Luckymaze Pty Ltd v Ametalin IP Pte Ltd

[2022] ATMO 161

TRADE MARKS ACT 1995

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

Re: Opposition by Luckymaze Pty Ltd to registration of trade mark application number 2072468 (Class 19) – CeaseFire – in the name of Ametalin IP Pte Ltd.

Delegate:	Blake Knowles
Representation:	Opponent: Olaf Kretzschmar of One IP International Pty Ltd. Applicant: Ann Fen Lim of Bloom IP Pty Ltd.
Decision:	2022 ATMO 161 Trade Marks Act 1995 (Cth) – opposition under s 52 – grounds of opposition pursued under ss 42(b), 58, and 60 – no grounds established – registration to proceed.

Background

1. This is a decision in the opposition by Luckymaze Pty Ltd (‘Opponent’) to trade mark number 2072468 (‘Application’) in the name of Ametalin IP Pte Ltd (‘Applicant’)[1] filed on 28 February 2020 (‘Relevant Date’) for ‘CeaseFire’ (‘Trade Mark’) for Class 19: Fire retardant materials for building purposes; Non-metallic building materials for fire protection; Non-metallic fire protection materials for preventing the spread of fire in buildings (‘Applicant’s Goods’).

   [1] The Application was initially filed by Amalgamated Metal Industries Pty Ltd but was assigned to the Applicant during the course of the opposition. References to the Applicant in this decision are therefore a reference to the present Applicant and its predecessor in title.

2. The Application was examined, accepted, and subsequently advertised for opposition on 29 July 2020. The Opponent filed notice of its intention to oppose on 7 August 2020, followed by a statement of grounds and particulars (‘SGP’) on 2 September 2020. The Applicant filed a notice of intention to defend on 14 December 2020.

3. The parties filed evidence in accordance with reg 5.14.[2] The Opponent filed Evidence in Support (‘EIS’) on 15 March 2021. The Applicant filed Evidence in Answer (‘EIA’) on 1 October 2021. The Opponent filed Evidence in Reply (‘EIR’) on 7 December 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’).

4. The parties were given the opportunity to be heard by video conference or written submissions. Both parties elected to be heard by way of written submissions, which were subsequently filed on behalf of the Opponent by Olaf Kretzschmar of One IP International Pty Ltd, and on behalf of the Applicant by Ann Fen Lim of Bloom IP Pty Ltd.  I have decided this matter as a delegate of the Registrar of Trade Marks based on the particulars in the SGP, and the evidence and written submissions filed by the parties.

   Grounds and onus

5. The SGP initially nominated grounds of opposition under ss 42(b), 58, 58A, and 60.

6. Given that the Application was not accepted under the provisions of s 44(4), and the Opponent did not nominate s 44 as a ground of opposition, the ground under s 58A was not sufficiently particularised and the SGP was deemed to be inadequate by a delegate of the Registrar. The Opponent was notified of the inadequacy of the SGP on 26 October 2020 and invited to provide further information to rectify the SGP. No further information was provided by the Opponent regarding s 58A, and as such, this ground was removed from the SGP. A rectified SGP was provided to both parties on 16 November 2020.

7. 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

8. The following evidence was filed:

   EIS

   Declaration of Steve Pedley, Director of the Opponent, made on 15 March 2021, with Annexures A to J.

   EIA

   Declaration of Kabir Bostrom, Managing Director of the Applicant, made on 30 September 2021, with Annexures KB-1 to KB-17.

   EIR

   Declaration of Olaf Kretzschmar, representative of the Applicant, made on 7 December 2021, with Attachments A to C.

   EIS

9. Mr Pedley declares that the Opponent has specialised in fire and safety equipment and maintenance since 2004, and that its corporate clients include private businesses, interstate ‘fire companies’, Australian defence industries, and major metropolitan hospitals.

10. Mr Pedley declares that the Applicant has applied to register Australian trade mark number 2110192 (‘Opponent’s Application’) for CeaseFire (‘Opponent’s Mark’) in relation to various goods in Class 9. I note that the Opponent’s Application has a filing date of 7 August 2020, which is after the Relevant Date.

11. Mr Pedley declares that the Opponent has an extensive reputation in the Opponent’s Mark, having established a sizeable client base and generated appreciable and growing annual revenue in Australia since 2004.  Mr Pedley declares that the Opponent has also spent a reasonable sum on promoting the Opponent’s Mark to the public. The sum for promotional expenditure appears to be an aggregated figure which I assume includes the period commencing from the date of first use of the Opponent’s Mark.

12. Mr Pedley annexes various invoices bearing a stylised composite mark incorporating the Trade Mark, the word mark ‘Ceasefire Strategic Safety Solutions’, and the domain name (‘Opponent’s Website’). The invoices primarily relate to servicing of fire prevention and protection equipment including fire blankets, extinguishers, hoses, and hydrants. Some of the invoices also appear to relate to the supply of goods such as extinguishers, extinguisher bags, signs (indicating the location of extinguishers), and various parts and fittings including o-rings, valves, gauges, and anti-tamper seals. One invoice from 2013 relates to the supply and installation of vision panels in a door.  

