Mark Warren v Steam Vac Cleaning Systems Pty Ltd

[2019] ATMO 20

TRADE MARKS ACT 1995

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

Re:Opposition by Mark Warren to registration of trade mark application 1768183 (Class 7) - AUSTRALIAN MADE ANOTHER QUIET ACHIEVER and kangaroo device - filed in the name of Steam Vac Cleaning Systems Pty Ltd.

Delegate:	Aaron Walters
Representation:	Opponent: No submissions Applicant No Submissions
Decision:	2019 ATMO 20 Opposition to registration under section 52 of the Trade Marks Act 1995­ – grounds under sections 58, 60 and 62A of the Act – onus on the Opponent but no evidence filed – opposition not established

Background

1. On 2 May 2016, Steam Vac Cleaning Systems Pty Ltd (‘the Applicant’) filed an application to register the following trade mark:

   Application number: 1768183

   Trade Mark:

(‘the Trade Mark’)

Class 7:

Carpet cleaning machines (electric); Industrial carpet cleaning machines

(‘the claimed goods’)

1. The Trade Mark was examined as required under s 31 of the Trade Marks Act 1995 (Cth) (‘the Act’), and advertised as having been accepted for possible registration in the Australian Official Journal of Trade Marks on 22 September 2016.

2. On 21 November 2016, Mark Warren (‘the Opponent’) filed a Notice of Intention to Oppose registration of the Trade Mark. A Statement of Grounds and Particulars (‘SGP’) followed on 20 December 2016. Following correspondence from this Office, a rectified SGP was provided on 15 February 2017 which nominated grounds of opposition under ss 58, 60 and 62A of the Act. The Applicant filed a Notice of Intention to Defend on 17 March 2017.

3. The Opponent did not file any evidence for this opposition. Even so, the Applicant filed a statutory declaration on 10 October 2017, which I presume is intended as its Evidence in Answer. No further evidence has been provided by either party. No request to be heard was made and neither party has provided submissions for me to consider.

Evidence

1. The evidence in question consists of the following:

• Statutory Declaration made on 9 October 2017 by Rohan Paul Oakes, sole proprietor of the Applicant, and includes Exhibits SVA-01 to SVA-04 (‘the Oakes Declaration’).

• Exhibit SVA-03 of the Oakes Declaration contains a statutory declaration made on 9 October 2017 by Bruce Margetts of Special Projects Company (‘the Margetts Declaration’).

Authority to decide the matter

1. As a delegate of the Registrar of Trade Marks,[1] I provide the following reasons for the decision that follows, which is made under s 55(1) of the Act based solely on what is contained in the SGP and the Applicant’s Evidence in Answer.

   [1] Pursuant to s 206 of the Act.

Onus and Grounds of Opposition

1. I have assumed that the Opponent relies upon all of the nominated grounds in the SGP, being those under ss 58, 60 and 62A of the Act. To succeed in an opposition, the Opponent need only establish one of the nominated grounds in relation to all the claimed goods.[2]

   [2] Section 55(1), Trade Marks Act 1995 (Cth)

2. The onus of proof rests with the Opponent,[3] with the standard being the civil standard on the balance of probabilities.[4] The rights of the parties are to be determined as at the date of filing of the Trade Mark, being 2 May 2016 (‘the relevant date’).[5]

   [3] Food Channel Network Pty Ltd v Television Food Network GP [2010] FCAFC 58, [32].

   [4] Pfizer Products Inc v Karam [2006] FCA 1663; Telstra Corporation Limited v Phone Directories Company Pty Ltd [2015] FCAFC 156, [132].

   [5] Southern Cross Refrigerating Co v Toowoomba Foundry Pty Ltd [1953] HCA 73.

Discussion

1. Earlier I noted the Opponent has not filed any evidence to support his opposition. Each of the grounds nominated are quite dependent on the Opponent filing evidence which establishes either a prior claim to ownership (s 58), reputation in some other trade mark (s 60), or some clear reason for why the Applicant knew it ought not to have applied for the Trade Mark (s 62A).

2. Without any corroborative evidence the claims made within the SGP amount to little more than bald assertions, and their cogency limited as a result. I would also observe certain claims made with respect to each ground of opposition are notably inconsistent and impact even the reliability of the SGP. As it stands, the Opponent has been unsuccessful in his opposition to the registration of the Trade Mark, the details of which I further discuss below.  

Section 60

1. Section 60 of the Act relevantly provides:

   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.

   Note:       For priority date see section 12.   

