Nissan Chemical Corporation v PCT Holdings Ltd
[2022] ATMO 121
•20 July 2022
TRADE MARKS ACT 1995
DECISION OF A DELEGATE OF THE REGISTRAR OF TRADE MARKS WITH REASONS
Re:Opposition by Nissan Chemical Corporation to registration of trade mark application number 2084189 (class 5) – SUREFIRE TEMPRA – in the name of PCT Holdings Ltd
Delegate: | Nicholas Butson |
Representation: | Opponent: Arcadia Intellectual Property Applicant: Michael Buck IP |
Decision: | 2022 ATMO 121 Trade Marks Act 1995 (Cth) – opposition under section 52 – sections 42(b), 44, 60 and 62A considered – scope of the representation of a trade mark considered – no grounds established – trade mark to proceed to registration |
Background
This decision is in respect of an opposition under s 52 of the Trade Marks Act 1995 (Cth) (‘Act’)[1] by Nissan Chemical Corporation (‘Opponent’) to the registration of the following trade mark:
Trade mark number: 2084189
Trade mark: SUREFIRE TEMPRA (‘Applicant’s Trade Mark’)
Applicant: PCT Holdings Pty Ltd (‘Applicant’)
Filing date: 6 May 2020
Specification: Class 5: Herbicides (‘Applicant’s Goods’)
[1] Unless otherwise stated, each reference to a section is a reference to a section of the Trade Marks Act1995 (Cth) and each reference to a regulation is a reference to a regulation of the Trade Marks Regulations1995 (Cth).
The trade mark application was examined under s 31. Acceptance of the Applicant’s Trade Mark was advertised on 7 October 2020.
A Notice of Intention to Oppose was filed by the Opponent on 2 December 2020, followed by a Statement of Grounds and Particulars (‘SGP’) on 23 December 2020.
A Notice of Intention to Defend was filed by the Applicant on 12 February 2021.
The Opponent filed Evidence in Support on 11 May 2021. Evidence in Answer was provided by the Applicant on 11 August 2021. Evidence in Reply was filed by the Opponent on 22 September 2021.
On 4 October 2021, the Opponent requested a hearing by submissions. On 11 March 2022, the Opponent filed submissions in regard to this matter. The Applicant did not request a hearing, nor file submissions.
Grounds of Opposition, Onus and Relevant Date
The grounds of opposition nominated in the SGP were ss 42(b), 44, 60 and 62A. The Opponent bears the onus of establishing one or more of the grounds of opposition.[2] The required standard of proof is on the balance of probabilities.[3]
[2] Food Channel Network Pty Ltd v Television Food Network GP [2010] FCAFC 58, [32] (Keane CJ, Stone and Jagot JJ).
[3] Telstra Corporation Limited v Phone Directories Company Pty Ltd [2015] FCAFC 156, [133] (Besanko, Jagot and Edelman JJ).
The date at which the rights of the parties are to be determined is 6 May 2020 (‘Relevant Date’) being both the filing and priority date of the Applicant’s Trade Mark.
Evidence
Both the Opponent and Applicant have provided a number of submissions in their evidence, they have been given appropriate weight in line with any evidence that supports them.
The Opponent
The Opponent’s evidence comprises of:
Evidence in Support
Declaration by Stuart Bradshaw (Global Counsel IP, Nufarm Limited) dated 11 May 2021 and Annexures SB-01 to SB-128 (‘First Bradshaw Declaration’).
Evidence in Reply
Declaration by Stuart Bradshaw dated 20 September 2021 and Annexures SB-129 to SB-134 (‘Second Bradshaw Declaration’).
The First Bradshaw Declaration sets out that the Opponent has a number of registrations for SEMPRA trade marks for goods in class 5 in various jurisdictions including the following registration in Australia:
Trade mark number: 609208
Trade mark: SEMPRA (‘Opponent’s Trade Mark’)
Filing Date: 16 August 1993
Specification: Class 5: Herbicidal, fungicidal, insecticidal and pesticidal preparations and substances, being preparations and substances for killing or inhibiting the growth of weeds or destroying vermin (‘Opponent’s Goods’)
It further explains that the owner of the SEMPRA trade mark in the USA, Australia and New Zealand was originally Monsanto. The mark was later assigned to the Opponent on 5 August 2002. In 2003 the Opponent entered a commercial agreement with Nufarm Limited to produce goods under the Opponent’s Trade Mark in Australia.
