Master Plumbers and Mechanical Services Association of Australia v Master Plumbers and Mechanical Contractors Association of NSW

[2003] ATMO 44

TRADE MARKS ACT 1995

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

Re:Opposition by Master Plumbers and Mechanical Services Association of Australia to registration of trade mark application 770835(16, 35, 36, 37, 38, 41, 42) - MASTER PLUMBERS (WORDS AND DEVICE) - filed in the name of The Master Plumbers and Mechanical Contractors Association of NSW .

Date of Decision:

31 July 2003

Delegate:

Terry Williams

Representation:

Opponent: Barry Hess of counsel, instructed by Blake Dawson Waldron, solicitors

Applicant: Claude Anese, patent attorney, Cullen & Co

Decision:

S52 opposition: mark as filed significantly different from mark in use. S 41 established in view of this; amendment of mark not allowable.  Registration refused

Background:

1. The Master Plumbers and Mechanical Contractors Association of NSW ("NSW") has applied to register a trade mark as shown, with a priority date of 20 August 1998:

2. The goods and services covered by the application include stationery (class 16) and a very diverse range of advertising, financial, plumbing and building services, telecommunications, training and entertainment, design and legal services (classes 35, 36, 37, 38, 41 and 42 respectively).  The application is endorsed:

   Registration of this trade mark is limited to the state of New South Wales.

3. The Trade Marks Office examined the application and has accepted it for registration. The acceptance was under the provisions of s 44(3)(b) of the Trade Marks Act 1995.  This provision allows the acceptance of an application despite the existence of a conflicting, deceptively similar, registered trade mark, if it is established that circumstances - other than the honest concurrent user relevant to s 44(3)(a) - make it "proper" to do so.  I think it is widely known that the most common such circumstance is the filing of a properly drafted letter showing the consent of the owner of a registration to the registration of a later, conflicting, application.  To avoid any misunderstanding among readers of this decision, and for that reason only, I indicate that such consent was given in this case by the Master Plumbers' Association of Queensland (Union of Employers).  That organisation is the owner of trade mark registration 384722:

1. However, after advertisement of the acceptance for registration of NSW's application, Master Plumbers and Mechanical Services Association of Australia ("MPA") filed a notice of opposition, triggering the provisions of Part 5 of the Trade Marks Act 1995 (the Act) and of the regulations under this.  I note, with the agreement of both MPA and NSW, that NSW has already opposed the registration of an earlier, now-withdrawn application by MPA.

2. Both parties have served evidence to support their positions in the present matter.  Both have very long histories in the plumbing trade and are plumbers' advocacy and advisory bodies in the states of New South Wales and Victoria, although membership of MPA is not restricted to plumbers resident in that state.  The evidence also shows that there are other comparable associations in other states.  NSW is of the belief that all plumbers' associations are state-based but, on the face of it, there is some overlap, at least near state borders.  Thus, for example, an advertisement placed in the Yellow Pages by a plumber in South-East Queensland, a member of the equivalent Queensland body, may be seen and acted on by a potential customer who lives in New South Wales.  I gather from the evidence that the parties hold strong and divergent views about proper territories.

3. After completion of the evidence stages of the opposition process, the matter was set down for hearing.  This I conducted and I am now to decide the opposition under delegation from the Registrar of Trade Marks.  At the hearing itself, NSW was represented by its patent attorney, Claude Anese of the patent attorney firm of Cullen & Co.  The opponent, MPA, was represented by Barry Hess of counsel, instructed by Blake Dawson Waldron, solicitors.

Grounds of opposition

1. At the hearing, Mr Hess initially proposed to address matters under s 41 (marks capable of distinguishing) and s 58 (ownership).  However, I think that both of these grounds reflect the tension between what the applicant is trying to register, on one hand, and what it is actually using, on the other.  As matters fall out, I will be able to settle the matter under s 41 without reference to any other issues.

S 41: Capable of distinguishing?

1. I will not extend the present matter by quoting in full the terms of s 41, which is a relevant ground of opposition given the terms of s 57.  Suffice to say that, at the outset, I am required to consider if the trade mark is, because of the degree to which it is inherently adapted to do so, capable of distinguishing the goods or services of NSW from those of others.  The detailed operation of the provision is discussed by Branson J in Blount Inc v Registrar of Trade Marks, 40 IPR 498, and in earlier law.

