some extent inherently adapted to distinguish the designated goods or services from the goods or services of other persons but is unable to decide, on that basis alone, that the trade mark is capable of so distinguishing the designated goods or services:

    (a) the Registrar is to consider whether, because of the combined effect of the following:

    (i) the extent to which the trade mark is inherently adapted to distinguish the designated goods or services;

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

    (iii) any other circumstances;

    the trade mark does or will distinguish the designated goods or services as being those of the applicant; and

    (b) if the Registrar is then satisfied that the trade mark does or will so distinguish the designated goods or services—the trade mark is taken to be capable of distinguishing the applicant’s goods or services from the goods or services of other persons; and

    (c) if the Registrar is not satisfied that the trade mark does or will so distinguish the designated goods or services—the trade mark is taken not to be capable of distinguishing the applicant’s goods or services from the goods or services of other persons.

    Note 1: For goods of a person and services of a person see section 6.

    Note 2: 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 (1) and 7(3) and section 8).

    (6) If the Registrar finds that 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, the following provisions apply:

    (a) if the applicant establishes that, because of the extent to which the applicant has used the trade mark before the filing date in respect of the application, it does distinguish the designated goods or services as being those of the applicant—the trade mark is taken to be capable of distinguishing the designated goods or services from the goods or services of other persons;

    (b) in any other case—the trade mark is taken not to be capable of distinguishing the designated goods or services from the goods or services of other persons.

    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: 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 (1) and 7(3) and section 8).

1. Section 41 of the Act deals with a trade mark’s capacity to distinguish a holder’s goods or services. It provides a scheme for the assessment of the capacity of a trade mark to distinguish the goods or services of one trader from the similar goods or services of other persons. However, as for any other ground of opposition the onus is on the opponent to make its case under section 41. Therefore, the opponent must establish that the holder’s MC4 trade mark is not capable of distinguishing the goods in question. If the trade mark is found to lack inherent capacity to distinguish, section 41 also provides a scheme for the assessment of whether the trade mark has acquired capacity to distinguish the goods through its use in trade.

2. The question of whether the MC4 is capable of distinguishing the holder’s broad claim for electric, electromechanical and electronic components and connectors and electrical contact devices has been the main point of contention between the holder and the opponent. This issue lies at the heart of the evidence which has been exchanged between the parties.

3. The classic test for determining whether a trade mark is “inherently adapted to distinguish” was stated as folloed by Kitto J in Clark Equipment Co v Registrar of Trade Marks[5], in the following terms:

   "[T]he question whether a mark is adapted to distinguish [is to] 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 connection with similar goods in any manner which would infringe a registered trade mark granted in respect of it.”

   [5] (1964) 111 CLR 511 at 514

4. The High Court in Cantarella Bros Pty Limited v Modena Trading Pty Limited[6](‘Cantarella’) noted the followed part of Kitto J’s test:

   "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"

   [6] (2014) 109 IPR 154 at [26]-[30] per French CJ, Hayne, Grennan and Kiefel JJ.

5. Considering this passage the High Court explained that the inherent adaptability of a trade mark consisting of a work (including a foreign word) is to be tested by checking the ordinary meaning (that is the “ordinary signification”) of the word to anyone ordinarily purchasing, consuming or trading in the relevant goods, which may be characterized as “the target audience”[7]. The High Court held that CINQUE STELLE and ORO (Italian words meaning FIVE STARS and GOLD) were not shown to convey a meaning or idea sufficiently tangible to anyone in Australia concerned with coffee goods as to be words having a direct reference to the character or quality of the goods. The High Court compared those trade mark to the trade mark TUB HAPPY in respect of cotton goods, as trade marks which “convey an allusive or metaphorical meaning in respect of certain goods” rather than directly describing those goods[8].

   [7] Cantarella at [28], [30] per French CJ, Grennan and Kiefel JJ

   [8] Cantarella at [73] per French CJ, Hayne, Grennan and Kiefel JJ

6. Superimposed on this test for inherent adaptability is the so called ‘presumption of registrability’ (which was formulated under the Trade Marks Act 1955), whereby the Registrar must accept an application unless the application has not been made in accordance with the Act, or there are grounds for rejecting it. A trade mark that has an obscure reference to the holder’s goods is not a word or phrase that is likely to be understood by others as a description/direct reference.