The First Bradshaw Declaration provides evidence of regulatory and label changes in Australia from 1994. This includes examples of labels featuring the Opponent’s Trade Mark, by Monsanto, then later Nissan Chemical Corporation and Nufarm Limited.
The evidence provided shows international articles, regulatory approvals and claims of first use in other countries, such as the USA since 1995 and New Zealand in the 1990s.
It is declared that Monsanto’s use of the SEMPRA trade mark on goods in Australia commenced in 1994, and Nissan Chemical Corporation’s/Nufarm Limited’s use continued after the assignment in 2003.
The First Bradshaw Declaration states the Opponent’s Trade Mark has received international recognition through trials and research at various industries or universities in Australia. Evidence has been provided showing that the research and trials were in relation to herbicide goods offered under the Opponent’s Trade Mark. Additionally evidence has been provided of widespread discussion of those goods under that mark on various online community forums and video sharing sites.
The declarant provides evidence of sales figures for products sold or by reference to the Opponent’s Trade Mark, as well as some information relating to marketing and advertising expenditure.
The declarant claims that the product sold under the Opponent’s Trade Mark has maintained a 30-40% market share in the Australian market. This particular market relates only to herbicides that include the active ingredient halosufuron-methyl, which is used to control Nut Grass and Nut Sedge.
The Opponent has provided examples of use of the words SUREFIRE TEMPRA by the Applicant in the marketplace, which they submit creates a danger of deception or confusion, including:
Evidence of the Applicant’s goods in the marketplace, with the SUREFIRE and TEMPRA elements separated in a vertical nature, in different fonts and sizes.
Evidence of use of the SUREFIRE element as a “house” trade mark.
Evidence of distributors using TEMPRA alone on the body of various websites to refer to the Applicant’s product. I will note however, that the image of the Applicant’s product on these websites generally shows the SUREFIRE element as well.
Evidence of a website address of a store selling the Applicant’s product, that has SEMPRA (the Opponent’s Trade Mark) in the website address but leads to a page instead selling the Applicant’s product.
The Opponent further submits that the Applicant has a history of applying for close variations of other proprietors’ trade marks and has provided evidence of other marks the Applicant has applied for.
The Second Bradshaw Declaration states that much of the Applicant’s Evidence in Answer is in the nature of submissions rather than evidence. As noted above, any material in the nature of submissions from either party will be treated as such.
The Second Bradshaw Declaration also suggests that the label the Applicant is using in the marketplace is contrary to that approved by the relevant regulatory body and outside the Agricultural and Veterinary Chemicals Code Regulations1995 (Cth). In particular, the Opponent submits that the Applicant’s labelling showing the words SUREFIRE and TEMPRA separated contravenes these regulations.
The Applicant
The Applicant’s evidence comprises of a declaration by David James Pearson (Managing Director of PCT Holdings Pty Ltd) dated 11 August 2021 and Exhibits DP-1 to DP-4 (‘Pearson Declaration’).
The Pearson Declaration outlines the Applicant’s use of SUREFIRE as a brand, its turnover and 38 pending or registered trade marks featuring the word SUREFIRE.
This declaration claims that the Applicant has continually used the Applicant’s Trade Mark from at least August 2020. The Pearson Declaration encloses sales data for goods which the declarant states were sold under the Applicant’s Trade Mark. This may not have been entirely the case with some of the evidence of market use provided, given some of my findings that follow shortly. But again, in this particular opposition to registration, whether or not there has been use of the Applicant’s Trade Mark is not central to deciding the matter.
Examples have also been provided showing use of the Applicant’s Trade Mark, which mirror some of those provided by the Opponent. The declarant also specifically notes that on websites selling the product, the words SUREFIRE TEMPRA are used together on the page, next to a picture of the goods.
It is declared that the Applicant honestly adopted the Applicant’s Trade Mark as an addition to its SUREFIRE range of products.
