Malcolm and Vicki Christie v Deeway Laboratories Pty Ltd as Trustee

[2012] ATMO 97

TRADE MARKS ACT 1995

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

Re:Opposition by Malcolm and Vicki Christie to registration of trade mark application no. 1307509 (3, 5) - PETWAY - filed in the name of Deeway Laboratories Pty Ltd as Trustee.

Delegate:	Heath Wilson
Representation:	Opponents: Grant Spedding of Ffrench Legal, Solicitors. Applicant: Michael Rivette of Counsel instructed by Short Punch and Greatorix, Lawyers.
Decision:	2012 ATMO 97 Opposition to trade mark application under section 52 - grounds pressed under sections 44, 58, 60 and 42 of the Trade Marks Act 1995 – deception or confusion as a result of reputation unlikely – application to proceed to registration – costs awarded against Opponents.

Background

1. On 2 July 2009, Deeway Laboratories Pty Ltd as Trustee (‘the Applicant’) applied for the registration of the following trade mark:

   Petway

   Class 3: Deodorants for pets; shampoos for animals; shampoos for pets; animal care products (other than for veterinary use); animal care products (other than for veterinary use); cosmetics for animals; shampoos for animals; toiletry products for the care of the skin of domestic animals

   
   Class 5: Animal flea collars; flea exterminating preparations; flea sprays; powders for killing fleas; veterinary products for equines; skin treatment (medicated) for animals; animal care products for veterinary use; anti-bacterial preparations for veterinary use; chemical preparations for veterinary purposes; disinfectants for veterinary use; insecticides for veterinary use; liquid preparations for the disinfection of veterinary equipment; liquid preparations for the sterilisation of veterinary equipment; lotions for veterinary purposes; medicines for veterinary purposes; oils adapted for veterinary use; pharmaceutical preparations for veterinary use; veterinary medicaments; veterinary preparations; veterinary preparations for use in improving the coat; veterinary preparations for use in improving the skin; veterinary preparations for use in treating the coat; veterinary preparations for use in treating the skin; veterinary preparations in the form of powder; veterinary products; veterinary products for equines; animal care products for veterinary use; animal flea collars; animal grooming preparations; deodorant preparations for absorbing animal odours; deodorising preparations for use on animals; pharmaceutical preparations for animals; skin treatment (medicated) for animals; antibiotic food supplements for animals; diet supplements for animals (medicated); medicated supplements for foodstuffs for animals; medicinal food supplements for animals; mineral dietary supplements for animals; non-medicated food supplements for animals (minerals); non-medicated food supplements for animals (trace elements); non-medicated food supplements for animals (vitamins); nutritional supplements for animals (for medical use); plant compounds for use as dietary supplements (veterinary); preparations for use as nutritional supplements for animal foodstuffs (minerals); preparations for use as nutritional supplements for animal foodstuffs (trace elements); preparations for use as nutritional supplements for animal foodstuffs (vitamins); supplements (trace element) for foodstuffs for animals; vitamin supplements for animals; vitamin supplements for foodstuffs for animals

2. After acceptance of the above trade mark was published in the Australian Official Journal of Trade Marks on 5 November 2009, registration of the Applicant’s trade mark was opposed by Malcolm and Vicki Christie (‘the Opponents’) via a notice of opposition filed on 19 January 2010. That notice nominated grounds of opposition under sections 44 (with reference to trade mark no. 732251), 58, 60, and 42 of the Trade Marks Act 1995 (‘the Act’).

3. The evidence filed and served by the parties consists of:

   Evidence in Support:

   ·    Statutory declaration of Vicki Irene Christie dated 6 October 2010 with exhibits VC01 - VC62.

   Evidence in Answer:

   ·    Statutory declaration of Robert Nash (Director of the Applicant) dated 19 May 2011 with exhibits RN-1 to RN-34.

   ·    Statutory declaration of Christine Anne Miers (Director of Deeway Pty Ltd) dated 20 May 2011 with exhibits CM01 to CM04.

   ·    Statutory declaration of Wayne Mervyn Thomas dated 23 May 2011 with exhibits WT-1 to WT-10.

   ·    Statutory declaration of Robert Stephen Soden dated 13 May 2011.

