Nuplex Industries (Aust) Pty Limited v AGent Sales & Services Pty Ltd

[2011] ATMO 112

TRADE MARKS ACT 1995

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

Re:Opposition by Nuplex Industries (Aust) Pty Limited to registration of trade mark application 1183291 (1) -  - filed in the name of AGent Sales & Services Pty Ltd

Delegate:

Michael Kirov

Representation:

Opponent: Sophie Goddard SC, instructed by Shauna Ross and Joanna Lee of DLA Piper Australia

Applicant: Relied upon written submissions prepared by Teller & Associates, Technology and Intellectual Property Lawyers

Decision:

2011 ATMO 112

s 52 opposition –s 60 considered – confusion likely due to reputation of Opponent’s trade mark – opposition established. Costs awarded against the Applicant.

Background

1. This is an opposition brought by Nuplex Industries (Aust) Pty Limited (“the Opponent”) pursuant to s 52 of the Trade Marks Act 1995 (“the Act”) to registration of the trade mark subject of application number 1183291 in the name of AGent Sales & Services Pty Ltd (“the Applicant”).

2. Details of the opposed application are as follows:

Application Number:     1183291

Priority Date:                    22 June 2007

Goods:(Class 1) Chemicals and chemical products in this class for use in swimming pools and spas, namely: water balance chemicals, water sanitising chemicals, water softening chemicals, water treatment chemicals, and chemical testing products; all for use to test or improve water quality; and none for use in or to coat the surface of swimming pool structures

Trade Mark:    (“the Trade Mark”)

Endorsement: Provisions of paragraph s44(3)(a) and/or Reg 4.15A(3)(a) applied

1. Acceptance of the application for registration was advertised on 15 January 2009.  The Opponent filed its Notice of Opposition (“the Notice”) on 15 April 2009 and the parties served and filed Evidence in Support, Evidence in Answer, Evidence in Reply and, subsequently, further Evidence in Answer and further Evidence in Reply, as follows:

Evidence in Support

▪Statutory Declaration by David Hay made 5 February 2010, with Annexures A to M, Exhibit DH1 and Confidential Exhibits DH2 and DH3 (“Hay 1”)

Evidence in Answer

▪Statutory Declaration by Andres Timmermanis made 13 May 2010, with Annexures AT-1, AT-2 and AT-4 to AT-27 (“Timmermanis 1”)

▪Statutory Declaration by Ralph Anthony Bonello made 10 June 2010 (“Bonello”)

▪Statutory Declaration by William Foster made 10 June 2010 (“Foster”)

▪Statutory Declaration by Linda Ann Harrington made 10 June 2010 (“Harrington”)

Evidence in Reply

▪Statutory Declaration by David Hay made 13 December 2010, with Annexures A to E (“Hay 2”)

▪Statutory Declaration by Shauna Ross made 13 December 2010, with Annexures A to C (“Ross 1”)

Applicant’s Further Evidence in Answer

▪Statutory Declaration by Andres Timmermanis made 11 April 2011, with Annexure AT-A (“Timmermanis 2”)

Opponent’s Further Evidence in Reply

▪Statutory Declaration by Shauna Ross made 11 May 2011 (“Ross 2”)

▪Statutory Declaration by David Hay made 14 June 2011, with Annexures A to G (“Hay 3”)

1. A further Statutory Declaration made by Andres Timmermanis on 21 November 2008 (with Annexures AT-1 to AT-4) was also referred to by both parties in their evidence and submissions. The Applicant originally filed this declaration with IP Australia in support of acceptance of application 1183291 for registration pursuant to s 44(3)(a) of the Act. While a copy of the declaration was not included in either party’s opposition evidence, I confirm I have obtained a copy from IP Australia’s files and have taken its contents and the parties’ submissions with respect to it into account in my decision[1].  I will hereafter refer to this declaration by Mr Timmermanis as “the Prosecution Declaration”.

   [1] I note that regulation 21.15 (8) of the Trade Marks Regulations 1995 provides that, “The Registrar is not bound by the rules of evidence but may inform himself or herself on any matter that is before him or her in any way that the Registrar reasonably believes to be appropriate”.

2. Mr Timmermanis’ evidence[2] is that the Applicant was incorporated on 11 June 1992 by one Armando Gentiluomo who, for two years prior to that, had been trading as an unincorporated business “supplying a range of chemicals for industrial and private use, as well as a range of associated products”.  The goods Mr Gentiluomo supplied were, Mr Timmermanis says, “mining chemicals and sundry mining products; industrial and manufacturing chemicals; laboratory and testing instrumentation and laboratory consumables; and swimming pool- and spa-related products including chemicals”.

   [2] The Prosecution Declaration at [3]-[6], Timmermanis 1 at [3]-[6] and Timmermanis 2 at [20].