Discussion and Reasons
Scope of the Applicant’s Trade Mark representation
In this decision my considerations are limited to the Applicant’s Trade Mark as applied for, being the words SUREFIRE TEMPRA, with additions or alterations that do not substantially affect the identity of the trade mark.[4]
[4]Trade Marks Act 1995 (Cth) s 7.
Submissions have been provided by both parties relating to the Applicant’s packaging in the marketplace, as seen below. The examples show the SUREFIRE element being used with a small visual device above the URE and has the TEMPRA element separated from it vertically. Both words also feature different fonts, sizes and backgrounds. These additions and differences substantially affect the identity of the trade mark, arguably creating an impression of SUREFIRE and TEMPRA separately. As such, I do not consider this to be use of the Applicant’s Trade Mark, which is the subject of the current matter.
(‘Packaging’)
Section 44
The Opponent submits that under s 44, the Applicant’s Trade Mark is substantially identical or deceptively similar to the Opponent’s Trade Mark and that the claimed goods are identical or similar.
Section 44(1) relevantly provides:
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.
The key elements for s 44 set out that the similar trade mark must be held in the name of another person, have an earlier priority date, be in relation to similar goods or closely related services and that the trade marks are substantially identical or deceptively similar. The exceptions mentioned in the excerpt above, being subsections (3) and (4) only need to be considered if all of these key elements are satisfied.
The Opponent’s Trade Mark clearly has an earlier priority date (16 August 1993) than the Relevant Date and is held in a name other than that of the Applicant.
In relation to the similarity of the goods, the Opponent’s Trade Mark is registered in respect of herbicidal… substances, being preparations and substances for killing or inhibiting the growth of weeds or destroying vermin. The Applicant’s Trade Mark has a broad claim for herbicides. There is little doubt these are goods of the same description and as such I find these goods to be similar.
I therefore now turn to the consideration as to whether the trade marks are substantially identical, or deceptively similar under subsection (1)(a).
Substantially identical
The Opponent has submitted that the trade marks are substantially identical. The test for whether trade marks are substantially identical is set out in Shell Co (Aust) Ltd v Esso Standard Oil (Aust) Ltd (‘Shell’):
In considering whether marks are substantially identical they 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.[5]
[5] (1963) 109 CLR 407, 415 (Windeyer J) (‘Shell’).
In a side-by-side comparison of the marks, essential features should be considered to ascertain whether they create a total impression of resemblance to the point where the trade marks would be seen as substantially identical. Comparing the Applicant’s Trade Mark and the Opponent’s Trade Mark, weighing the differences and similarities, they do not create a total impression of resemblance, rather the differences overall create one of dissimilarity. I note the Opponent’s submissions relating to the similarities between the TEMPRA and SEMPRA elements, however, when considering the entirety of the trade marks this simply is not sufficient to outweigh the separate impression created by the element of SUREFIRE. Therefore, I find that SUREFIRE TEMPRA is not substantially identical to SEMPRA.
Deceptively similar
Section 10 relevantly sets out:
[A] trade mark is taken to be deceptively similar to another trade mark if it so nearly resembles that other trade mark that it is likely to deceive or cause confusion.
What is meant by ‘likely to deceive or cause confusion’ has been discussed in various decisions. To ‘deceive’ requires the creation of false belief that the goods/services are provided by the same trader. Whereas to ‘cause confusion’ only needs to go so far as to cause a consumer to wonder whether they may come from the same trader.[6] Under these tests, if something is deceptive, it is almost certainly also confusing. But something that is confusing may not also be deceptive. Since confusion presents the lower bar, this aspect of the test is my focus below.
[6] Pioneer Hi-Bred Corn Co v Hyline Chicks Pty Ltd [1978] RPC 410, 423 (Richardson J).
Briefly though, where an intention to deceive is established in evidence, the decision maker will generally presume that the intention will be successful. Relevant to this point, the Opponent has submitted evidence of a third party selling the Applicant’s goods, where the Opponent’s Trade Mark SEMPRA features in the website address. There is nothing in the evidence to suggest that this is of the Applicant’s doing. It may be that this is an honest error, such as a typo, or the third party retailer may itself be deceived or confused, or is itself attempting to deceive consumers. On the basis of the material before me, I can only speculate as to the circumstances. At its highest, this is a single example of possible actual deception. What it certainly does not establish is any intention of the Applicant to deceive consumers.