   Evidence in Reply:

   ·    Statutory declaration of Vicki Irene Christie dated 26 September 2011 with exhibit VC63.

   ·    Statutory declaration of Malcolm Robert Christie dated 26 September 2011.

   Opponent’s Further Evidence:

   ·    Statutory declaration of Josephine Hamilton dated 5 June 2012.

   ·    Statutory declaration of Anne Saunders dated 29 June 2012.

   Applicant’s Further Evidence:

   ·    Statutory declaration of Paul Damien Jones dated 25 July 2012 with exhibits PDJ1 to PDJ2.

4. A brief history of the Applicant’s and the Opponents’ trade marks extrapolated from the above evidence is as follows:

5. In 1988, Mr Len Miers established a company named Deeway Pty Ltd (ACN 010 633 299) (‘Deeway’) and commenced using the trade mark ‘PETWAY’ for the labels and branding on its animal grooming and insecticidal formulations (such as pet shampoos).[1]

   [1] Statutory declaration of Robert Soden, paragraph 17.

6. Some of the Applicant’s supporting documents show the PETWAY product as being approved in 1994 by the National Registration Authority for Agricultural and Veterinary Chemicals. There is further evidence of use commencing in 1994/1995 and the exhibited examples of product labels bear the Applicant’s trade mark.[2]

   [2] Statutory declarations of Christine Miers (paragraph 20) and Wayne Thomas (exhibits WT01- WT08)

7. In early 1996, the Opponents also developed a PETWAY trade mark for their pet doors which are described as a “way” for pets to enter and exit buildings.[3]

   [3] First statutory declaration of Vicki Christie, paragraph 14.

8. On 15 April 1997 the Opponents applied to register the trade mark ‘PETWAY’ (trade mark no. 732251) for Plastic petflap and access flaps for screen doors & window screens in class 20. The Opponents subsequently used their trade mark on the goods, traded under the business name ‘Petway Access Doors’, obtained a patent for their pet door product (in May 1998), registered the domain name ‘ and obtained a ‘PETWAY’ trade mark in New Zealand.  Mr and Mrs Miers (of Deeway) were aware of the Opponents’ product when it entered the market in or around 1997.[4]

   [4] Statutory declaration of Christine Miers, paragraph 29.

9. Between 1994 and 2003, and during the Opponent’s business activities, Deeway carried out its own business from premises at 3/22 Ereton Drive, Labrador in Queensland. After 2003, Deeway moved to larger premises a short distance away. The Opponents then moved into Deeway’s old premises at 3/22 Ereton Drive, Labrador. Mrs Miers declares that Mr Miers would at times visit the Opponents premises to collect mail that had not been redirected to the new premises.[5] She also attests that in 2004 she and Mr Miers had engaged the Opponents to install a pet access door at their residential home.

   [5] Miers Declaration, paragraphs 31 to 34.

10. On 28 November 2001, Deeway changed its name to Deeway Laboratories Pty Ltd.[6] 

    [6] While this company has the same name as the Applicant, it is a different legal entity (with ACN 134 803 688). This Deeway Laboratories Pty Ltd later changed its name to Miers Gold Coast Pty Ltd on 22 December 2008.

11. On 6 November 2008, the Deeway Projects Trust was established.[7] According to the deed establishing the Deeway Projects Trust, the name of the sole trustee was Rangeways Pty Ltd (ACN 056 521 923) (‘Rangeways’).  On 15 December 2008, Deeway Laboratories Pty Ltd sold its business and all intellectual property rights it owned to Rangeways.[8]

    [7] Statutory declaration of Paul Jones, exhibit PDJ-1.

    [8] Statutory declaration of Robert Nash, exhibit RN01. I will address the relevant details of the contract document at a later point in this decision.

12. On 6 January 2009 by deed of retirement, Rangeways retired as trustee of the Deeway Projects Trust and the Applicant was appointed as the new trustee. Since that date, the Applicant has continued to use the trade mark PETWAY on pet care products. The Applicant then applied for the registration of the opposed trade mark (no. 1307509) on 2 July 2009.