3. Of particular relevance to the present opposition, Mr Timmermanis says that “at least as early as 1992” the range of products supplied by Mr Gentiluomo or by the Applicant “has included water sanitisers and softeners, balance chemicals, algaecides and winterisers, pool hoses and cleaning equipment, water testers and testing kits, dosing apparatus, chlorinators, and pumps and filtration units”.  Although only employed by the Applicant since 2006, Mr Timmermanis says that “according to [the Applicant’s] records” it “began using AQUAGUARD as a trade mark on 16 October 1995 for treatment chemicals for use in maintaining swimming pool and spa water safety and quality”, such use being “primarily as a simple word mark or in a very slightly stylised format, in which it was often closely associated with another of [the Applicant’s] marks, POOLKING”.  He continues:

   The use of AQUAGUARD as a stand-alone mark followed the Applicant’s decision to expand significantly the range of products under the mark, and use it as the primary mark for pool products.  Product range expansion under the AQUAGUARD mark accelerated significantly during the course of 2007 and 2008 to include [various water sanitisers, chlorine stabilisers, pH, alkalinity and calcium increasers or reducers, tile and vinyl cleaners, flocculants[3] and chelating agents[4]].

   [3] Chemicals added to solutions to produce aggregation of suspended particles.

   [4] Chemicals which assist in keeping desired minerals in solution.

4. Mr Timmermanis further indicates that the AQUAGUARD trade mark in the stylised form subject of the opposed application was “formally adopted in April 2007”.  That said, both parties’ representatives agreed that as far as the present opposition was concerned there was no relevant distinction to be made between the Trade Mark and the word trade mark AQUAGUARD per se, whether it be rendered in plain capital letters or in some other conventionally stylised manner.  I will accordingly refer hereafter to all such representations (including the Trade Mark itself) simply as “the AQUAGUARD trade mark”.

5. The Opponent is the Australian operating company for the “Nuplex Group” of companies, the parent company of which was incorporated in New Zealand in 1951 and is listed on both the NZ and Australian stock exchanges.  The Nuplex Group has some 1,650 employees and operates in 11 countries, with manufacturing plants in Australia, NZ, Europe, Asia and North America.  It manufactures, inter alia, resins, polymers, surface coatings, gelcoats, floor coverings and building and construction materials as well as providing services “in respect of construction, repair and maintenance”[5].  It states in its “Corporate Profile”[6] that its products “ultimately find their way into most areas of everyday living as components in a vast spectrum of market-leading products: from paints, wallpapers, floorings, sanitary fittings and other construction products, through to textiles, fiberglass laminates for boats and cars, swimming pools, electric fence posts, as well as extending to bakery, dairy and confectionery, personal care and cosmetics” and that it also provides “advanced technology in the safe and environmentally sustainable treatment, disposal and recycling of industrial and medical wastes”.

   [5] Hay 1 at [17].

   [6] Hay 1, Annexure C.

6. Of particular relevance to the current opposition is that the Opponent is owner of, inter alia, registration 644007 AQUAGUARD dating from 25 October 1994 and covering “Resins and coatings in [Classes 1 and 2], namely resins and gelcoats used in association with the construction and reinforcement of swimming pools and spas”. This and the Opponent’s registration 934470 AQUAGUARD EXTREME+ (which covers a slightly wider range of goods in Classes 1 and 2) were cited against application 1183291 during examination but were overcome by the Applicant’s reliance on s 44(3)(a) of the Act, that is based upon the Applicant’s claimed honest concurrent use of the AQUAGUARD trade mark in various forms since 1995. The Opponent strongly questions the Applicant’s evidence as to the nature and extent of this claimed use and this is at the heart of its s 44 and s 62A opposition grounds[7].

   [7] As indicated in paragraph 12 below, the Opponent pursued grounds under ss 42(b), 44, 58, 60 and 62A of the Act at the hearing.

7. The Opponent also submits that its own continuous use of the essentially identical trade mark from “in or about 1993”, in relation to goods and services described in Hay 1[8] as “resins, gelcoats, catalysts, reinforcements, cores, adhesives/fillers, mould release, consumables, equipment, cleaning products” and “material selection, process optimization and resin infusion moulding services”, has been extensive. The reputation it says the AQUAGUARD trade mark had amongst the relevant market for these goods and services as at 22 June 2007 forms the basis of the Opponent’s s 42(b) and s 60 opposition grounds.

   [8] Hay 1 at [27], [29] and [37].

8. I heard the matter as delegate of the Registrar of Trade Marks on 8 August 2011 in Sydney.  Sophie Goddard SC, instructed by Shauna Ross and Joanna Lee of DLA Piper Australia, appeared for the Opponent and also provided written submissions.  The Applicant did not appear, nor was it represented at the hearing, but it relied upon written submissions prepared by Teller & Associates, Technology and Intellectual Property Lawyers.