2. Mr Hess argued that the present trade mark is not capable of distinguishing the applicant's goods or services from those of others.  He used the evidence filed by the opponent to show that the device that is a substantial part of the applicant's mark, the Greek goddess Hygeia[1], with her accoutrements, is common to the identifying logos of plumbers' representative bodies in states such as NSW, Tasmania, Queensland, Western Australia and in the ACT.  Moreover, a similar device is also shown to have been used on the cover of a textbook on plumbing and sanitation published in England in 1907.  

   [1] sometimes spelled Hygieia

3. Mr Hess argued that, against such a background, the present mark is just a collation of features common to the trade and thus not capable of distinguishing one trader's goods or services from those of another, or from those of another traders' association.  Mr Anese, for his part, said that there was sufficient to the present mark to allow his client's services, goods, and indeed, members, to be distinguished from plumbers in general.  He reminded me, in particular, that the application sought rights only within the State of New South Wales.

4. It is clear that there have been, for many years, different state bodies involved in the plumbing industry, using what the opponent's evidence shows to be generally analogous devices.  Of course, there may well be different views about the variations between the forms used in various states over time.  Mr Herbert, a declarant on behalf of the opponent, MPA, typifies the differences, 'to the extent they can be discerned', as 'trivial'.  He may well be right, but even if the differences in the device elements cannot be described quite so disparagingly, they are not, in my view, significant. 

5. In my view, the evidence confirms that the name encircling the device is part of any distinguishing that is done.  Even that, however, is not the entire of the matter.  The history of this dispute shows that, over most of the past years, the various state bodies have had what the ordinary consumer of plumbing services might well consider somewhat similar names, most obviously distinguishable on the basis of being linked to a particular State or Territory.  Those bodies jointly formed the Federated Master Plumbers of Australia in 1946, thus adding another element to the pattern but not changing its basic nature. 

6. MPA, for its part, was called The Master Plumbers' & Mechanical Services Association of Victoria until 1995.  In that year it changed its name to Master Plumbers' & Mechanical Services Association of Australia.  It appears that, because of this change, it is no longer possible to say that names of the the respective organisations can be simply distinguished as being "the New South Wales body" in contrast to "the Victorian body" or "the Federal body". Thus, I accept that MPA has muddied the waters as a consequence of its name change.  Mr Anese argued, quite correctly, that MPA will therefore have to accept some of the consequences of any confusion that arises because of its deleting the identifier "Victoria" from its own name.  However, for reasons that follow, this is still cold comfort to NSW.

7. Even with the changed environment wrought by MPA in 1995, I am satisfied that the trade mark actually used by NSW is capable of distinguishing.  It has, over time, used "New South Wales", and the abbreviation "NSW", in its name and logo respectively, to indicate precisely which association of master plumbers is in question.  I set out two 1927 versions and a corresponding 1993 variant, and note that the change in the words edging the device reflects the various changes over time in the name of the organisation.

 

1. Quite obviously, there is a significant difference between such variants and the trade mark that NSW has now sought to register:  the omission of the letters NSW from the scroll or from the bottom of the mark.  Ordinarily, of course, such a simple geographical indication would not greatly contribute to the inherent adaptation of a trade mark.  Thus, prior to the opposition, the examiner of trade marks had rightly concluded that the mark, without those letters, met the requirements of s 41 though running foul of s 44 as I have already mentioned.  However, now that the matter comes to opposition, a much more complex position is seen, from information provided by the parties, to apply.

2. Mr Anese said that there was nothing sinister about the decision to apply to register the trade mark currently shown.  It would have been desirable, he argued, for his client to have registered two trade marks, that is, with and without the letters NSW, and possibly also a third, with the word "MEMBER" in the scroll, and with NSW, somewhat smaller, below[2].  That version, he said, is authorised for use by member plumbers on behalf of the applicant.  Under other circumstances, it would have been attractive for the applicant to have made all three trade marks the subject of a single application for a series of trade marks under s 51, saving considerably on filing and registration fees.  However, s 51 excludes applications filed in more than one class and therefore simple expediency had set the applicant's course: only what Mr Anese characterised as the "simplest" form was shown.  I accept this and I certainly do not infer anything suspect in the filing of the present application. 