13. The Pet Industry Association of Australia (‘PIAA’) held a Pet Expo on the Gold Coast in October 2009. Both the Applicant and the Opponents were present at this event. It was at this point that Mrs Christie declares she first became aware of the use of the Applicant’s trade mark. It is however clear that Mr Nash (Director of the Applicant) had previously been aware of the Opponents’ product, but that he did not consider that confusion between the brands was likely. Rather than go into detail here, it will suffice to say that there is disagreement over the content of the consequent conversation that took place between the parties.  

14. Following this conversation, whatever its content, the Applicant’s trade mark was opposed, the evidence stages completed, and the requested hearing took place in Canberra on 27 July 2012. I heard the matter as a Delegate of the Registrar of Trade Marks. Grant Spedding of Ffrench Legal, solicitors appeared via teleconference on behalf of the Opponents. Michael Rivette of Counsel appeared in person on behalf of the Applicant, instructed by Short Punch & Greatorix, Solicitors.

15. The Opponents sought to press all of the grounds nominated in the notice of opposition. Both parties acknowledged that the standard of proof was the balance of probabilities[9] and that the Opponents bore the onus of establishing at least one of the grounds of opposition to that standard.

    [9] Following Gyles J in Pfizer Products Inc v Karam [2006] FCA 1663; 237 ALR 787; (2006) 70 IPR 599 at [6] to [26]. See also Chocolaterie Guylian N.V. v Registrar of Trade Marks [2009] FCA 891; (2009) 180 FCR 60; (2009) 258 ALR 545; (2009) 82 IPR 13; [2009] AIPC 92-355 per Sundberg J at [22] to [26] and Tricarico v Dunn Bay Holdings Pty Ltd [2012] FCA 271 (23 March 2012) per McKerracher J at [9] to [10].

    Discussion

16. Section 44(1) of the Act relevantly provides:

    Section 44: Identical etc. trade marks

    (1) Subject to subsections (3) and (4), an application for the registration of a trade mark (applicant’s trade mark) in respect of goods (applicant’s goods) must be rejected if:

    (a)the applicant’s trade mark is substantially identical with, or deceptively similar to:

    (i)a trade mark registered by another person in respect of similar goods or closely related services; or

    (ii)a trade mark whose registration in respect of similar goods or closely related services is being sought by another person; and

    (b)the priority date for the registration of the applicant’s trade mark in respect of the applicant’s goods is not earlier than the priority date for the registration of the other trade mark in respect of the similar goods or closely related services.

17. In support of the section 44 ground of opposition, the Opponents argued that their trade mark registration below is substantially identical (and deceptively similar) to the applied for trade mark, has an earlier priority date and is protected for similar goods to that claimed in the specification of the Applicant’s trade mark:

TM No.	Trade Mark	Filing Date	Class / Statement of Goods
732251	PETWAY	15.4.97	Class 20: Plastic petflap and access flaps for screen doors & window screens

1. I will firstly address whether the two trade marks are substantially identical.[10] Windeyer J in Shell Co (Aust) Ltd v Esso Standard Oil (Aust) Ltd[11] set out the relevant test for comparison in this regard: 

   [the trade marks] 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

   [10] Noting the approach taken by French J in Registrar of Trade Marks v Woolworths [1999] FCAFC 1020; [1999] FCA 1020; (1999) 93 FCR 365; (1999) 45 IPR 411; [1999] AIPC 91-499 at [39-40].

   [11] (1961) 109 CLR 407 (at 414 - 415).

2. Both the Applicant’s and the Opponents’ trade marks consist of the word ‘PETWAY’ in plain typeface albeit one is represented in block capitals. In this regard, the comments of Jenkins LJ in Morny Ltd’s Trade Marks[12] are relevant:

   [T]he registration of a word in block capitals must cover use of that word in any clearly legible form of lettering and not be confined to its representation in block capitals…

   [12] Morny Ltd’s Trade Marks (1951) 68 RPC 55; (1951) 68 RPC 131 (CA UK) (at 149-150).

3. I find that the trade marks are substantially identical and since the Opponents’ registration clearly has an earlier priority date, the decisive issue in this matter is whether the specific goods in class 20 of the Opponents’ specification are similar to the goods in classes 3 and 5 in the Applicant’s specification.  