7. The opponent argued in its written submissions that I should find the holder’s trade mark MC4 when used in relation to electric, electromechanical and electronic components and connectors and electrical contact devices to be purely descriptive of those goods. The opponent pointed out that many traders used the combination of the letter MC with the numeral 4, namely, “MC4” in relation to connectors for solar arrays. The opponent stated that other traders would need to use MC4 in the ordinary course of trade in relation to these goods. The opponent has asserted that:

   MC is both a recognized and also expected abbreviation of “Multi Contact” or “Multiple Contact” used to characterise connectors used in solar products that ensure multiple contact. The numeral 4 represented a direct description wherein the multiple contact connector is used with 4mm wire associated with the requisite solar panel.

8. However, I note that the holder’s broad claim in class 9 covers many goods which would not fit the above description provided by the opponent. A consideration of the holder’s trade mark demonstrates it is a combination of two letters and a number. Trade marks consisting of three or more letters are prima facie capable of distinguishing because there is likely to be less need for use of these combinations. However they will lack inherent adaptation to distinguish if they are well known acronyms or abbreviations used on or in relation to the goods and/or services concerned. MC4 is defined by the online Acronym Finder[9] as:

   MC4 – Medical Communications for Combat Casualty Care

   MC4 – Mega City Four (band)

   Neither of the above definitions have anything to do with the solar industry.

   [9]The Acronym Finder 1988-2015, Acronym Finder, All Rights Reserved.

9. The opponent has provided a number of exhibits (exhibits HM-4 to HM-8) that it claims demonstrate that other traders in the industry are using MC4 as a descriptor for their connector goods. Counsel for the holder submitted in response to the opponent’s exhibits:

   Northern Arizona Wind & Sun" website – HM-4

   The website of Northern Arizona Wind & Sun refers to a business operating under that name in Flagstaff, Arizona in the United States. This website specifically explains in the second paragraph under the heading "Construction":

   "All current MC type connectors are the latching type, which is the Solarline (MC4), or the Tyco brand connectors used on a few panels."

   Thus it is made clear that. "MC4" relates to the Solarline brand, in contrast to "Tyco brand connectors". Solarline is a brand name of Multi-Contact's photovoltaic connectors.

   "Wholesale Solar" website – HM-5

   The webpage titled " Wholesale Solar"  is a U.S.-based client of Multi-Contact's U.S subsidiary, Multi-Contact USA. Therefore, the reference to 'MC4' in that exhibit is actually a reference to Multi-Contact's 'MC4' brand connectors.

   Malaysian "Solar Power Mart' website – HM-6

   The Malaysian webpage titled "Solar Power Mart' states:

   "Most solar modules are now manufactured with Multi-contact Solarline connectors, (MC connectors, for short) ..... ".

   Again, the use of Solarline shows that this reference to 'MC' relates specifically to the photovoltaic connectors of Multi-Contact.

   "Energy Matters" website – HM8

   An  Australian  website  included  in  Legend's  evidence  is  titled  "Energy  Matters" . Contrary to Legend's submissions, this evidence demonstrates the legitimate use of MC4

   This webpage advertises BP Solar Panels, under the BP product codes 3175N and 3175J. On the second page of the exhibit, under the heading "Configuration", the website reads:

   "BP 3175N Universal frame, a sealed junction  box with output cables and polarised  Multi-Contact MC connectors".

   As used on this webpage, the words "Multi-Contact' commence with capitals like a brand name rather than a generic description of the product. Further, that brand name is followed by "MC' - the addition of those letters serves no obvious descriptive role but rather reinforces the capitalised words "Multi-Contact' to designate the products as branded "MC' or "Multi-Contact' products.

   As Mr Faux notes, this makes it clear that that term "MC' is being used to refer to the company Multi-Contact as the trading origin of the connectors, and not as a description. If the words multi-contact were being used as a description, it would not have been necessary to also include the abbreviation "MC".

   Mr McEwin states wrongly that this is "a generic reference . . . to the industry recognised MC connectors and MC cable extensions". On the contrary, this reference to "Multi­ Contact MC Connectors" is a reference to legitimate Multi-Contact connectors.

   Mr Faux confirms that BP Solar used legitimate Multi-Contact connectors sourced directly from Multi-Contact in Switzerland for use with its solar panel products (paragraph 38 of the Faux declaration). Mr Faux has exhibited an Information Sheet for BP Solar's BP 3170 product, the product referred to in the "Energy Matters" website. That BP Information Sheet has two references to "Multi-Contact connectors", on the first page under "Configuration" and on the second page under "Mechanical Characteristics " (opposite "Output cables").  In each case, the name "Multi-Contact' is capitalised like a brand name, whereas the descriptive term "connectors' is all lower-case.

