O'Brien Boiler Services Pty Ltd v O'Brien Glass Industries Limited
[2023] ATMO 6
•25 January 2023
TRADE MARKS ACT 1995
DECISION OF A DELEGATE OF THE REGISTRAR OF TRADE MARKS WITH REASONS
Re:Oppositions by O'Brien Boiler Services Pty Ltd to registration of trade mark application numbers 1919796 – O’BRIEN (figurative) and 1919797 – O’BRIEN (figurative) – both in class 37 and in the name of O'Brien Glass Industries Limited
| Delegate: | Nicholas Barbey |
| Representation: | Opponent: Ryan Maguire of counsel instructed by K.G. Legal Pty Ltd Applicant: Julian Cooke of counsel instructed by DLA Piper Australia |
| Decision: | 2023 ATMO 6 Trade Marks Act 1995 (Cth) – oppositions under s 52 – ss 42(b), 44 and 60 pursued – s 44 established in relation to opposed services – evidence of other circumstances insufficient – applicant given opportunity to amend services – amendment not made – registration of trade marks refused |
Background
This decision concerns oppositions brought by O'Brien Boiler Services Pty Ltd (‘Opponent’) pursuant to s 52 of the Trade Marks Act 1995 (Cth) (‘Act’) to registration of the following trade marks (together ‘Trade Marks’):
Trade Mark: (‘96 Mark’)
Application number: 1919796
Owner: O'Brien Glass Industries Limited (‘Applicant’)
Priority Date: 12 April 2018
Specification: Class 37: general plumbing; plumbing and glazing services; renovation of plumbing; maintenance of plumbing; electrical apparatus installation; electrical apparatus repair; electrical engineering services (construction); electrical installation services; electrical wiring services; installation of audio electrical apparatus; installation of electrical apparatus; interference suppression in electrical apparatus; maintenance and repair of electrical apparatus; maintenance, installation and repair of electrical items and equipment; repair of electrical appliances; residential, commercial and industrial installation and repair of electrical and computer wiring and cabling; carpentry services; installation of paving and concreting; placement of concrete paving; roofing services; maintaining and repair of roof guttering; installation, maintenance and repair services relating to garage doors and roller doors; swimming pool and spa bath maintenance; wall and floor tiling services; automotive cleaning or washing services; cleaning services including cleaning of buildings, cleaning of furniture, rugs, carpets, curtains, household and other utensils, shampooing services, washing services, drying services, disinfecting services, deodorising services, repair services in this class, protective treatment services in this class, colour restoration services in this class, preservation services in this class; consultancy services in this class in relation to the foregoing; renovation services; home maintenance and repairs; building and construction services; erection of pre-fabricated buildings; installation of fittings for buildings; interior refurbishment of buildings; on site building project management; painting and decorating of buildings; preservation of buildings; project preparation relating to building renovation; redevelopment of buildings; renovation of buildings; land clearing; land drainage; land excavating; land irrigation; land reclamation; scaffolding services; plastering; plumbing; pest and vermin control and exterminating services, other than for agriculture, aquaculture, horticulture and forestry; proofing of buildings against pest and vermin access; non-agricultural pest and vermin control advisory, information and inspection services; providing information, advisory and consultancy services, including by electronic means and via a global computer network, about all of the aforesaid services; installation of locks; locksmithing (repair, maintenance and installation); locksmithing services being the installation, repair and maintenance of locks and locking systems; installation, repair, modification and maintenance of safes; break-in repairs, including repairing and/or replacing doors and door frames, repair of security locks; repair of locks and security locks; installation and servicing of electronic access control; installation of vehicle security devices; installation of security systems; maintenance and servicing of security alarms; repair of security locks; emergency vehicle repair services; vehicle repair services; vehicle servicing; vehicle inspection services; maintenance and repair of motor vehicles; all the foregoing except services related to sign repair
(‘Claimed Services’)
Endorsements: Provisions of paragraph 44(3)(b) and/or Reg 4.15A(3)(b) applied.
Trade Mark: (‘97 Mark’)
Application number: 1919797
Owner: Applicant
Priority Date: 12 April 2018
Specification: Claimed Services
Endorsements: Provisions of paragraph 44(3)(b) and/or Reg 4.15A(3)(b) applied.
The acceptance of each trade mark for possible registration was advertised on 25 May 2020. The Opponent filed notices of intention to oppose on 22 July 2020 followed by Statements of Grounds and Particulars (‘SGPs’) on 21 August 2020. The Applicant filed notices of intention to defend on 21 October 2020.
Evidence in Support (‘EIS’) was filed by the Opponent and the Applicant filed Evidence in Answer (‘EIA’). In turn, the Opponent filed Evidence in Reply (‘EIR’) and an oral hearing was requested. Submissions were filed by the Opponent on 9 September 2022 (‘Opponent’s Submissions’) and by the Applicant on 16 September 2022 (‘Applicant’s Submissions’).