4. The Assistant Comptroller in Re an Application by John Crowther & Sons (Milnsbridge) Ltd[13] summarised the now oft-quoted considerations for the similarity of goods:

   In the case of Jellinek's Application (1946) 1A IPR 393; 63 RPC 59, Romer J. classified these various factors under three heads, viz, the nature of the goods, the uses thereof, and the trade channels through which they are bought and sold. No single consideration is conclusive in itself.

   [13] Re an Application by John Crowther & Sons (Milnsbridge) Ltd (1948) 65 RPC 369 (at 372).

5. The Opponents’ goods are specifically limited to plastic petflaps that can be attached to external doors and windows. Conversely, the Applicant’s goods are pet care products ranging from anti-parasitical shampoos to veterinary preparations such as food supplements for animals. The fact that (in the current NICE classification system) the respective goods reside in different classes does not determine the question.

6. Mr Spedding argued that the likelihood of the goods being sold via the same trade channels (specifically, from pet stores) was of paramount importance. While I accept that the respective goods may both be sold in pet stores, this is only one of the relevant considerations that I must take into account. The nature and uses of the goods are different and while pet owners are normally the target market it is clear that veterinary preparations, deodorants, shampoos and food supplements perform an entirely different function to pet doors. In addition, pet doors are mainly of interest only to owners of dogs and cats. Taking into account notional trade mark use on all of the goods claimed by the Applicant, there is scope for its trade mark to be exposed to a much broader range of animal owners. I find it unlikely that customers would expect a trader that produces medicinal preparations for pets to also make pet doors (or vice versa).    

7. The fact that the relevant goods may be sold within the same pet shop is not sufficient in my view for confusion or deception to occur (despite the similarity of the trade marks) as the nature and uses of the goods are vastly different. As a result, the goods in the respective specifications are neither the same nor of the same description and the ground of opposition under section 44 of the Act has not been established.

8. Section 58 of the Act provides:

   Section 58: Applicant not owner of 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.

9. It is well established that the first person to apply to register a trade mark will, in most cases, be entitled to claim to be the owner.  An exception to this general statement will apply if a trade mark has been used before the filing date (in this instance, 2 July 2009).  In that event, and in the absence of fraud, the owner of a trade mark in Australia for the particular goods or services is taken to be the first person to use it (“first user”) in the course of trade in Australia in relation to those goods or services.[14] The first user need not have invented or first thought of the trade mark,[15] but rather it is the first party to use it in a trade mark sense in Australia.

   [14] Settef SpA v Riv-OlandMarble (Vic) Pty Ltd 10 IPR 402 at 413.

   [15] Aston v Harlee Manufacturing Co [1960] HCA 47; (1960) 103 CLR 391; [1960] ALR 605; 34 ALJR 242 at 399 per Fullagar J.

10. The Opponents’ argument under this ground was not that they had the earlier use of a substantially identical trade mark on the same goods (as is often the argument in matters such as these), but rather that the Applicant could only be found as the owner of the PETWAY trade mark (according to the Opponents’ written submissions) “by acquiring title from the alleged originator of the trade mark.”

11. As mentioned above, the Applicant enjoys a presumption of ownership arising from the act of filing.[16] This presumption can be displaced by earlier use of the trade mark by a third party, but only on goods that are ‘the same kind of thing’[17] as the Applicant’s goods. As the Opponents’ use of its trade mark preceding the priority date is not on the same kind of goods as the Applicants’, it is only the Applicant’s purported predecessor in title who has the earlier use of ‘PETWAY’ in relation to the goods in classes 3 and 5.    

    [16] Aston v Harlee Manufacturing Co (supra).

    [17] Re Hick’s Trade Mark (1897) 22 VLR 636 at 640.