The test for deceptive similarity requires there be a real or tangible danger of confusion occurring.[7] Unlike substantial identity, this is not a side-by-side comparison. It involves a consideration as to the impression or recollection that a person of ordinary intelligence would have of the trade marks,[8] in their entirety,[9] informed by the look, sound and ideas they convey.[10]
[7] Southern Cross Refrigerating v Toowoomba Foundry Pty Ltd (1954) 91 CLR 592, 595 (Kitto J); Registrar of Trade Marks v Woolworths Ltd [1999] FCAFC 1020, [50] (French J).
[8] Australian Woollen Mills v FS Walton & Co Ltd (1937) 58 CLR 641, 658 (Dixon and McTiernan J).
[9] Clarke v Sharp (1898) 15 RPC 141, 146 (Byrne J).
[10] Re Pianotist Co Ltd’s Application (1906) 23 RPC 774, 777 (Parker J).
While deceptive similarity involves a consideration of the trade marks as wholes, it is often useful to consider the separate elements, particularly when considering the respective look, sound and meaning. Both of the trade marks share the suffix -EMPRA, with a differing first letter. The Applicant’s Trade Mark also features the additional word SUREFIRE at the start. These factors should all then be considered in balance with all of the surrounding circumstances including the similarity of the goods/services in estimating the likelihood of confusion to a consumer in the marketplace.
The Opponent has submitted a number of cases where trade marks have been found to be deceptively similar due to a shared element, including the following:
Cecil de Cordova et al v Vick Chemical Company (‘Cecil’),[11] which held that KARSOTE VAPOUR RUB infringed the registered trade mark VICKS VAPORUB SALVE
Tivo v Vivo International Corporation Pty Ltd (‘Tivo’),[12] which held that TIVO and VIVO were deceptively similar.
Allergan Australia Pty Ltd v Self Care IP Holdings Pty Ltd (‘Allergan’),[13] which held that PROTOX and BOTOX were deceptively similar.
[11] Cecil de Cordova et al v Vick Chemical Company (1951) 68 RPC 103, 105-106 (Lord Radcliffe).
[12] Tivo Inc v Vivo International Corporation Pty Ltd [2012] FCA 252 (Dodds-Streeton J).
[13] Allergan Australia Pty Ltd v Self Care IP Holdings Pty Ltd [2020] FCAFC 163, [19]-[44] (Jagot, Lee and Thawley JJ).
Some of the circumstances and considerations in these decisions were different to the present matter. In Cecil, the essential features of the respective marks which led to a likelihood of confusion were VAPOUR RUB and VAPORUB. These are very similar visually, aurally and conceptually with the extra R and a space in the former likely being lost on the consumer in the middle of the trade mark. In Tivo and Allergan, the elements TIVO/VIVO and PROTOX/BOTOX were considered alone, without any other additional distinctive elements such as the SUREFIRE element which is present in the Applicant’s Trade Mark.
Despite the Opponent’s submissions, I cannot disregard the SUREFIRE element. The trade marks need to be considered in their entirety, attaching fair weight to all elements.[14] However, as stated in Cecil and others,[15] it is still possible in some circumstances to find that individual shared or similar elements can lead to confusion.
[14] Food Channel Network Pty Ltd v Television Food Network GP [2010] FCAFC 58. [92] (Stone, Jagot JJ and Keane CJ).
[15] Cecil de Cordova et al v Vick Chemical Company (1951) 68 RPC 103, 105-106 (Lord Radcliffe); Effem Foods Pty Ltd v Wandella Pet Foods Pty Ltd [2006] FCA 767 (Moore J).
When considering the differences between the trade marks, despite the Opponent’s submissions to the contrary, it is generally the case that consumers pay more attention and emphasis on the start of a trade mark, and the start of the words within it. In London Lubricants (1920) Ltd’s Application, Sargant LJ stated that:
The tendency of persons using the English language to slur the termination of the words… Has the effect necessarily that the beginning of the words is accentuated in comparison, and… the first syllable of a word is, as a rule, far the most important for the purpose of distinction.[16]
[16] (1920) 42 RPC 264, 279.