13. Mr Pedley also annexes the following other examples of use of the Opponent’s Mark:

    (i)Extracts from the Opponent’s Website, including historical extracts sourced from Internet Archive Wayback Machine (‘Wayback Machine’).

    (ii)Extracts from the Opponent’s LinkedIn page.

    (iii)An example of a contractual agreement with a customer from 2006.

    (iv)Letterheads and envelopes.

14. I note the Wayback Machine extracts of the Opponent’s Website indicate that the Opponent provides extinguishers, passive systems, other equipment, training, OH&SW services, and equipment maintenance. The contemporaneous extracts of the Opponent’s Website show specific pages relating to the installation and maintenance of sprinkler systems and smoke alarms and detectors, in addition to a page on passive systems which indicates that the Opponent supplies and installs fire doors.

15. Mr Pedley declares that the Opponent notified the Applicant of its trade mark rights and instances of confusion on 7 September 2020. However, Mr Pedley does not elaborate on the circumstances surrounding the alleged instances of confusion.

    EIA

16. Mr Bostrom declares that the Applicant belongs to the Ametalin group of companies, which is a market leader in the manufacture and supply of innovative, world class building insulation systems, building wraps, building membranes and roof sarking.

17. Mr Bostrom declares that in 2020, the Applicant introduced, under the Trade Mark, a non-combustible weather-proofing and vapour management membrane for National Construction Code fire-resisting systems and non-combustible constructions. Due to its fire-retardant properties, the Applicant’s product effectively stops the external walls of a building from catching fire, thereby preventing the fire from spreading throughout the building. For this reason, the Applicant felt that the term CEASEFIRE was an apt and appropriate trade mark.

18. Mr Bostrom declares that the Applicant commands 100% market share for its product as there is no other competing fire-proof, vapour permeable building wrap insulation in the world. Mr Bostrom declares that given the specialised nature of the Applicant’s product, the target customers are builders, insulation installers, insulation suppliers, architects, and building specifiers.

19. Mr Bostrom provides details of use of the Trade Mark after the Relevant Date, including in Australia and overseas. Annexed examples of use are provided, including technical data sheets which confirm the specialised nature of the Applicant’s product.

    EIR

20. Mr Kretzschmar annexes a letter of demand dated 7 September 2020 sent to the Applicant by the Opponent. The letter alleges misuse of the ® symbol by the Applicant and confusion amongst consumers arising from similarity of the Trade Mark with the Opponent’s Mark. However, no details of the alleged instances of confusion are provided in the letter.

21. Mr Kretzschmar refers to annexed invoices previously sent by the Opponent to the Applicant in 2010 and 2012, which showed the Opponent’s Mark. I note that the invoices relate to maintenance services for sprinkler systems.

22. The remainder of Mr Kretzschmar’s declaration is primarily in the nature of opinion and legal argument. Although such material is not evidence, I have taken Mr Kretzschmar’s submissions in the declaration into account.

    Discussion

    Section 58

23. 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 to the Trade Mark,[4] in relation to goods or services that are the ‘same kind of thing’ as the Applicant’s Goods.[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).

24. I am satisfied that the Opponent’s Mark is substantially identical to the Trade Mark, and that it was used in Australia by the Opponent prior to the Relevant Date. While I note that the Opponent often uses a composite mark, the Opponent also uses the plain word CEASEFIRE including as the identifier in the domain of the Opponent’s Website.   

25. I must now consider whether the Applicant’s Goods are the same or the same kind of thing as any of the goods for which the Opponent has established use prior to the Relevant Date. The test for whether goods are ‘the same kind of thing’ is a narrower assessment than whether goods or services are ‘of the same description’ or are ‘closely related’.[6] In Colorado Group Ltd v Strandbags Group Pty Ltd, Allsop J said:

    The aim of the enquiry is not to find some broad genus in which some common functional or aesthetic purpose can be identified. Nor is it an enquiry about the type of trade in which concurrent use might cause confusion. Rather, it is identifying, in a practical, common sense way, the true equivalent kind of thing or article. For example, use of a mark on hatchets or small axes, created proprietorship in relation to axes: Jackson v Napper 35 Ch D 160. This approach recognises ownership or proprietorship in a mark beyond the very goods on which the mark is used, to goods “though not identical… yet substantially the same” (Hemming HB, Sebastian’s Law of Trade Marks (4th Ed) p 91) or “goods essentially the same… though they pass under a different name owing to slight variations in shape and size” (Kerly DM and Underhay FG, Kerly on Trade Marks (3rd Ed) p 206).  This approach is conformable with the terms of the 1995 Act.[7]

    [6] Colorado Group Ltd v Strandbags Group Pty Ltd [2007] FCAFC 184, [12]-[13] (Kenny J).

    [7] Ibid [89].

26. The majority of the goods and services supplied by the Opponent as shown by dated evidence (extinguishers, blankets, signs, hoses, hydrants, parts and fittings for these goods, and associated maintenance and installation services) are clearly not equivalents or essentially the same as any of the Applicant’s Goods (which are building materials). While the goods may all fall within the broad category of fire prevention or fire protection products, they respectively have different natures and purposes. Further, while the respective goods may be sold through the same trade channels (i.e. large hardware stores such as Bunnings), they would not generally be sold in close proximity to each other.