12. The Opponents must establish on the balance of probabilities that use of the PETWAY trade mark by the predecessor in title was not use by the Applicant. For the Opponents, Mr Spedding was particularly critical of the contract for the sale of business between Deeway Laboratories Pty Ltd and Rangeways and questioned whether said sale included the PETWAY trade mark. While there is no specific mention of the trade mark ‘PETWAY’ in the contract, Item O of the contract refers to ‘Industrial and Intellectual Property’ and ‘Goodwill’ as part of the purchase price. The standard conditions of the contract (at clause 3.1) also describe the business of Deeway Laboratories Pty Ltd as including (inter alia) the goodwill, industrial and intellectual property. If any doubt remained over whether the trade mark PETWAY formed part of that sale, both Mr Nash and Mrs Miers (Director of the first Deeway Laboratories Pty Ltd) attest to that fact.     

13. Furthermore, there is nothing to indicate that the use of the Applicant’s PETWAY trade mark was abandoned during the various changes in ownership. On the contrary, the Applicant has demonstrated instances of trade mark use since at least 1994 in relation to many of the goods in classes 3 and 5. With reference to the history of ownership set out above and the associated evidence before me, I am satisfied that a clear chain of title exists between Deeway and the Applicant. Deeway is therefore the predecessor in title to the Applicant and I am satisfied that any trade mark use by it should also be taken as trade mark use by the Applicant.[18]

    [18] See section 6 of the Act.

14. Accordingly, the Opponents have not demonstrated prior use of the trade mark by another party, or prior trade mark use on goods that are ‘the same kind of thing’ as the goods in the specification of the Applicant’s trade mark. The ground of opposition under section 58 of the Act has not been established.

15. Section 60 of the Act provides:

    Section 60: Trade mark similar to trade mark that has acquired a reputation in Australia

    The registration of a trade mark in respect of particular goods or services may be opposed on the ground that:

    (a)another trade mark had, before the priority date for the registration of the first-mentioned trade mark in respect of those goods or services, acquired a reputation in Australia; and

    (b)because of the reputation of that other trade mark, the use of the first-mentioned trade mark would be likely to deceive or cause confusion.

1. To succeed under the section 60 ground of opposition, the Opponents must be able to demonstrate that an Australian reputation existed in their PETWAY trade mark as at 2 July 2009 such that the use of the Applicant’s PETWAY trade mark on its goods would be likely to deceive or cause confusion. Even if the Opponents can establish that a reputation in their trade mark existed, any possible or actual confusion in the marketplace should arise as a result of that reputation.

2. The first statutory declaration of Vicki Christie sets outs the extent and nature of the Opponents use of their PETWAY trade mark. After developing the pet door product in 1996, registering the business name ‘Petway Access Doors’ and the domain name ‘ the Opponents commenced using the trade mark in relation to their pet doors. While the Christie declaration attests to use of the trade mark since 1996, the evidence to support use from that date only consists of the above preliminary preparations. However, I am satisfied that since at least 1998 the trade mark appeared on their website, employees were wearing uniforms bearing the trade mark and the Opponents’ product was being sold in Brisbane and on the Gold Coast. I also note that in August 1999, the Opponents were looking to find a distributor to sell their product in Australia but they instead decided to sell direct to pet shops.

3. In McCormick & Co Inc v McCormick,[19]  Kenny J said:

   In practice, it is commonplace to infer reputation from a high volume of sales, together with substantial advertising expenditures and other promotions, without any direct evidence of consumer appreciation of the mark, as opposed to the product.

   [19] McCormick & Co Inc v McCormick (2000) 51 IPR 102 at 127.

4. I have no evidence before me relating to the sales and turnover figures or annual advertising for the Opponents’ pet doors but the statutory declaration does contain some figures relating to certain advertising and promotional activities. Those figures, however, are modest for a trade mark that has been in use since 1998. Keeping those deficiencies in mind, it is worth noting the comments of Lockhart J in ConAgra Inc v McCain Foods (Aust) Pty Ltd:[20]

   But reputation within the jurisdiction may be proved by a variety of means including advertisements on television, or radio or in magazines and newspapers within the forum. It may be established by showing constant travel of people between other countries and the forum, and that people within the forum (whether residents there or persons simply visiting there from other countries) are exposed to the goods of the overseas owner …

   [20] ConAgra Inc v McCain Foods (Aust) Pty Ltd (1992) 33 FCR 302 at 343; 23 IPR 193 at 234.