Grounds of Opposition and Onus

1. The Notice lists a number of specific grounds corresponding to various provisions of the Act. At the hearing, however, Ms Goddard indicated the Opponent would only be pressing the grounds in the Notice based on sections 42(b), 44, 58, 60 and 62A of the Act. As will become apparent, however, I have not found it necessary to address the Opponent’s ss 42(b), 44, 58 or 62A grounds in this decision. Accordingly, only the Opponent’s s 60 ground is discussed below. Of course should this decision be appealed, it would always remain open to the Opponent to plead any ground it chose in proceedings before the Court.

2. I proceed on the basis that the Opponent bears the onus of establishing one or more of the grounds of opposition pressed at the hearing on the balance of probabilities[9].  As indicated by Kitto J in Southern Cross Refrigerating Co v Toowoomba Foundry Pty Ltd (1954) 91 CLR 592 (“Southern Cross”) at 595, the relevant date at which the rights of the parties are to be determined is the 22 June 2007 filing date of the opposed application (“the Priority Date”).

Discussion

[9] Following Gyles J in Pfizer Products Inc v Karam (2006) 70 IPR 599 at [6] to [26]. See also Chocolaterie Guylian N.V. v Registrar of Trade Marks (2009) 82 IPR 13 per Sundberg J at [22] to [27], Sports Warehouse, Inc v Fry Consulting Pty Ltd (2010) 87 IPR 300 per Kenny J at [30] to [40] and NV Sumatra Tobacco Trading Company v British American Tobacco Services Limited [2011] FCA 1051 (9 September 2011) per Greenwood J at [16] to [32].

Section 60

1. The ground based on s 60 is indicated in the Notice as follows:

   Trade mark similar to trade mark that has acquired a reputation in Australia –s 60

2. Section 60 of the Act is reproduced below:

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

60. 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.

1. What needs to be considered in the case of s 60 is the notional use the Applicant might make of the Trade Mark, assuming use in a “fair and reasonable manner”[10] for any of the goods covered by its opposed application.  The question is thus not limited to whether the Applicant’s past or proposed use of the Trade Mark would give rise to deception or confusion, but rather “must be based upon what the [A]pplicant can do if registration is obtained[11]”.  The issue is whether such notional use would be likely to deceive or cause confusion in the relevant market as at 22 June 2007 in light of the reputation of the Opponent’s AQUAGUARD trade mark at that time.

   [10] These being the often quoted words of Evershed J (as he then was) in Smith Hayden & Co Ltd’s Application (1946) 63 RPC 97 at 101.

   [11] Southern Cross per Kitto J at 595.

2. As Kitto J noted in Southern Cross, quoted with approval by French J (as he then was) in Registrar of Trade Marks v Woolworths Ltd (1999) 45 IPR 411 at 428:

   In considering whether there is a likelihood of deception or confusion all surrounding circumstances have to be taken into consideration.  These include the circumstances in which the marks will be used, the circumstances in which the goods or services will be bought and sold and the character of the probable acquirers of the goods and services.

3. As to what constitutes “confusion” in this context, (which the relevant case law indicates has a considerably lower threshold than “deception”), Kitto J said in Southern Cross at 595:

   A trade mark is likely to cause confusion if the result of its use will be that a number of persons are caused to wonder whether it might not be the case that the two products or closely related products and services come from the same source.  It is enough if the ordinary person entertains a reasonable doubt.  It may be interpolated that this is another way of expressing the proposition that the trade mark is likely to cause confusion if there is a real likelihood that some people will wonder or be left in doubt about whether the two sets of products or the products and services in question come from the same source.

4. It is enough, then, if persons of ordinary intelligence and memory[12] likely to come into contact with the parties’ respective goods would be caused to wonder, or be left in doubt, about whether the goods for which the Applicant seeks registration, and the goods sold by the Opponent since 1993 under the essentially identical trade mark, come from the same source.

   [12] See Shell Company of Australia Ltd v Esso Standard Oil (Australia) Ltd (1961) 1b IPR 523, per Windeyer J at 529.

5. Who, then, must be caused to wonder, or be left in doubt?  In considering the case law on this point, the authors of Shanahan’s Australian Law of Trade Marks and Passing Off (“Shanahan (4^th edition)”) note at [50.2400]:

   It is commonly put that a “substantial” or “significant” number of persons must be likely to be deceived or confused, although as Lord Upjohn warned in “Bali” Trade Mark, the requirement that the deception or confusion should be amongst “a substantial number of persons” must be “properly and sensibly applied”.  Moreover, the degree of reputation necessary must depend on the market in question.  In Le Cordon Bleu BV v Cordon Bleu International Ltee[13] Heerey J observed:

   What is “significant” or “substantial” will depend on the nature of the goods or services in question. For some highly specialised products, awareness among a few thousand persons, or even less, might be sufficient.