The exceptions to this general rule arise when some element or syllable is more likely to be stressed in pronunciation, or is more memorable. For example, if I were comparing HERBICIDE SEMPRA with WEED KILLER TEMPRA, the focus would naturally move past those generic opening words toward the SEMPRA and TEMPRA elements. Notably, in the current matter SUREFIRE is not a generic, easily overlooked word.
The Opponent contends that TEMPRA is an essential feature of the Applicant’s Trade Mark and that its similarities, both visual and aurally, would cause a consumer to confuse the trade mark with the Opponent’s Trade Mark. For example, it is submitted that the S and T sounds at the start of the words are similar, the words have similar pronunciations, and the fact these words share 5 of 6 characters.
I agree there are some similarities between the TEMPRA and SEMPRA element and there is arguably some chance of confusion between those words alone (though I make no finding on that point). I cannot say the same is the case with the addition of the distinctive SUREFIRE element at the start of the Applicant’s Trade Mark. There is simply no basis for me to find that TEMPRA is likely to be seen as a sole essential feature of the Applicant’s Trade Mark. Nor is there a reason for me to find that the Applicant’s Trade Mark would be recalled as just TEMPRA. When each trade mark is considered as a whole there are many visual and aural differences. Even when considering the goods are the same and taking into account imperfect recollection, there is no real tangible danger of confusion.
Overall I am not satisfied that the similarities between the trade marks are likely to cause deception or confusion. As such, I find that the trade marks are not deceptively similar.
The s 44 ground is not established.
Section 60
Section 60 of the Act sets out:
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.
In the SGP, the Opponent’s Trade Mark was nominated as the basis for this ground of opposition. To establish this ground of opposition, the Opponent must demonstrate:
the existence of a reputation in the Opponent’s Trade Mark, in Australia at the Relevant Date; and
That the use of the Applicant’s Trade Mark would be likely to deceive or cause confusion because of the reputation of the Opponent’s Trade Mark.
The reputation for this ground requires the Opponent to demonstrate that the Opponent’s Trade Mark is recognised by a significant or substantial number of the relevant purchasing public of such goods/services,[17] and that amongst other things this can be demonstrated by a variety of means, including advertisements, news and media.[18]
[17] McCormick &Company Inc v McCormick [2000] FCA 1335, [81] (Kenny J).
[18] ConAgra Inc v McCain Foods (Aust) Pty Ltd [1992] FCA 176, [34] (Lockhart J).
The Opponent has provided a variety of evidence demonstrating that the Opponent’s Trade Mark has gained a reputation in Australia amongst the relevant buying public of herbicides, including:
A variety of research, university and trade papers as well as online videos and forum discussions from the Australian public, either on their product, or discussing its use in the removal of certain weeds.
Confidential evidence showing sales from 2015 to 2021 as well as marketing and advertising data.
Evidence that they have a 30-40% market share in Australia for herbicides for nut grass and nut sedge in various crops.
On the basis of the evidence before me, I am satisfied that the Opponent’s Trade Mark had a sufficient level of reputation before the Relevant Date for herbicides in Australia. I now turn to consider whether this reputation means that use of the Applicant’s Trade Mark is likely to deceive or cause confusion.
Relevant considerations for the assessment of the likelihood of deception or confusion under s 60 include the strength of the reputation in the Opponent’s Trade Mark, the level of similarity between the trade marks[19] and the nexus between the goods the Opponent’s Trade Mark has a reputation for and the Applicant’s Goods.
[19] Radio Systems Corp v Sustainable Agriculture & Food Enterprises Pty Ltd [2014] ATMO 12, [26] (Hearing Officer Bianca Irgang).
In this matter, the goods for which the Opponent’s Trade Mark has a reputation and the Applicant’s Goods are identical in nature, both being herbicides. In respect of the similarity of the trade marks, I note that s 60 does not require the trade marks to be deceptively similar however 'there must always remain a level of similarity between the marks’.[20] As discussed in relation to s 44, there are many dissimilarities between the Opponent’s Trade Mark and the Applicant’s Trade Mark including the presence of SUREFIRE in the Applicant’s Trade Mark and the difference between the TEMPRA and SEMPRA elements.