5. The Opponents have employed a variety of means to promote their PETWAY trade mark including letterheads, stickers, instructional brochures, business cards, employee clothing, personalised car license plates, office signage and on its website. Ms Christie attests to advertisements in a local Gold Coast community newspaper, in a pet magazine, in a Pet Industry Newsletter over two years, advertisements in the Yellow Pages phone directory from 1999 to 2005, and sponsorship of the RSPCA Million Paws Walk in 2004. Further instances of advertising include the promotional stand at the annual PIAA which the Opponents have managed since the year 2000.

6. The reputation required for section 60 must be in relation to a significant number of persons, but that requirement must be “properly and sensibly applied.”[21] In this matter, I find that the reputation in the Opponents’ trade mark is moderate and localized in nature. Whether that is sufficient will depend on a number of factors including the similarity between the trade marks, the industry in which the Opponents trade mark has been used and any instances of confusion - to which I will now turn.

   [21] “Bali” Trade Mark [1969] RPC 472 at 496

   Likelihood of Deception or Confusion

7. Ms Christie attests to a number of instances of confusion between the trade marks in her first statutory declaration commencing from November 2009. Although those instances occur after the priority date of the opposed application, I do not think that they can be simply dismissed on that basis. As  Burchett J commented in Conde Nast Publications Pty Ltd v Virginia Taylor:[22]

   But it is commonplace of the law of evidence that later events may cast light upon the true position at an earlier date.

   [22] Conde Nast Publications Pty Ltd v Virginia Taylor (1998) 41 IPR 505 (at 509):

8. The nature of the confusion involves certain customers sending queries regarding the purchase of pet shampoo, herbal sprays, and pet deodorants to the Opponents’ business. Some are existing customers and include owners of dog washing/grooming businesses, a pet shop and an organiser of a pet trade show.

9. With one possible exception[23], I am not satisfied that this confusion has resulted from the Opponents’ reputation in its trade mark. It is more likely that the confusion has arisen from the similarity between the respective business names and website/email addresses, the proximity of the businesses and/or the Applicant’s own reputation in its trade mark. For instance, some of the customers have searched the Internet and contacted the incorrect business, some have referred instead to the Applicant’s reputation for pet shampoos and one instance of confusion involving a courier is likely to have occurred due to the proximity of the businesses and similarity in business names as opposed to the reputation in the Opponents’ trade mark.  

   [23] Statutory declaration of Anne Saunders.

10. The Opponents are operating out of the former business premises of the Applicant’s predecessor in title. Both the Applicant and the Opponents trade in the same locality on the Gold Coast and there is an inevitable overlap of customers between the two businesses. The High Court considered the proximity of the parties’ businesses to be irrelevant for determining deception arising from reputation and said: [24]

    The possibility of identity or similarity of names of owners of trade marks - and also of proximity of businesses - is present in every case. Confusion arising from such circumstances does not constitute deception arising from the use of a trade mark. The actuality of such identity of names and proximity of businesses does no more than demonstrate beyond question that such a possibility is real and not merely imaginary. Such circumstances as these, which are present in every case, cannot be evidence of the likelihood of deception…

    [24] Sym Choon & Co Ltd v Gordon Choon Nuts Ltd (1949) 80 CLR 65 at 72.

11. While I agree with Mr Rivette’s argument that the goods of the trade marks are different, it is possible that they may be sold through similar outlets. For section 60, it is relevant to consider a notional use of the trade mark on all of the Applicant’s goods with the reputation in the Opponents’ trade mark. So, the fact that the Applicant has to date sold its goods primarily to pet care professionals such as veterinarians, pet salons and animal breeders rather than pet shops is irrelevant. The goods in the Applicant’s specification are not limited in scope and those products may still be sold via the same trade channels as the Opponent’s pet doors. As Mason J in Berlei Hestia Industries Ltd v Bali Co Inc[25] observed:

    …The question whether there is a likelihood of confusion is to be answered, not by reference to the manner in which the respondent has used its mark in the past, but by reference to the use to which it can properly put the mark. The issue is whether that use would give rise to a real danger of confusion.

    [25] Berlei Hestia Industries Ltd v Bali Co Inc (1973) 129 CLR 353 at 362; 1 ALR 443 at 450.