27. The only product sold by the Opponent that may arguably be the ‘same kind of thing’ as products falling within the scope of the Applicant’s Goods are fire doors. The Opponent’s case in this regard would depend on whether a fire door could be characterised as a building material. However, I am not required to determine this as the evidence does not demonstrate use of the Opponent’s Mark on fire doors prior to the Relevant Date. The only evidence of use in relation to fire doors is on the contemporaneous extract of the Opponent’s Website, which demonstrates use after the Relevant Date.

28. As the Opponent has not proved that it has used the Opponent’s Mark for goods or services that are the same kind of thing as the Applicant’s Goods prior to the Relevant Date, the s 58 ground is not established.

    Section 60

29. 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.

30. The Opponent relies on reputation in the Opponent’s Mark as the basis for this ground. The Opponent in submissions alleges that ‘Ordinary consumers would therefore not likely be able to identify the difference between a trade source that supplies fire retardant materials and a trade source that supplies fire control apparatus, particularly in the present case when the trade marks affixed to such goods and services … are substantially identical’.

31. The Opponent must establish a reputation and a likelihood of confusion exists amongst a substantial number of consumers.[8] 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.[9] 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.

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

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

32. I accept that there is some level of reputation in the Opponent’s Mark, or variations of the Opponent’s Mark that include the Opponent’s Mark as an essential feature. However, considering the invoices provided to substantiate the Opponent’s claim to prior use, the Opponent’s business seems to focus heavily on the installation and maintenance of fire prevention and protection apparatus. It is also not immediately clear from the evidence whether the apparatus supplied and installed by the Opponent are sold under the Opponent’s Mark or third-party brands. One of the Wayback Machine extracts showing photographs of extinguishers displays the brand ‘Eversafe’, which indicates that these products originate from a third party. Overall, it is difficult to characterise the nature and extent of the reputation in the Opponent’s Mark.

33. The Applicant’s Goods are construction materials. These products are specialised and form part of the structure of the building itself. Such goods are different in nature and purpose compared to many of the goods provided by the Opponent, which are primarily non-structural devices and apparatus. It is likely that the tradespersons who purchase, supply, and install the respective goods would be different. It also seems to me that consumers would not expect a business that manufactures or supplies goods such as extinguishers, fire blankets, and fire hoses would also manufacture or supply specialised materials that form part of the structure of a building.  There is also no probative evidence which allows me to reach a different conclusion.

34. There would potentially be an increased likelihood of confusion if reputation existed in the Opponent’s Mark for goods such as sprinkler systems and fire doors, given that such goods are more intrinsically linked to the structure of a building. However, the evidence is not sufficiently detailed to allow me to reach a conclusion regarding the extent to which the sale or promotion of such products contributes to the reputation that may exist in the Opponent’s Mark.   

35. The Opponent also contends that ‘there have been multiple instances of confusion where customers have approached the Opponent regarding the advertisement campaign run by the Applicant’. Evidence regarding circumstances of alleged instances of actual confusion can be helpful in deciding whether there is a likelihood of confusion under s 60. However, no details of the alleged instances of confusion have been provided. As such, I infer that such evidence would not have been helpful to the Opponent’s case.

36. On balance, given the ambiguities in the evidence and the apparently different nature and purpose of the respective goods and services of the parties, I am not satisfied that there is a likelihood of confusion based on any reputation that may exist in the Opponent’s Mark.  

37. For the reasons given above, the ground under s 60 is not established.

    Section 42(b)

38. The Opponent under s 42(b) alleges that use of the Trade Mark would constitute a breach of s 18 of the Australian Consumer Law (‘ACL’), the tort of passing off, and trade mark infringement under s 120 of the Act.

39. As stated under s 60, I am not satisfied that use of the Trade Mark gives rise to a likelihood of confusion due to reputation in the Opponent’s Mark. 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 s 18 of the ACL or constitute passing off are not established.

40. Turning to the claim that use of the Trade Mark would breach s 120 of the Act, the Opponent relies on the Opponent’s Application as the basis for the alleged infringement. However, the Opponent’s Application has a priority date (7 August 2020) which is later than the priority date of the Application (28 February 2020). Further, the Opponent’s Application has not progressed to registration and as such, the Opponent does not have a right to sue for infringement. As such, there is no logical basis for alleging that at the Relevant Date the use of the Trade Mark would breach s 120 of the Act.

41. 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.

    Decision and costs

42. The Opponent has failed to establish any of the grounds of opposition nominated.  The Trade Mark may proceed to registration not less than one month from the date of this decision. 

43. 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.

44. The Applicant requested an award of costs. Costs generally follow the event and I see no reason to depart from that rule. I award costs against the Opponent in accordance with the amounts set out in Schedule 8 of the Regulations.

    Blake Knowles

    Hearing Officer

    Delegate of the Registrar of Trade Marks

    15 September 2022