Lynx Corporation Pty Ltd v Uniflow Australia Pty Ltd

[2005] ATMO 77

TRADE MARKS ACT 1995

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

Re:Opposition by Lynx Corporation Pty Ltd to registration of trade mark application 900140(7) - RAMPOD - filed in the name of Uniflow Australia Pty Ltd.

Delegate:

Deirdre O'Brien

Representation:

Opponent

Unrepresented

Applicant

Carmen Champion of counsel, instructed by Hodgkinson McInnes Pappas

Decision:

Section 52 opposition

Grounds under ss41 and 58 not established.  Registration to proceed.  Costs awarded against opponent

Background

1. Trade mark application 900140 in the name of Uniflow Australia Pty Ltd (‘the applicant’) was accepted for registration in class 7 for the goods air filter performance kits.  The trade mark is the word RAMPOD as depicted below:

1. Registration was opposed by Lynx Corporation Pty Ltd (‘the opponent’).  After both parties had filed and served their evidence, the matter was heard by me, as the Registrar’s delegate, in Sydney on 17 October 2005.  Ms Carmen Champion of counsel, instructed by Hodgkinson McInnes Pappas, Attorneys, appeared for the applicant.  The opponent was unrepresented at the hearing but had filed written submissions made on its behalf by Mr Wayne Willis of F B Rice & Co, Attorneys.

2. In its submissions the opponent said it was relying on the grounds pursuant to sections 41 and 58 in its notice of opposition.  It did not press the other grounds nominated in the notice, being those under sections 42, 43, 44 and 60.

Evidence

DECLARANT	MADE	EXHIBITS	KNOWN AS
Evidence in support
John Bruderlin	03 12 2003	JB.1	First Bruderlin
Bradley Girdwood	16 10 2003
Christopher Mills	31 10 2003
Jeremy Dobbin	12 12 2003	JMD.1 & 2	First Dobbin
Robert Parker	09 02 2004
Jeremy Dobbin	12 02 2004	JMD.3 to 6	Second Dobbin
Evidence in answer
Haydn Gooch	11 08 2004	HG-1 to 7
Brett Middleton	04 10 2004
Terence Pedersen	05 11 2004
Evidence in reply
John Bruderlin	06 06 2005	JB-2 & 3	Second Bruderlin
Wayne Willis	08 06 2005	1 and 2

Section 41 ground

1. Simply stated the opponent will have made out this ground if it establishes that the applicant’s trade mark is one which, in the words of Justice Kitto[1] “…other traders are likely, in the ordinary course of their businesses and without any improper motive, to desire to use…” in connection with air filters for motor vehicles.  As there is no meaning for RAMPOD in any of the standard English dictionaries, the onus is on the opponent to show that it does have a meaning in relation to those goods and/or it is a word that is commonly used in the trade in relation to those goods.

   [1] Clark Equipment Co v Registrar of Trade Marks (1964) 111 CLR 511 at 515

2. The opponent says it has sold motor vehicle air filters since 1970 under the trade mark RAM-FLO (First Bruderlin).  Some of those filters were pod shaped.  According to the opponent by the early 1980s the word RAMPOD had come to be used by its staff and by its customers as shorthand for those pod shaped filters[2].  In support of its claim it has filed and served declarations by others in the trade (Girdwood, Mills, Parker).  The opponent alleges that subsequent to this use of RAMPOD in relation to its (the opponent’s) pod filters, RAMPOD came to have a wider meaning in the trade so that at the filing date of this application[3] RAMPOD signified pod shaped air filters in general (Second Dobbin, Second Bruderlin).  On this basis the opponent says RAMPOD is not capable of distinguishing the applicant’s goods.

   [2] Pod shaped air filters are common to the trade. Both parties concur that ‘pod filter’ is a commonly used description of same (Second Dobbin, Gooch)

   [3] 14 January 2002

Discussion

1. Given the well-known propensity of Australians to shorten names, it is possible some may refer to the opponent’s RAM-FLO filters as RAM filters.  I think it is also possible that some customers would ask for a ‘RAM pod’ when seeking to buy a RAM-FLO pod filter.  However the opponent’s filters have never borne the trade mark RAMPOD, or RAM POD, (First Bruderlin) and there is nothing in evidence to show the opponent promoted them as such[4]. 

   [4] Girdwood and Mills refer to the opponent’s promotion of RAMPOD but do not say how and when this occurred.