   [2] Much in the style of the older 1927 form shown above

3. The issue having arisen, Mr Anese raised two points in response.  Firstly, he relied on s 7(1).  This reads:

   If the Registrar or a prescribed court, having regard to the circumstances of a particular case, thinks fit, the Registrar or the court may decide that a person has used a trade mark if it is established that the person has used the trade mark with additions or alterations that do not substantially affect the identity of the trade mark.

4. I do not think that I need to be satisfied that there is impropriety involved before I draw a distinction between, on one hand, various marks that are in use and, on the other, the almost hypothetical version now sought to be registered.  The present is a complex situation, involving a number of parties using similar renditions of the goddess Hygeia, continued dissent about the extent of rights, and cross-border trading issues.  The "simple" form sought to be registered is nothing more than an incomplete version, one that NSW asserts will, notionally, distinguish its goods and services.  Assertion is all very well but s 41 is the acid test of this question.  If it comes to proof, in terms of evidence of use, I will not allow NSW to buffer its case with what amounts to a circular argument.  Mr Anese's case is based on the use of a different trade mark, one that is a significantly more precise indication of origin because it contains an indication of the state in question.

5. Secondly, Mr Anese argued that any use by NSW of marks such as the 1993 variant must inevitably amount to a use of the mark now sought to be registered, since that mark was necessarily a part of the one in use.  This argument, however, is flawed.  There is clear authority that trade marks do not necessarily qualify as being even deceptively similar just because one is contained as part within another.  Therefore, notwithstanding the finding in Seven-Up Co v Bubble Up Inc[3], use of a trade mark is not necessarily use, for all purposes, of another trade mark contained within the former mark.  See the discussion of this difficult issue at p 170-171 of Australian Law of Trade Marks and Passing Off, second edition, by D.R. Shanahan.  As both Shanahan and the existence of s 7(1) suggest, the matter must depend on the facts of each case.  Sometimes the differences will not matter and, with or without s 7(1), there is no problem.  In other instances, what looks like a small difference will, on closer examination and on the facts, cast a much bigger shadow.  Those sorts of differences will matter considerably. 

   [3] (1987) 9 IPR 259

6. The present case, in my view, is such a one.  The difference between the marks actually used and the one sought to be registered is, given the history of the case, particularly significant.  It is true that, as Mr Anese argued, each state body had its own specialised form of such a device.  Details vary; names change over time and between states.  None the less, the final picture is of a crowded field, in which small differences count for much.  Even more so must the crucial omission of the letters NSW. 

7. It is true that NSW's problem is more acute as a consequence of MPA's change of name in 1995.  Thus, MPA has added to the problems faced by NSW.  However, the decision to file the precise mark now sought to be registered is attributable only to NSW, and it is now too late for it to complain about the actions of others.

8. In summary, the actual mark sought to be registered is, because of its incompleteness, of a general form that is likely to be used, even within New South Wales, by other associations of Master Plumbers.  This is not a matter of speculation; it is based on facts shown in the evidence.  There are such associations, they do have quite similar names, they do use, for quite good historical reasons, similar depictions of the Greek goddess Hygeia, and cross-border trading issues clearly arise. 

9. Those things being so, two results emerge.  Firstly, the trade mark sought to be registered is not within the scope of s 41(3).  Rather, it falls within s 41(5).  Secondly, I have already made it clear why I am not satisfied that protracted use of variants with the letters NSW prominent in them can ever show that the present trade mark, without them, is capable of distinguishing.  Therefore, NSW is unable to get within the terms of s 41(5). 

10. I therefore find that the opponent has established this ground of opposition.

Conclusion:

1. MPA has established a ground of opposition.  Mr Anese asked, in the event of such an adverse conclusion, that I consider the allowability of an amendment under s 65, to insert the letters NSW into the scroll, a space obviously intended for them.  However, s 65(2) proscribes any amendments that "substantially affect the identity of the trade mark".  With what I now know about the significance of the omitted letters, I doubt that the amendment is the innocuous change that it might have otherwise seemed[4].  The present mark is, in my view, not capable of distinguishing.  To transform it into a significantly different mark, one that clearly does distinguish, is therefore not an allowable amendment.  Therefore, no remedy is possible under s 65 and my decision is to refuse to register the trade mark.

   [4] Compare British Hoist & Crane's Trade Mark (1955) RPC 72 RPC 66.

Costs:

1. MPA has succeeded in opposing registration and is entitled to its costs in terms of the scale.  I direct that NSW pay those costs.

Terry Williams

Hearing Officer

Trade Marks Hearings

31 July 2003