   [13] (2001) 50 IPR 1 at [91] (“Le Cordon Bleu”).

6. Referring to Le Cordon Bleu, the Applicant’s attorneys addressed the issue of the relevant market (and the nexus between the parties’ pool and spa related goods) in their submissions thus:

   8.5 It must be stressed again that the applicant’s goods are water-testing, water-treatment and similar chemicals, used to maintain a healthy environment for day-to-day use of pools and spas. On the other hand, the opponent’s goods are gelcoats used to surface pools and spas at the time of construction or refurbishment. The former are used by pool and spa owners and the occupiers of premises containing pools and / or spas, while the latter are used by pool and spa manufacturing and refurbishing companies and tradesmen. These are quite different and specific contexts; and the evidence put forward by the opponent does not show that the applicant’s trade mark would be likely to come in the normal course to the attention of pool and spa owners. In this regard, we note the comments of the Registrar’s delegate in Rogers Seller & MyhillPty Ltd v Reece Pty Ltd [2010] ATMO 5 (18 January 2010), where the delegate stated as follows:

   “Confusion cannot arise solely from the reputation of one trade mark… The likelihood of confusion must depend on the reputation of the opponent’s trade mark, but have regard (amongst other factors) to the level of similarity of the goods / services…” (emphasis original)

8.6 That is to say, there must be a sufficient nexus between the opponent’s goods on the one hand, and the applicant’s goods on the other, that the opponent’s promotion of its goods by reference to its trade mark creates a reputation which crosses into the promotional / awareness space of the applicant’s goods. Further, although section 60 of the Act does not say so directly, it has been held that it requires that a “substantial” or “significant” number of persons must be likely to be confused or deceived. See for example Renaud Cointreau & Cie v Cordon Bleu International Ltée (2001) 52 IPR 382.

8.7 Put simply, the opponent has not shown that the materials which it has put forward as indicating a reputation in its AQUAGUARD trade mark in relation to gelcoats used in pool construction and refurbishment would come to the attention of ordinary pool and spa owners and occupiers of premises at which pools and spas are located – let alone a substantial or significant number of them – or that any necessary connection would be made.

1. David Hay’s evidence challenges this assessment however[14].  Mr Hay has been employed by the Opponent (and/or its associated companies or predecessors in title) since 1987 and made his three declarations in this matter in his capacity as General Manager (since 2006) of one of the Opponent’s trading divisions called Fibre Glass International (“FGI”)[15].  The goods and services for which Mr Hay says the Opponent has used the AQUAGUARD trade mark since 1993 are set out in paragraph 10 above.  With particular relevance to the present opposition, Mr Hay provides detailed evidence of FGI’s use for the precise goods covered by the Opponent’s registration 644007 AQUAGUARD, being “Resins and coatings in [Classes 1 and 2], namely resins and gelcoats used in association with the construction and reinforcement of swimming pools and spas”.

   [14] Hay 2, [35] to [39]; Hay 3, [30] to [35].

   [15] “Fibre Glass International” is a registered business name owned by the Opponent.

2. It is apparent from this evidence that the market for FGI’s relevant resins and coatings under the AQUAGUARD trade mark (“the FGI Goods”) ultimately includes owners or prospective owners of pools or spas (whether fiberglass, vinyl-lined or concrete) who are having their pool or spa “rejuvenated” or constructed.  (Indeed, some of the marketing materials in evidence which feature the FGI Goods explicitly refer to the “Do It Yourself” consumer[16], although there is no evidence before me that pool or spa owners in this category form a significant portion of the market for the FGI Goods.)

   [16] Hay 1, Annexure J.

1. The market for the FGI Goods clearly also includes businesses which provide surfacing or resurfacing services to pool and spa owners, as the Applicant’s attorneys submit.  However this does not mean pool and spa owners are not exposed to the AQUAGUARD trade mark.  In this regard copies of pages from the websites of several third parties who use and promote the FGI Goods in their pool and spa resurfacing businesses are included in Annexure J to Hay 1.  The homepage of the website of a business called “AllWest Pool Resurfacing” (based in Western Australia), by way of example, bears the words:

   “RESURFACING POOLS THROUGHOUT WA”

   Rather than spending up big on an entirely new pool, why not restore your existing pool at a fraction of the cost?

   At AllWest Pool Resurfacing we use Aquaguard, FGI’s Fibretech Pool Resurfacing System.  Aquaguard will protect and rejuvenate your pool, saving you money and instantly improving the appeal of your private oasis in only one week!