As a delegate of the Registrar of Trade Marks, I heard this matter by video conference on 23 September 2022. Ryan Maguire of counsel presented submissions on behalf of the Opponent and Julian Cooke of counsel presented submissions on the Applicant’s behalf.
Grounds of opposition, onus and standard of proof
The SGPs nominated grounds of opposition under ss 41, 42(b), 44, 58, 59 and 60 of the Act. However, only ss 42(b), 44 and 60 were pressed in written submissions and at the hearing. As such, I treat the grounds under ss 41, 58 and 59 as abandoned.
The SGPs specified that the oppositions were only pursued against the following items of the Claimed Services:[1]
Class 37: general plumbing; plumbing and glazing services; renovation of plumbing; maintenance of plumbing; electrical apparatus installation; electrical apparatus repair; electrical engineering services (construction); electrical installation services; electrical wiring services; installation of audio electrical apparatus; installation of electrical apparatus; interference suppression in electrical apparatus; maintenance and repair of electrical apparatus; maintenance, installation and repair of electrical items and equipment; repair of electrical appliances; residential, commercial and industrial installation and repair of electrical and computer wiring and cabling; swimming pool and spa bath maintenance; wall and floor tiling services; repair services in this class, protective treatment services in this class, colour restoration services in this class, preservation services in this class; consultancy services in this class in relation to the foregoing; renovation services; home maintenance and repairs; building and construction services; installation of fittings for buildings; project preparation relating to building renovation; redevelopment of buildings; renovation of buildings; plastering; plumbing; non-agricultural pest and vermin control advisory, information and inspection services; providing information, advisory and consultancy services, including by electronic means and via a global computer network, about all of the aforesaid services
(‘Opposed Services’)
[1] The SGPs specified the item ‘information and inspection services’. However, this item does not exist in the Claimed Services. Instead, it appears to be an incomplete reference to ‘non-agricultural pest and vermin control advisory, information and inspection services’ and has been treated as such for the purposes of this decision.
To be successful, the Opponent bears the onus of establishing at least one of the grounds.[2] If a ground of opposition is established in relation to all the Opposed Services, consideration of the remaining grounds is not required. The relevant standard of proof is the ordinary civil standard based on the balance of probabilities.[3] The date at which the rights of the parties are to be determined is 12 April 2018, being both the filing and priority date of each application.
[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
Evidence
The following declarations were filed in respect of both oppositions:
| EIS |
|
| EIA |
|
| EIR |
|
EIS
Mr O’Brien is a licensed electrician and plumber and declares that he is qualified to ‘supervise boiler-related work that is performed on behalf of the opponent’.[4] In Mr O’Brien’s experience, it ‘is common for plumbing or electrical services businesses in Australia to supply
boiler-related services’ and ‘generally, individuals who perform boiler-related services must be suitably qualified as both electricians and plumbers’.[5][4] O’Brien 1, [20].
[5] Ibid [7].
10. The Opponent owns the following Australian trade mark registrations (collectively ‘Opponent’s Marks’):
| Trade Mark no. | Trade Mark | Specification | Priority date |
| 1599669 | Class 11: boilers, boiler pipes and tubes, boiler heaters, boiler parts and boiler accessories Class 37: installation, repairs and maintenance of boilers,boiler pipes and tube, boiler heaters, boiler parts andboiler accessories | 2 January 2014 | |
| 1773078 | (‘78 Mark’) | Class 37: installation; repairs and maintenance of boilers; boiler pipes and tubes; boiler heaters; boiler parts and boiler accessories Class 42: design of boilers boiler pipes and tubes; boiler heaters; boiler parts and boiler accessories (‘78 Services’) | 12 May 2016 |
| 1773079 |
11. The Opponent has provided its boiler goods and services under the Opponent’s Marks since around March 2004.[6] O’Brien 1 states that the Opponent provides ‘electrical and plumbing services in relation to various types of boilers for customers operating in various industries’.[7] Its services include assembling, testing and ensuring that boiler units are compliant with the relevant regulations as well as the installation, servicing and relocation of boiler systems. Throughout the years, variations of the Opponent’s Marks have been used including the plain words ‘O’Brien Rewinds and Pumps’ as well as a logo incorporating these words.
[6] Ibid [27].
[7] Ibid [40].
12. The Opponent is the registrant of the domain name obrienboilers.com.au (‘Opponent’s Website’) and the Opponent’s Marks have featured on the Opponent’s Website since 2009. They have also been displayed on public signage, marketing materials as well as on uniforms, service vehicles and business stationery. O’Brien 1 discloses the Opponent’s marketing expenditure from June 2005 to June 2020 together with the revenue derived from the provision of its goods and services.[8] Confidentiality has been claimed, but it is sufficient to say that during this period there has been a considerable outlay on marketing and the revenue figures are substantial.
[8] Ibid [62]–[65].
