Lorenzo Mammone v No Flush Urinal Solutions Pty Ltd

[2011] ATMO 117

TRADE MARKS ACT 1995

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

Re:Opposition by Lorenzo Mammone to registration of trade mark application 1289642(11)  -  No Flush BioSleeve logo - filed in the name of No Flush Urinal Solutions Pty Ltd.

Delegate:	Debrett Lyons
Representation:	Opponent:  no representation Applicant:  Janet Stead, principal of Janet Stead & Associates Patent and Trade Mark Attorneys
Decision:	2011 ATMO 117 s52 opposition: Opponent has not established a ground of opposition. Opposition unsuccessful.   Costs awarded against Opponent

Background

1. In this matter No Flush Urinal Solutions Pty Ltd (‘the Applicant’) has applied to register the trade mark current details of which appear below:

   Application No:         1289642
   Priority Date:             16 March 2009

   Goods:Class 11: Apparatus for sanitary purposes; apparatus for water supply; sanitary installations; urinals; apparatus for controlling the flow of water to urinals; automatic flushing installations for urinals; flushing apparatus for urinals; urinal sanitiser units; plumbing components for release of a biological product from the waste outlet of a urinal to reduce odours; components for odour reduction in urinals; fittings for use in plumbing installations to assist in odour reduction; odour reduction fittings and apparatus for sanitary applications; odour reduction fittings and apparatus for urinals; toilets; bidets; showers; sinks; basins; regulating and safety accessories for water apparatus and pipes; water-pipes for sanitary installations; and parts and accessories in this class for all of the aforementioned goods.

   Trade Mark:               

   (‘the trade mark’)

2. The application was examined[1] and advertised[2] as accepted for possible registration in the Australian Official Journal of Trade Marks on 22 October 2009.

   [1] Section 31

   [2] Section 33

3. On 20 January 2010, Lorenzo Mammone (‘the Opponent’) filed Notice of Opposition[3] (‘the Notice’) to the registration of the trade mark.  The Notice cites grounds of opposition under sections 43 and 44 of the Act. 

   [3] Section 52

4. I heard the matter as a delegate of the Registrar of Trade Marks in Perth on 25 August 2011.  The Opponent was not present or represented and did not provide written submissions.  Janet Stead, of Janet Stead & Associates, Patent and Trade Mark Attorneys, represented the Applicant. 

   Onus

5. The Opponent bears the onus of establishing one or other ground of opposition on the balance of probabilities.[4] 

   [4] Pfizer Products Inc v Karam [2006] FCA 1663; (2006) 70 IPR 599 at [6] to [26]; Chocolaterie Guylian N.V. v Registrar of Trade Marks [2009] FCA 891; (2009) 82 IPR 13 at [22] to [26]; 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].

   Evidence

6. The evidence in support of the opposition comprises a statutory declaration of Lorenzo Mammone made 18 June 2010 with Annexures A to K.

7. The evidence in answer to the opposition comprises a statutory declaration of Peter Basanovic made 20 December 2010 with Annexures PB-1 to PB-11.

   Discussion and reasoning

   Section 44

8. So far as relevant to this decision, section 44 of the Act provides that the Applicant’s trade mark must be rejected if it is substantially identical with, or deceptively similar to, a trade mark with an earlier priority date registered or applied for by another person in respect of similar goods or closely related services.

9. The Notice shows that the Opponent relies, for the purposes of section 44, on trade marks 1298787, 1299057, and 1299058.  I note that application 1299058 has lapsed, but more critically, I note that all three trade mark applications had a priority date of 13 May 2009, postdating the priority date of application 1289642, being 16 March 2009.

10. I therefore find that the Opponent has failed to establish its opposition in terms of section 44 of the Act.

    Section 43

11. Section 43 provides that an application for the registration of a trade mark in respect of particular goods or services must be rejected if, because of some connotation that the trade mark or a sign contained in the trade mark has, the use of the trade mark in relation to those goods or services would be likely to deceive or cause confusion.

12. The connotation referred to insection 43 is something which must be inherent to the trade mark at issue.  In the case of Winton Shire Council v. Lomas (2002) AIPC 91-794 it was said at paragraph 19:

    Section 43 is directed to the mark itself. It is not concerned with any deception or confusion caused by the reputation in Australia of some other trade mark. That aspect of the matter is dealt with under s 60. (per Spender J.)

13. In redacted form, the declaration of Mr Mammone states at paragraphs 17 and 18 that:

    The use of the [applied-for] mark by Bio-Flush would be deceptive or confusing due to the reputation that [Opponent’s] mark has already acquired in Australia and a substantial number of persons who have purchased and or intend to purchase the [Opponent’s] product/service, are likely to think that the [Opponent’s] product and the [Applicant’s] product/service are the same product.

    …

    The use of the [applied-for] mark by No-Flush would be contrary to law in that is it misleading or deceptive contrary to the Commonwealth Trade Practices Act 1974. Namely, The exists a real chance that a reasonably significant number of people would be mislead or deceived by the us of the mark in that they would perceive the reference to “bio” in the name Biosleeve, as a reference to the biodegradability nature of the subject sleeve when in actuality, the No-Flush biosleeve product/service is made of traditional plastic..

14. Several issues in that submission must be untangled.  The language and the argument is not limited to section 43, but is referable to section 42(b) of the Act [contrary to law] and perhaps section 60 of the Act [another trade mark with a prior reputation in Australia].  In the first place, neither of those grounds of opposition is recited in the Notice and for that reason alone I am entitled to ignore submissions connected with those grounds.  However, there is nothing in the Opponent’s evidence that would clearly draw me to any conclusion that use of the applied-for trade mark would be contrary to some other law such as the Trade Practices Act 1974 (now repealed)[5], or would be likely to cause confusion of deception in view of the Opponent’s trade marks.  Were it necessary for me to decide the matter, I do not consider that any of the Opponent’s trade marks is deceptively similar to the applied-for trade mark, nor is there the type of evidence which would persuade me to find that the Opponent had a significant reputation in those trade marks before the priority date of the opposed application.

    [5]  See,  Advantage Rent-a-Car Inc v Advantage Car Rental Pty Ltd [2001] FCA 683

15. In so far as paragraphs 17 and 18 of Mr Mammone’s declaration are referable to the ground of opposition under section 43 of the Act, I do not find that use of the integer “bio” in the applied-for trade mark carries with it a direct and obvious connotation that the relevant goods are biodegradable and I do not consider that there is a real or obvious danger of the buying public being deceived or confused about the nature of the goods.  In my estimation, the term “bio” has been so over-used in modern times that any promise it might once have carried (of biodegradability or otherwise), has been diluted to that point where the public would have no specific expectations of the goods.

16. The section 43 ground of opposition has not been established.

    Disposition

17. Section 55 of the Act relevantly provides:

    Decision

    55. Unless the proceedings are discontinued or dismissed, the Registrar must, at the end, decide:

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

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

    Note:  For limitations see section 6.

18. The Opponent has not established a ground of opposition

19. The trade mark application may proceed to registration one month from the date of this decision.  If the Registrar has been served with a notice of appeal before that time, I direct that registration shall not occur until the appeal has been decided or discontinued and that the disposition of the application be in accordance with the Court’s order or direction.

    Costs

20. Having been successful in this matter, the Applicant is entitled to its costs at the official scale.

    Debrett Lyons
    Hearing Officer
    Trade Marks Hearings
    24 November 2011