   Suitable for fiberglass, concrete and vinyl pools…

2. Moreover, the third party websites in evidence, (as well as the many brochures in evidence used by FGI itself since 1993), contain colour charts produced by FGI which prominently feature the AQUAGUARD trade mark and which involve the ultimate consumer in choosing the colour of the AQUAGUARD branded coatings to be applied to their pool or spa.  By way of example the website of a business named Aqualine Pool Surfacing states:

   Use of Aquaguard®Fibreglass Pool Resurfacing

   Aqualine Pool Resurfacing uses only the latest Aquaguard® fiberglass products for resurfacing swimming pools.  Aquaguard® is manufactured and supplied by FGI[17] who is the world leader in fiberglass technology.

   …

   Great Colour Range

   Swimming pools are often judged by the colour of the water which is why Aqualine Pool Resurfacing offers the exclusive Aquaguard® colour finishes.

   Take a look at the colour range.  Choose the colour of your Fibreglass Pool resurfacing or renovation[18] on offer.  The range offers a wide selection of different colours to suit any pool design.

   …

   Lower Maintenance

   The fibreglass resurfacing not only looks great, it’s very easy to maintain.  The surface is very smooth and non-porous so it cleans easily and makes it resistant to stains, algae and discolouration.

   [17] The underlined name “FGI” contains a hyperlink which, when clicked, opens FGI’s website.

   [18] The underlined words contain a hyperlink which, when clicked, opens a colour chart showing the available colours of the AQUAGUARD branded products.

   Low Chemical Usage

   One of the major benefits is it uses less chemicals to keep it clean.  This is because the fibreglass resurface does not absorb any of your pools (sic) chemicals so the pH is easier to maintain.

   Due to the inert fibreglass surface no chemicals are absorbed into the pool water.  This means nothing in your pool can cause chemical imbalances.  Hence, very low chemical usage and considerable cost savings on running your pool.

3. It is worth noting in passing, too, the above reference on Aqualine Pool Resurfacing’s website to the relationship between the FGI Goods and the use of water quality chemicals of the kind covered by the opposed application.  The “excellent chemical resistance and durability” of the FGI Goods is also mentioned in several of the brochures in evidence used by FGI itself since 1993[19], which brochures appear to be directed as much to pool and spa owners as to businesses in the pool refurbishment field.

   [19] Hay 1, Annexure L.

4. I do not therefore agree with the following submission by the Applicant’s attorneys that a relevant distinction can be made between the target market for the parties’ respective goods:

   …the Applicant’s goods are aimed specifically at consumers – pool and spa owners and occupiers of premises where pools and spas are located.  On the other hand, the goods subject of the Opponent’s registrations 644007 and 934470 are, in truth, aimed at pool builders and renovators, who are specialised tradesmen.  They are not aimed at householders with pools and spas.

5. I accordingly proceed on the basis that the relevant market for both parties’ AQUAGUARD branded goods is largely the same, being swimming pool and spa owners (including prospective owners) or those otherwise concerned with the appearance and maintenance of pools and spas.

6. I mention that the Applicant’s attorneys also made submissions (in the context of the Opponent’s ss 58 and 44 opposition grounds) that the parties’ respective goods were in any event neither “the same kind of goods” nor “similar goods”. However I note distinctions of this sort, and thus detailed consideration of whether the goods’ respective natures, uses and trade channels are substantially the same, are not critical to a finding under s 60 of the Act[20].  That said, both the FGI Goods and the Applicant’s water treatment chemicals would on the face of it fall within the general description “chemicals for use in connection with pools and spas” and to the ordinary pool or spa owner, therefore, the differences in the actual nature and uses of the parties’ pool and spa chemicals may not be particularly significant.

   [20] See the discussion in Shanahan (4^th edition) at [50.2415] on this point and the cases there referred to.

7. Moreover, there is evidence before me that the parties’ goods do to some extent share overlapping trade channels.  It is apparent from the evidence of Mr Hay and Mr Timmermanis that both the Applicant and the Opponent are members of the Swimming Pool and Spa Association (“SPASA”) and that both parties advertise their respective goods in what I understand to be a regular magazine published by this organization.  In this regard Mr Timmermanis says in the Prosecution Declaration:

   I point out that [the Applicant] advertised in SPASA magazine during the course of 2006 –a magazine in which [the Opponent’s] products are also featured.  I believe the lack of confusion is because, ultimately, our products are sufficiently different that we are not regarded as being in direct competition.