12. Generally speaking, an opponent need not point to actual instances of confusion in order to successfully establish the section 60 ground, but the confusion which has occurred is not, in my view, due to the reputation of the Opponent’s trade mark as demonstrated. This deception or confusion is clearly an inconvenience to the Opponents but (beyond responding to confused customers) it does not appear to have been financially detrimental to their business as they simply do not sell similar products to the Applicant.

13. The fact that the Applicant established use in relation to pet shampoos which precedes the Opponents’ reputation in pet doors must also be a consideration. In addition, the trade marks have co-existed in the marketplace for a substantial number of years (from around 1998 until 2009) and I note that the exhibited instances of confusion are only relatively recent.

14. The finding that the reputation of the Opponent’s trade mark was not substantial, the differences in the nature of the goods and the Applicant’s prior trade mark use in relation to its own products outweighs the fact that the trade marks are identical and the small amount of confusion that may be attributed to the Opponents’ trade mark reputation. I am not satisfied that there is a danger of confusion likely to occur in the future because of the Opponents reputation in PETWAY as at the priority date.

15. I find on the balance of probabilities that the Opponent has not discharged the onus of establishing a reputation in its PETWAY trade mark sufficient for the use of the Applicant’s PETWAY trade mark to be likely to deceive or cause confusion in the Australian marketplace. The ground of opposition under section 60 of the Act has not been established.

16. Section 42(b) of the Act provides:

    Trade mark use contrary to law

    An application for the registration of a trade mark must be rejected if:

        (b)  its use would be contrary to law.

17. Under section 42(b) the Registrar must be satisfied that the use of the opposed trade mark “would”, not “could”, be contrary to law[26]. Mr Spedding referred to section 52 of the Trade Practices Act 1974 (‘the TPA’), which was the legislation in place at the priority date of the Applicant’s trade mark.[27] Section 52 of the TPA provided:

    Section 52. (1) A corporation shall not, in trade or commerce, engage in conduct that is misleading or deceptive.

    [26]  Advantage Rent-A-Car Inc v Advantage Car Rental Pty Ltd (2001) 52 IPR 24 at 32 [28].

    [27] The equivalent provision is now contained in the Competition and Consumer Act 2010 (Cth), Schedule 2: The Australian Consumer Law Chapter 2, Section 18.

18. The Opponents relied on the fact that the trade marks are identical and the use of the Applicant’s trade mark in the Australian marketplace would therefore be likely to constitute conduct that is misleading or deceptive. However, it is worth reiterating that the Applicant has established use of its PETWAY trade mark before the Opponents’ use albeit in relation to dissimilar goods.

19. Establishing that use of a trade mark is likely to “mislead or deceive” pursuant to section 52 of the TPA is generally more onerous than establishing the likelihood of “deception or confusion” as required by section 60 of the Act. I have already addressed the factors relevant to possible deception under the section 60 discussion and that there are not a reasonably significant number of potential purchasers that are likely to be aware of the Opponent’s product and then misled, by the Applicant’s use of its trade mark. Accordingly, I am not satisfied that a possibility of deception between the Opponents’ and Applicant’s trade marks rises to the level of a “real or not remote chance or possibility.”[28]

    [28] Equity Access Pty Limited v Westpac Banking Corporation [1989] FCA 506; (1989) 16 IPR 431.

20. The Opponents have not discharged the onus of establishing that the Applicant’s use of PETWAY would amount to misleading or deceptive conduct under the TPA. The ground of opposition under section 42(b) of the Act has not been made out.

    Decision

21. Section 55 (1) of the Act provides:

    (1) 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.

22. The Opponents have not established a ground of opposition under the Act. As a result, the Opponents are unsuccessful and the opposition fails. I direct that trade mark application no. 1307509 may proceed to registration after one month from the date of this decision.

23. If the Registrar is served with a notice of appeal on or before that time, I direct that registration shall not occur until the appeal has been discontinued, or in the event of a decision from the court, that the application be subject to that order.

    Costs

24. Costs ordinarily follow the event and I award costs against the Opponents as per the Official Scale contained in Schedule 8 of the Trade Marks Regulations 1995.

    Heath Wilson
    Hearing Officer
    Trade Marks Hearings
    23 October 2012