10. The holder’s submissions are supported by Mr Faux’s affidavit and establish that a number of the exhibits provided by the opponent do not demonstrate descriptive or generic use by other traders of MC4 which makes it a common descriptive acronym in the solar industry. Rather, these traders are customers of the holder that are on-selling the holder’s MC4 branded goods. This leaves very limited evidence before me that MC4 is a common acronym or abbreviation used in the solar industry as a generic reference. Indeed, the only examples before me of MC4 potentially being used to describe the goods or as product codes is contained in exhibits HM-1, HM-2, HM-7 and HM-9.

11. Exhibits HM-1 and HM-9 are copies of one of the opponent’s invoices and an extract from the opponent’s internal bulletin respectively. Exhibit HM-2 contains a copy of the invoice provided to the opponent from the opponent’s Chinese supplier of its MC4 connectors. Exhibit HM-7 contains a copy of a webpage from a trader by the name of MARSOL selling MC4 connectors. The opponent’s evidence of it using the term MC4 as a descriptive product code for its connectors purchased under those product codes from its Chinese supplier even when considered in conjunction with one other trader using the term MC4 is not sufficient to demonstrate that MC4 is a recognized acronym with a distinct and common meaning within the solar industry.

12. The opponent has not demonstrated that the ordinary signification of MC4 is that of a description. Given that the Registrar must approach these matters with a presumption of registrability in mind[10], I find that this ground of opposition is not made out.

    [10] see Registrar of Trade Marks v Woolworths Limited (1999) 45 IPR 411, Lomas v Winton Shire Council [2003] AIPC 91-839, Kowa CompanyLimited v N V Organon [2005] FCA 1282

13. The opponent has not established the ground of opposition under section 41.

    Section 58: Ownership

14. Section 58 of the Act relevantly provided at the date of filing:

    Applicant not the owner of the 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.

1. Ownership of a trade mark may arise in two different ways – at statute by the filing of an application to register that trade mark[11] on particular goods or services[12], or at common-law by the use of that trade mark on the particular goods or services.  The owner of the trade mark is ( in the absence of fraud) the person who first uses it, or first files the application, whichever is the earlier.

   [11] Identical or substantially identical trade marks: Settef SpA v Riv-Oland Marble Co (Vic) Pty Ltd 10 IPR 402 at 413

   [12] ‘the same kind of thing’ Re Hicks’ Trade Mark (1897) 22 VLR 636 at 639-40

2. The holder’s trade mark has a priority date of 5 July 2012 and has been made in respect of goods in class 9. The opponent has stated that the holder is not the owner of the trade mark MC4 as the holder has no claim to proprietorship over the term MC4 in Australia as it was used by others, including the opponent, prior to 5 July 2012 and prior to the first use of the terminology MC4 by the holder in Australia on the listed goods in class 9.

3. The earliest use of the MC4 trade mark demonstrated by the holder is in 2009. The earliest usage of the term MC4 demonstrated by the opponent within Australia is 7 and 20 June 2012 (exhibits HM-1 and HM-9). Most importantly, I note the opponent’s submissions:

   The opponent is not trying to infer anything or suggest an affiliation with the applicant’s MC4 product but simply wanted to point out that the opponent, in good faith has, and continues to, use the term MC4 as a product descriptor and not as a trade mark and examples of the invoices as presented by the opponent show that the term MC4 is not presented as a trade mark but just as a product description.

4. Without any evidence before me of the opponent or any other trader using the term MC4 as a trade mark prior to the holder’s first trade mark use of its MC4 trade mark, as this is a requirement under section 58, I find the opponent has not established the section 58 ground of opposition.

   Decision

5. Subregulation 17A.34(1) provides:

   17A.34(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 any ground on which the IRDA was opposed has been established.

6. The opponent has not established any of the grounds of opposition pressed. Therefore, I decide to extend protection one month from the date of this decision in respect of all the goods listed in the IRDA.

7. If the Registrar has been served with a notice of appeal before that time, I direct that protection shall not occur until the appeal has been decided with protection proceeding or discontinued or, if this decision be successfully appealed, that the application be dealt with as the Court sees fit.  If the Registrar has not been served with a notice of appeal before that time the IB will be notified of this decision as soon as practicable after the appeal period has ended, in accord with reg 17A.34(2).

   Costs

8. It is usual for costs to follow the event, and I see no reason to depart from that principle here. I award costs, according to the official scale set out in Schedule 8 of the Regulations, against the unsuccessful opponent.

   Bianca Irgang

   Hearing Officer

   Trade Marks Hearings

   16 June 2015