[20] Reece Pty Ltd v Rogers Seller & Myhill Pty Ltd [2010] ATMO 5 [39].
Weighing the strength of the reputation in the Opponent’s Trade Mark, the similarity of the goods and the similarity of the trade marks, I am not satisfied that there is a likelihood of deception or confusion.
The s 60 ground has not been established.
Section 42(b)
Section 42(b) of the Act provides:
42 Trade mark scandalous or its 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.
The Opponent in its submissions and declarations has provided four areas to consider under this ground: the Applicant’s Trade Mark is contrary to law under s 18 of the Australian Consumer Law (‘ACL’),[21] the tort of passing off, trade mark infringement and agricultural label regulations. I address each of these below.
Agricultural and Veterinary Chemicals Code Regulations
[21] Competition and Consumer Act 2010 (Cth), sch 2 (‘ACL’)
One of the declarations provided by the Opponent submits that the Packaging is contrary to the Agricultural and Veterinary Chemicals Code Regulations 1995 (Cth). This aspect of the Opponent’s evidence is problematic since this issue was not raised in the SGP and no request to amend the SGP to include this issue has been filed. It is unnecessary to deal with that procedural point, however, since the issue raised by the Opponent clearly relates to the Packaging and not to the use of the Applicant’s Trade Mark.
Trade mark infringement
The Opponent has also submitted that use of the Applicant’s Trade Mark would amount to infringement under s 120.
This sort of argument can never be valid in these proceedings. The ultimate question I must decide is whether the Applicant’s Trade Mark can be registered. Use of a registered trade mark presents a complete statutory defense to an allegation of infringement.[22]
[22] Trade Marks Act 1995 (Cth) s 122(1)(e).
Even if I am wrong about the above, I note in passing that infringement requires considerations identical to those already discussed above in relation to s 44, since the Opponent has failed in relation to s 44, so would it fail here.
Australian Consumer Law and passing off
Section 18 of the ACL provides:
18 Misleading or deceptive conduct
(1) A person must not, in trade or commerce, engage in conduct that is misleading or deceptive or is likely to mislead or deceive.
Section 18 of the ACL requires there to be a likelihood of a consumer being misled or deceived as to the origin of the Applicant’s Goods, due to the conduct of the Applicant. This presents a higher bar than confusion.[23]
[23] Monster Energy Company v Mixi Inc [2020] FCA 1398, [33] (Stewart J).
As the Opponent has failed to establish a likelihood of confusion under s 60, it follows that it has not managed to meet the higher bar that is misleading or deceptive conduct. The Opponent has not established that use of the Applicant’s Trade Mark would be contrary to s 18 of the ACL.
Where use of a trade mark does not contravene s 18 of the ACL, the same conduct will not amount to passing off.[24] In Re Equity Access Pty Ltd v Westpac Banking Corporation, Hill J discussed the tort of passing off and the operation of s 52 of the Trade Practices Act1974 (Cth), being the predecessor to s 18 of the ACL:
The scope for the operation of s 52 will thus be broader than that involved in the tort of passing off so that in a case such as the present where the claim is for the protection of the reputation in a name against the use of that name by another, failure to succeed under s 52 or s 53 will invariably mean that proceedings for passing off would likewise fail.[25]
[24] Monster Energy v USA Nutraceuticals Inc [2017] ATMO 22, [58] (Hearing Officer Robert Wilson).
[25] [1989] FCA 506, [40] (Hill J).
Considering my decision in relation to s 18 of the ACL above, it follows that use of the Applicant’s Trade Mark would not amount to passing off.
The s 42(b) ground has not been established.
Section 62A
Section 62A sets out:
62A 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.
To establish this ground of opposition the Opponent needs to show that a reasonable person, standing in the shoes of the Applicant and adopting the standards of acceptable behavior observed by a reasonable and experienced person, would be caused to reason that they should not apply for registration of the Applicant’s Trade Mark.[26]
[26] DC Comics v Cheqout Pty Ltd [2013] FCA 478, [62] (Bennett J); Fry Consulting Pty Ltd v Sports Warehouse Inc (No 2) [2012] FCA 81, [165] (Dodds-Streeton J).