8. Mr Timmermannis’ above expressed belief notwithstanding, I mention that whether or not the parties’ goods are “in direct competition” is not critical to the Opponent’s s 60 ground. In this regard the authors of Shanahan (4^th edition) point out in their discussion of s 60 at [50.2415] that:

   Goods or services may be thought of as “associated” in some way because of some close trade connection between them.  …  [S]uch an association [was seen] between cosmetics and women’s clothing [Prestige Ltd v Potter and Moore Ltd (1939) 9 AOJP 3311 (Reg.)] on the basis that cosmetics are used as accessories in the advertising of clothing; carpets and rugs and textile machinery [HJ Lees & Sons (London) Ltd’s Application (1955) 72 RPC 75 (Ch D)], it being considered that the applicant’s goods might be thought of as having been produced by the opponent’s machinery; laxatives and chocolates [Hack’s Application (1941) 58 RPC 91 (Ch D)], chocolate being a common flavouring for laxatives; cigarettes and cigarette-shaped confectionery [“Players” Trade Mark [1965] RPC 366 (UK Reg); and see the similar “Woodies” Trade Mark [1965] RPC 366 (UK Reg)].

9. Nor is the lack of evidence from the Opponent of instances of actual confusion or deception amongst relevant consumers regarding the parties’ goods, (highlighted in the Applicant’s attorneys’ submissions as “telling”), necessarily critical to establishing the Opponent’s s 60 ground. Indeed in the present opposition I do not consider this to be at all surprising. As pointed out by Ms Goddard, there is no evidence before me that the Applicant used the AQUAGUARD trade mark to any significant extent prior to 2007 (with even the small amount of use that is claimed strongly questioned by the Opponent) and all use as at 13 May 2010[21], that is almost three years after the Priority Date, appears to have been limited to a handful of retail outlets in Perth.  The Bonello, Foster and Harrington declarations were made by the managers of three of these retail outlets, all trading under the name Poolmart.  They attest to having “sold [the Applicant’s] AQUAGUARD products” (no further details are given) since 1 October 2008, 1 October 2008 and “December 2007” respectively, all such sales having therefore been after the Priority Date.  Although the three declarants have been in the trade “supplying pool chemicals, pool cleaning equipment and pool cleaning services” since 2000, 2000 and 1986 respectively, none indicates how or when he or she first became aware of the Applicant’s products.

   [21] Being the date Timmermanis 1 was declared.

10. Nor, it seems, had the Applicant widely advertised or promoted its goods as at the Priority Date.  As Mr Timmermanis puts it[22]:

    [The Applicant’s] goods are promoted under the AQUAGUARD trade mark primarily by direct representation to retail outlets.  Since the beginning of 2007, [the Applicant’s] staff have been visiting some fifteen retail outlets on a monthly basis in order to promote its goods under the AQUAGUARD trade mark.  Such promotions include providing testing products marked with the AQUAGUARD trade mark.  The AQUAGUARD products are now sold through seven individual stores in Western Australia.  Further, a testing and customer management program is now provided under the AQUAGUARD trade mark, assisting retailers to provide dosing advice and treatment recommendations to their customers using AQUAGUARD products.  Retailers are also provided with store signage that prominently features the AQUAGUARD trade mark as well as other materials such as product displays, sample bottles and shopping bags.  [The Applicant] has also provided newspaper advertising support for retailers of the AQUAGUARD products[23].

    [22] Timmermanis 1, at [8].

    [23] No further details or examples of this “newspaper advertising” are provided and what supporting materials are annexed to Timmermanis 1 were rightly criticised by Ms Goddard as insignificant.

11. What then of the reputation of the Opponent’s AQUAGUARD trade mark?  The matters in evidence suggesting the trade mark had acquired the relevant reputation in Australia as at the Priority Date include the following:

• The Opponent has continuously used the AQUAGUARD trade mark in Australia in relation to the FGI Goods from “in, or about, 1993”[24];

  [24] Hay 1, [29] - [30] and [37].

• FGI maintains “offices, manufacturing facilities, distributors and/or trade centres” in, inter alia, all Australian mainland State capitals, where FGI “has continuously manufactured, promoted, exhibited, offered for sale and sold” the FGI Goods[25];

  [25] Hay 1, [40] to [42].

• The FGI Goods enjoy wide distribution in Australia[26];

  [26] Hay 1, [43].

• Sale of the FGI Goods “has generated a substantial amount of revenue”[27].  (Mr Hay provides actual sales figures for the years 2004 to 2008 inclusive in Confidential Exhibit DH2 to Hay 1 and the amounts disclosed, totaling many tens of millions of dollars, do appear substantial in light of the products’ specialised market);

  [27] Hay 1, [44].