2. The SGP particularises the ground in the following manner:

   The kangaroo/flag logo is deceptively similar to the prior trade mark developed by Mark Warren for use by the Steam Vac brand. The two logos are used on similar products, being steam cleaning and vacuum machines and both feature an identical kangaroo wearing sunglasses and holding a flag which says “Australian Made.” Copy of original logo attached. The Steam Vac brand developed by Colin Warren for which the kangaroo/flag logo was originally used has been an industry leader since the 1970s. The original Steam Vac brand is not associated with the Applicant’s brand.

3. Attached to the SGP is an undeclared document containing two pages. The first page appears to be the front page of a user manual featuring a logo sharing many similar aspects to the Trade Mark. The second page appears to be the cover for a product catalogue, the entirety of which displays branding similar to the logo seen on the user manual.

4. Although not specifically stated, I infer the logo seen on the user manual to mean the “original logo” alleged to have been developed by the Opponent. I have reproduced this below:

(‘the User Manual Logo’)

1. To establish a ground of opposition under s 60 of the Act the Opponent must first demonstrate a reputation exists in another trade mark within Australia as at the relevant date. In so demonstrating the Opponent must then show, as a result of the aforesaid reputation, that the use of the Trade Mark would be likely to deceive or cause confusion.

2. The word ‘reputation’ is given its ordinary dictionary meaning and, within the context of s 60, refers to the recognition of the trade mark by the public generally.[6] Necessarily, the Opponent is required to demonstrate that his trade mark’s reputation is one in which “a significant or substantial number of persons were aware.”[7]

   [6] McCormick & Company Inc v McCormick [2000] FCA 1335, [79].

   [7] Le Cordon Bleu B.V. v Cordon Bleu International Ltee [2000] FCA 1587, [91].

3. There are numerous ways an opponent may prove a reputation exists in a particular mark. The Federal Court has previously indicated a reputation can be inferred from evidence showing a high volume of sales or promotional expenditure,[8] or through evidence of significant television, radio or print advertising.[9]

   [8] McCormick & Company Inc v McCormick [2000] FCA 1335, [86];

   [9] ConAgra Inc v McCain Foods (Aust) Pty Ltd [1992] FCA 159, [118]; see also more recently the Full Court’s discussion in Pham Global Pty Ltd v Insight Clinical Imaging Pty Ltd [2017] FCAFC 83, at [81]

4. Here, the Opponent claims the User Manual Logo is deceptively similar to the Trade Mark and the “Steam Vac brand developed by Colin Warren for which the [User Manual Logo] was originally used has been an industry leader since the 1970s.” However, no further explanation is given, nor has the Opponent filed any evidence to support this claim.

5. Without such, I cannot be satisfied that the Opponent’s mark has acquired a reputation in Australia and it follows that the ground cannot be established. 

Section 58

1. Section 58 of the Act relevantly provides:

   Applicant not the 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.

   Note:       For applicant see section 6.

2. The SGP particularises the ground in the following manner:

   The kangaroo/flag logo was originally developed by Mark Warren in 2010 for use by the Steam Vac brand developed by Colin Warren, Mark’s father. Colin allowed Mark as an individual to sell, develop and market the machines and brand he created. No right to use or develop any intellectual property associated with the brand or name Steam Vac was then vested in other employees or companies. The logo was used on the steam vacuum cleaning machines manufactured by companies under the Steam Vac brand between 2010 and June 2015. Mark Warren retained the ultimate intellectual property to the logo as he developed it.

3. To establish a ground of opposition under s 58 of the Act, the Opponent is required to prove an earlier claim to the ownership, whether through authorship or actual use,[10] of a mark which is either identical or substantially identical to the Trade Mark[11] and used on goods which are the “same kind of thing”.[12]

   [10] Settef SpA v Riv-Oland Marble Co (Vic) Pty Ltd 10 IPR 402, [413].

   [11] Carnival Cruise Lines Inc. v Sitmar Cruises Ltd [1994] FCA 936, [62].

   [12] Re Hick’s  Trade Mark ; Ex parte Metters Bros [1897] VicLawRp 118; (1897) 22 VLR 636, at 640.