2. The opponent has sold a lot of air filters worldwide under the trade mark RAM-FLO (First Bruderlin) but does not specify how many of those sales were in Australia, nor how many were sales of the pod filters known, it says, as ‘rampods’.  If the opponent’s ‘rampod’ filters had been a highly successful product, perhaps setting the benchmark for filters of that kind, it would not be surprising if other traders started to refer to their goods as ‘rampod style’ or even ‘rampods’.   However there is nothing in evidence to show this is what happened.  The opponent claims RAM-FLO filters were the air filter of choice in Australia for the best part of 35 years (Second Bruderlin) but that is not backed up by evidence of sales or market share.  The use of the expression ‘rampod style filters’ in an article from a 2002 motoring magazine[5] does suggest traders had started copying another’s filter.  But I cannot determine from the material before me whether that filter was the opponent’s RAM-FLO pod filter or the applicant’s pod filters sold under the trade mark RAMPOD[6].

   [5] Exhibit JMD.5 to Second Dobbin

   [6] which, according to Gooch and confirmed by Pedersen, was first used in 1989 although the earliest example of its use in evidence dates from 1993 (Exhibit HG-3 to Gooch).

3. The opponent disputes that all the applicant’s use of RAMPOD has been trade mark use.  It points to what it considers to be descriptive use by the applicant in October 2003[7].  However in two advertisements from motoring magazines published in 2002[8] the applicant clearly claimed[9] RAMPOD was a registered trade mark by use of the ® symbol. 

   [7] Exhibit JMD.6 to Second Dobbin

   [8] Exhibits JMD.5 to Second Dobbin and JB-2 to Second Bruderlin

   [9] albeit incorrectly and illegally

4. Overall the evidence does not establish to my satisfaction that RAMPOD (or RAM POD) was or is a common term for pod filters.  The opponent has pointed to what it considers to be descriptive use by others[10] but I find the only material which unambiguously shows RAMPOD and RAM POD being used in this fashion is that taken from the web site of a Perth based business Racing Performance Works[11].  This business refers to filters sold under the K & N trade mark[12] as ‘rampod filters’, ‘ram pod filters’, ‘ram pod systems’ and ‘pod filters’.  That material postdates the filing date by 3 years.  Against this is the article from a 1996 motoring magazine[13] in which the performances of air filters from different manufacturers are compared.  The author of the article uses the terms ‘pods’ and ‘pod filters’ to describe the filter type but only uses the term ‘ram pod’ in connection with the applicant’s Uni Filter Ram Pod[14]. 

   [10] Exhibits JMD.3 & 5 to Second Dobbin

   [11] Exhibits 1 and 2 of Willis

   [12] This is not a trade mark of Racing Performance Works but that of a manufacturer of performance air filters.

   [13] Exhibit HG-5 to Gooch

   [14] The evidence does not show the applicant has used the trade mark of this application, , but rather the trade marks RAMPOD (Gooch HG-2), RAM POD and Ram Pod (Gooch HG-3), and Rampod (Second Bruderlin JB-2).  Pursuant to section 7(1), I find use of these trade marks can be taken to be use of the applied-for trade mark.

5. I do not dismiss the opponent’s explanation of how ‘rampod’ came to be a term it considers to be in common use in the trade.  It is plausible but unsubstantiated.  In the absence of convincing supporting evidence, such as from an expert witness, I find Kitto J’s test has not been made out.  The applicant points to the delegate’s finding in Rimmington v Zen Do Kai Pty Ltd[15] that “the mere fact that a person or entity may use a trade mark in a generic, descriptive manner, whether inadvertent or otherwise, does not mean that it has become public juris or that it is automatically transformed from private property to a publicly available expression”.  While there is some evidence of descriptive use of RAMPOD, I am not satisfied that, at the filing date, RAMPOD or RAM POD were generic terms other traders would legitimately want to use.  The section 41 ground therefore fails.

   [15] (2002) 57 IPR 127 at 133

Section 58 ground

1. In support of this ground the opponent says ‘the applicant has no proprietal rights in the word RAMPOD and is therefore not the owner of the trade mark within the meaning of s.27’.  In response the applicant says that if the opponent’s claim RAMPOD was first used in Australia in connection with its (the opponent’s) pod filters were true, that use was internal use only and not use as a trade mark.  It says the opponent has not shown its filters have ever been sold under the trade mark RAMPOD, or advertised as such.

2. A trade mark is defined in section 17 as ‘… a sign used, or intended to be used, to distinguish goods or services dealt with or provided in the course of trade by a person from goods or services so dealt with or provided by any other person.’  I agree with the applicant that there is nothing in evidence to show the opponent ever used RAMPOD as a trade mark and accordingly I find no reason to disallow the applicant’s claim to ownership.  The section 58 ground fails.

Decision

1. Neither of the grounds of opposition pressed by the opponent has been made out.  My decision is that trade mark application 900140 may proceed to registration upon expiry of the appeal period.  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.

Costs

1. I award costs against the opponent according to the official scale.

Deirdre O'Brien

Hearing Officer

Trade Marks Hearings

15 December 2005