• The Opponent has “consistently and extensively advertised and promoted” the FGI Goods in Australia.  (Again, Mr Hay provides figures for the sums spent in Australia for the years 2004 to 2008 inclusive in Confidential Exhibit DH3 to Hay 1 and I note they are on the face of it significant);

• The Opponent advertises and promotes the FGI Goods via the website < and this website received more than two and a half million “hits” in the 12 months up to February 2010[28].  (Mr Hay does not say when this website was launched, although copies of pages from the site in evidence bear a 2007 copyright notice.  I note, too, that no information is provided as to the number of hits before the Priority Date and that in addition to the FGI Goods the website also covers other products);

• The FGI Goods are advertised and promoted via the websites of several third party pool and spa resurfacing businesses[29].  (Copies of pages from the websites of eight businesses located in Victoria, New South Wales and Western Australia are annexed to Hay 1, although I am unable to determine when these pages may have first appeared on the Internet);

• The FGI Goods have been advertised and promoted via newsletters, brochures and product data sheets since 1994[30].  (A newsletter dated “Autumn 1995”, eleven brochures dating from December 1994 and eight product data sheets dating from 2005 are annexed to Hay 1); and

• The Opponent “publishes, or causes to be published, advertisements [for the FGI Goods] in various third party/industry publications in Australia”[31].

  [28] Hay 1, [49] to [54] and Annexure H.

  [29] Hay 1, [48] and [55] and Annexure J.

  [30] Hay 1, [48] and [55] and Annexures K, L and M.

  [31] Hay 1, [56].

1. The above matters notwithstanding, the Applicant’s attorneys argued in their written submissions that the reputation of the Opponent’s AQUAGUARD trade mark as at the Priority Date and the likelihood of deception or confusion as a result were not established since the Opponent had not shown the trade mark had developed an “esteem component”.  In this regard they quoted from the decision of the Hearing Officer in Hugo Boss AG v Jackson International Trading Co Kurt D Bruhl Gesellschaft GmbH & Co KG (1999) 47 IPR 423 (“Hugo Boss”), submitting that “the Registrar’s delegate made it clear” (at 436):

   …that the assessment of the reputation of a trade mark goes far beyond mere contemplation of sales or turnover of goods sold under that trade mark and contemplation of the advertising and promotional figures.

and noting that the delegate continued (in the following paragraph):

As regards a trade mark, its reputation derives both from the quantum of sales under that mark and also the esteem, or image, projected by that trade mark. The quantum of sales, advertising and promotion contributes to the ``recognition'’ component of the trade mark's reputation. The credit, image and values projected by a trade mark attaches to the ``esteem'’ component of the reputation as do the public events and other trader's marks with which owner of the trade marks in question chooses to associate the trade marks via sponsorships, cross-promotions, ``contra deals'’ and so forth.

1. In particular, the Applicant’s attorneys submitted that:

   To use the words of the Registrar’s delegate in [Hugo Boss], the Opponent’s evidence examines sales and turnover of goods sold, and contemplates advertising and promotional figures.  Clearly, the Opponent was selling, advertising and promoting its goods before the priority date of the opposed application.  However, we submit that the materials put into evidence by the Opponent in this regard do not show any development of the esteem component relating to the Opponent’s AQUAGUARD mark in the crucial market, namely the market for general day-to-day pool and spa maintenance products.

2. As indicated earlier, I do not agree with the attorneys’ view that the relevant market for the parties’ respective goods is different.  Further, I do not in any event agree with the attorneys’ interpretation of the point being made by the Hearing Officer in Hugo Boss in the above quoted passages which, it must be said, have been taken out of context. The Hearing Officer was not saying that demonstrating the “esteem” in which a trade mark might be held was a prerequisite to finding that a relevant reputation existed for s 60 purposes. Rather, he was saying this was additional to, or in some cases might be an alternative to, relying on sales and advertising figures alone.

3. Indeed, the Hearing Officer’s comments (in their proper context) have been cited with approval by the Federal Court on more than one occasion, McCormick & Co Inc v McCormick (2000) 51 IPR 102 being a pertinent example. Here Kenny J was considering the criteria for establishing “reputation” as required by s 60 and she quoted the same two passages set out above from the Hearing Officer’s decision in Hugo Boss relied on by the Applicant’s attorneys.  However she also included the next paragraph of the Hearing Officer’s decision in her consideration:

   [85] It may be correct to say, as counsel for Mary McCormick did, that the volume of the company's sales does not directly establish that a significant number of people held the McCormick & Co marks, as distinct from the company's products, in favourable regard. It does not follow, however, that the volume of sales and promotional expenditures are irrelevant. As Hearing Officer Thompson observed in [Hugo Boss] at 436:

   [I]t is true that the assessment of the reputation of a trade mark goes far beyond mere examination of sales or turnover of goods sold under that trade mark and contemplation of the advertising and promotional figures.

   As regards a trade mark, its reputation derives both from the quantum of sales under that mark and also the esteem, or image, projected by that trade mark. The quantum of sales, advertising and promotion contributes to the “recognition” component of the trade mark's reputation. The credit, image and values projected by a trade mark attaches to the “esteem” component of the reputation as do the public events and other trader's marks with which [the] owner of the trade marks in question chooses to associate the trade marks via sponsorships, cross-promotions, “contra deals” and so forth.