4. It is generally appropriate to begin by considering whether the mark relied upon by the Opponent is substantially identical or identical to the Trade Mark, before proceeding to consider matters of the Opponent’s authorship or actual use of the mark. However, in this instance, I believe the matter can be dealt with more swiftly. The Opponent provides no evidence to support his claims of authorship and use of a trade mark. In  Aston v Harlee Manufacturing Co, Fullagar J stated:

   I do not think that an opponent of an application for registration of a trade mark could succeed by saying merely "I thought of it first", or even "I thought of it first, and communicated it to the applicant." It is otherwise if the opponent has used the mark in relation to goods.[13]

   [13] [1960] HCA 47, [19]

5. Absent any evidence, it follows that the Opponent has not succeeded in establishing this ground of opposition.

Section 62A

1. Section 62A of the Act relevantly provides:

   Application made in bad faith

   The registration of a trade mark may be opposed on the ground that the application was made in bad faith.

2. The SGP particularises the ground as:

   The Applicant was on notice prior to making the application that he was not entitled to use any intellectual property associated with the Steam Vac brand which he was exposed to while he worked as an employee under the original Steam Vac brand. He is aware that he did not acquire any intellectual property rights associated with the Steam Vac brand however attempted to register several trade marks associated with the Steam Vac brand. These attempted registrations are intended to support his attempts to pass off his inferior products as being those manufactured and designed under the original Steam Vac brand.

3. A determination of bad faith in filing a trade mark application will arise in circumstances where “persons adopting proper standards would regard the decision to register as in bad faith, or that reasonable and experienced persons in the field would view such conduct as falling short of acceptable commercial behaviour.”[14]

   [14] Fry Consulting Ltd v Sports Warehouse Inc. (No 2) [2012] FCA 81, [174].

4. The test to apply is one which combines both subjective and objective elements. The subjective element looks at the knowledge of the relevant person at the time of making the application. Once determined, the objective element requires the decision-maker to decide whether, in the light of that knowledge, the relevant person’s behaviour fell short of acceptable commercial standards.[15]

   [15] DC Comics v Cheqout Pty Ltd [2013] FCA 478, [62].

5. Importantly, an allegation of bad faith impugns the character of an individual or company and, while the standard of proof remains the same, cogent evidence is required to support the allegation.[16] Here, the Opponent provides no evidence and I cannot be satisfied that the assertions made in the SGP are established. On that basis the ground could be dismissed.

   [16] Fry Consulting Ltd v Sports Warehouse Inc. (No 2) [2012] FCA 81, [149]. Dodds-Streeton J quoting from Maslyukov v Diageo Distilling Ltd [2010] EWHC 443.

6. Nonetheless, the Applicant’s evidence sheds further light on the matter. The Oakes Declaration indicates Mr Oakes purchased the business ‘STEAMVAC SALES’ in 2009 (‘the SV Business’). Exhibit SVA-01 contains a Contract of Sale of Business executed between Mr Oakes and Mr Colin Warren as Director of STEAMVAC SALES PTY LTD on 5 January 2009 (‘the Contract of Sale’). Mr Oakes states that:

   … in clause 10.2.4 of the Contract of Sale, the Vendor, STEAMVAC SALES PTY LTD (ACN 006 157 688) transferred all rights relating to all intellectual property belonging to, or under the control of [the Vendor].

7. Specifically, clause 10.2.4 stipulates that at completion of the Contract of Sale, the vendor must “deliver to the Purchaser duly executed transfers of or consents relating to the Intellectual Property Rights (where applicable) in a form that is acceptable to the purchaser…”. I would also observe clause 29 of the Contract of Sale defines “Intellectual Property Rights” to include, inter alia, the business name and all trade marks owned or used, whether registered or unregistered, by the Vendor.

8. The Opponent does not provide further explanation on what alleged notice the Applicant had prior to filing the Trade Mark application. Nor, in light of the Contract of Sale, does the Opponent justify how Mr Oakes had not acquired “… any intellectual property rights associated with the Steam Vac brand.”

9. Accordingly, I find the Opponent has failed to establish that the Trade Mark application has been made in bad faith. 

Decision

1. Section 55 of the Act provides:

   Decision

   (1) Unless subsection (3) applies to the proceedings, 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.

2. The Opponent has not established any ground of opposition under ss 58, 60 or 62A of the Act. As such, trade mark application number 1768183 may proceed to registration one month from the date of this decision. If the Registrar is served with a notice of appeal before that time, I direct that registration shall not occur until the appeal has been determined and any further disposition of the application should be in accordance with the Court’s order or direction.

Costs

In the event of success, the Applicant has requested that costs be awarded. The normal course is for costs to follow the event and I see no reason to depart from this in the present matter. I award costs against the Opponent under s 221 of the Act in the amounts allowable under Schedule 8 of the Trade Marks Regulations 1995 (Cth).

Aaron Walters
Hearing Officer
Oppositions and Hearings
8 February 2019