As noted by the Opponent, it is not necessary to establish actual dishonesty or fraud or that use of the trade mark may result in confusion or deception,[27] but due to the serious nature of the allegation against the Applicant’s character, there needs to be a correspondingly cogent level of evidence.[28]
[27] DC Comics v Cheqout Pty Ltd [2013] FCA 478, [63] (Bennett J).
[28] Fry Consulting Pty Ltd v Sports Warehouse Inc (No 2) [2012] FCA 81, [145] (Dodds-Streeton J).
The Opponent submits that at the Relevant Date, the Applicant was aware of the Opponent’s Trade Mark due to its reputation in the marketplace. They submit that the Applicant’s knowledge of the Opponent’s Trade Mark is further evidenced by the fact that the Applicant has sought registration of the Applicant’s Trade Mark with the Australian Pesticides and Veterinary Medicines Authority, claiming use with the exact same active ingredient as the Opponent’s product in the marketplace. The fact that the Applicant knew of the Opponent’s Trade Mark is not sufficient to demonstrate bad faith, particularly given the earlier findings that the trade marks are sufficiently different and as such, confusion is unlikely to arise.[29]
[29] 1872 Holdings VOF v Havana Club Holding SA [2017] ATMO 12, [64] (Hearing Officer Thompson).
The Opponent also submits that the Applicant has a track record of applying for trade marks that are similar to other trade marks registered by the Applicant’s competitors. They have given the following as examples:
SUREFIRE MACROMITE,[30] being similar to ACRAMITE.[31]
SUREFIRE RAIZON,[32] being similar to GRAZON.[33]
SUREFIRE TREPIDEX,[34] being similar to LEPIDEX.[35]
The Applicant’s filing for SUREFIRE TEMPURA after the Opponent filed the SGP in relation to this matter.[36]
[30] Australian trade mark registration number: 1571496.
[31] Australian trade mark registration number: 840733.
[32] Australian trade mark registration number: 1648513.
[33] Australian trade mark registration number: 280225.
[34] Australian trade mark registration number: 1987350.
[35] Australian trade mark registration number: 1862778.
[36] Australian trade mark registration number: 2152179.
The Opponent submits this pattern of filing indicates a deliberate and ongoing strategy by the Applicant to misappropriate the consumer goodwill and awareness of others’ trade marks.
Adding a house brand or name to the front of someone else’s trade mark is not a defense to an allegation of bad faith, as set out in DC Comics v Cheqout Pty Ltd:
It is difficult to see how a person who applies to register, in his own name, a mark he has previously recognized as the property of a potential overseas principal can be said to be acting in accordance with acceptance standards of commercial behavior. Combining the mark with the applicant’s own name is no answer to that criticism.[37]
[37] DC Comics v Cheqout Pty Ltd (2013) FCR 478, [62] (Dodds-Streeton J).
Not one of the examples above is a combination of SUREFIRE with some other person’s trade mark. In each, there are differences of multiple letters within the other word elements. The end result being that that these pairs of marks may sound somewhat alike but they look very different. For each of these examples, it could be argued that the Applicant is actually trying to avoid confusion with the addition of SUREFIRE and the other changes to any arguably shared, word elements.
These examples are not sufficiently concrete nor cogent for me to make the significant finding that the act of filing the Applicant’s Trade Mark was done in bad faith.
The s 62A ground has not been established.
Decision and Costs
Section 55(1) of the Act relevantly provides:
55 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.
The Opponent has not established a ground of opposition. Accordingly, the Applicant’s Trade Mark may proceed to registration one month from the date of this decision.
Should the Registrar be served with a notice of appeal before then, registration shall not occur until the appeal has been decided or discontinued. Any disposition of the application should of course be in accordance with the court’s orders or direction.
Both parties have sought that costs be awarded. As the Opponent was not successful in these proceedings, I award costs against the Opponent under s 221, in accordance with the amounts detailed in sch 8 of the Trade Marks Regulations 1995 (Cth).
Nicholas Butson
Hearing Officer
Delegate of the Registrar of Trade Marks
20 July 2022
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