   It follows that a trade mark used in relation to goods with comparatively low sales may have a high and strong reputation by virtue of the high credit or esteem in which it is held or, conversely, that a trade mark which has very high sales may have a strong reputation notwithstanding the lack of esteem that attaches to it. The particular popular images, or sets of values, that attach to the trade mark are also, therefore, important parts of the reputation of the trade mark and may be as strong an associative force in the minds of the public as the association of the trade marks with the goods or services themselves.

   [86] 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: see, eg, Isuzu-General Motors Australia Ltd v Jackeroo World Pty Ltd(1999) 47 IPR 198; Marks & Spencer Plc v Effem Foods Pty Ltd (2000) AIPC 91-560; Photo Disc Inc v Gibson(1998) 42 IPR 473; and RS Components Ltd v Holophane Corp(1999) 46 IPR 451. This court has followed this approach as well, acknowledging that public awareness of and regard for a mark tends to correlate with appreciation of the products with which that mark is associated, as evidenced by sales volume, among other things. Thus, in Toddler Kindy Gymbaroo Pty Ltd v Gymboree Pty Ltd(2001) 51 IPR 1), Moore J accepted at [94] that the applicant had established a reputation for the purposes of s 60 solely on the basis of use and promotion of the relevant mark. Another example of this approach is Nettlefold Advertising Pty Ltd v Nettlefold Signs Pty Ltd(1997) 38 IPR 495 (Nettlefold), in which Heerey J relied upon the public visibility of the applicant's marks over approximately two decades as well as a $100,000 promotional campaign in finding that a reputation for the purposes of s 28 of the 1955 Act existed.

   [87] It is true, as Mary McCormick's counsel points out, that the evidence does not establish what proportion of sales was made under or by reference to any particular mark. It is also true, as he points out, that, apart from the evidence as to sales and advertising expenditure, there is little or no evidence about the effect of advertising upon consumers. There were no consumer surveys in evidence, nor was there evidence about the marketing of McCormick & Co's products. There was also no evidence to connect whatever international reputation McCormick & Co might have with the reputation of the McCormick & Co marks in Australia.

   [88] I accept that those were important omissions and, in another case, might have proved fatal. Still, none of the factors pointed to by counsel for Mary McCormick are essential requirements for a finding of reputation under s 60. The sales and advertising of the order of magnitude involved in this case are, in my view, a sufficient basis for establishing reputation along the lines of the approach indicated in Gymboree and Nettlefold and other relevant authorities. Contrast Lee v Korean Air Lines Co Ltd (2000) AIPC 91-557; Winglide Pty Ltd v Corporate Express Inc(1999) 46 IPR 627; Aktion Zahnfreundlich v Suntory Ltd(1998) 42 IPR 593; Somers v Greenbelt Pacific Pty Ltd(1998) 42 IPR 587 and Clissold v Amalgamated Television Services Pty Ltd (2000) AIPC 91-566. Without speculating on what the threshold level of sales or promotional expenditures might be (if, indeed, one exists), McCormick & Co have clearly passed it. Bearing in mind all the circumstances to which I have referred, I am satisfied that McCormick & Co have established that the mccormick & co marks had acquired a reputation in Australia before March 1992.

1. As far as the present opposition is concerned, I am also of the view that “the sales and advertising of the order of magnitude involved in this case are … a sufficient basis for establishing reputation along the lines of the approach indicated in Gymboree and Nettlefold and other relevant authorities”.  Bearing in mind the specialised market for the parties’ goods, the fact that the Opponent had used the AQUAGUARD trade mark continuously for more than thirteen years before the Priority Date and the substantial sales and advertising figures for the FGI Goods referred to earlier, I am satisfied the Opponent has established the requisite reputation in its AQUAGUARD trade mark existed as at 22 June 2007.

2. I am also satisfied that because of that reputation, confusion (in the sense discussed in paragraphs 18 and 19 above) amongst a significant or substantial number of pool or spa owners was likely as at the Priority Date given, as I have found, the ultimate consumers of the parties’ pool and spa related goods are the same and the parties’ trade marks are essentially identical.

3. The Opponent has accordingly established its ground of opposition under s 60.

Decision

1. Section 55 of the Act provides:

   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.

2. I have found the opposition to be successful on the ground raised pursuant to s 60 of the Act. I accordingly refuse to register trade mark application number 1183291.

Costs

1. Both parties requested an award of costs in their favour.  As the successful party, the Opponent is entitled to its costs and I accordingly award costs against the Applicant as per Schedule 8 of the Trade Marks Regulations 1995.

Michael Kirov

Hearing Officer

Trade Marks Hearings

11 November 2011