13. O’Brien 1 details communications between the Opponent and the Applicant. Specifically, Mr O’Brien received a call from a director of the Applicant on or around 2 August 2019 who informed him that the Applicant ‘had applied to register various trade marks in relation to plumbing and electrical services and it had come into difficulties because of the [O]pponent’s business and trade marks’.[9] A meeting between the parties subsequently took place in February 2020, however, ‘an agreement as to how their respective businesses may continue to co-exist’ was not reached.[10]
[9] Ibid [69].
[10] Ibid [72].
14. O’Brien 1 describes two specific instances of confusion which the Opponent is aware of. In 2019, the Opponent received a payment that was intended for the Applicant and a customer of the Opponent once mistakenly paid a deposit to the Applicant. Mr O’Brien also declares that the Opponent receives ‘at least two phone calls per week from members of the public who are intending to contact the [A]pplicant for its glass related goods and glazing services’.[11]
EIA
[11] Ibid [76].
15. The Smart Declaration states that the Applicant is ‘a trade services business’ that offers glass and glazing goods and services. In 2018, after acquiring Laser Plumbing & Electrical, the Applicant also launched its electrical and plumbing business which it operates as a franchisor.
16. Ms Smart declares that ‘the Applicant has continuously used the word “O’Brien” as a trade mark in relation to its business and the goods and services that it offers’ since 1924.[12] The Applicant has used the Trade Marks since around 2010 and used iterations of the Trade Marks prior to 2010.[13] The Smart Declaration lists several Australian trade mark registrations and applications that incorporate the word ‘O’Brien’ which are owned by the Applicant. Its portfolio includes:
[12] Smart Declaration, [12].
[13] Ibid [14].
| Trade Mark no. | Trade Mark | Specification | Priority date |
| 903535 | Class 37: installation, repair, replacement and servicing of glass, glass products and glass substitute products; fitting of replacement windscreens and windows for vehicles Class 40: etching of glass | 15 February 2002 | |
| 923002 | Class 12: glass products in this class including glass screens, double glass screens, safety glass, glass panels, glass windows, glass windscreens Class 19: glass products in this class including alabaster glass, building glass, cladding panels made of glass, coloured glass, glass doors, double glazing glass panels, glass windows, insulating glass, heat reflecting glass, laminated glass, layered glass and planar glass, safety glass Class 20: glass products in this class including doors, mirrors Class 21: glass products in this class including anti-reflecting glass, ground plate glass, opal glass, opaline glass, plate glass for cars polished plate glass, glass windows Class 37: installation, repair, replacement and servicing of glass, glass products and glass substitute products; etching of glass; fitting of replacement vehicle parts Class 40: etching of glass | 9 August 2002 | |
| 1427832 | Class 12: windshields, windscreens, windows, sunroofs, mirror glasses, glass windscreens, mirrors; all for vehicles Class 19: building materials (non-metallic); glass products in this class including alabaster glass, double glass screens, safety glass, building glass, cladding panels made of glass, coloured glass, glass doors, glass wardrobe doors, double glazing glass panels, glass windows, glass screens, insulating glass, heat reflecting glass, laminated glass, layered glass and planar glass, glass handrails Class 21: glass products in this class including anti-reflecting glass, ground plate glass, opal glass, opaline glass, plate glass, polished plate glass, glass for vehicle windows (semi-finished product) Class 37: Installation, repair, replacement and servicing of glass, glass products and glass substitute products; fitting of replacement vehicle parts; building construction, repair, installation services including building, maintenance, replacement, repair and installation services pertaining to metal building products, aluminium fly screens, aluminium security screens, aluminium shower screens, aluminium handrails, aluminium windows, aluminium doors, building materials (non-metallic), glass products including alabaster glass, building glass, cladding panels made of glass, coloured glass, glass doors, glass wardrobe doors, double glazing glass panels, glass windows, glass screens, glass windscreens, insulating glass, heat reflecting glass, laminated glass, layered glass and planar glass, glass handrails, mirrors; installation, repair, replacement and servicing of vehicle glass including windshields | 30 May 2011 |
17. Ms Smart states that the Trade Marks were first used in relation to the Claimed Services in or around November 2018.[14] The Claimed Services have been provided to ‘small, medium and large sized businesses, as well as to residential customers’.[15] Ms Smart declares that since ‘rebranding the [Laser Plumbing & Electrical] business to O’Brien Electrical and Plumbing, the Applicant has been highly successful’.[16]
[14] Ibid [18].
[15] Ibid [19].
[16] Ibid [20].
18. The Smart Declaration reveals that the Applicant has generated significant revenue from use of the Trade Marks in respect of the Claimed Services. The Applicant’s overall revenue from ‘general use of the “O’Brien” brand, including the O’Brien Logo, in Australia during the period 2003 to 2020’ is also disclosed.[17] Again, the figures are considerable. To this end, Ms Smart declares that the Applicant extensively promotes the Trade Marks via television, radio, print and digital mediums. The Applicant also displays the Trade Marks on its stationery, at conferences and trade shows as well as through sponsorship deals. The associated promotional and marketing figures provided in the Smart Declaration indicate significant expenditure by the Applicant.
[17] Ibid [22].
19. Ms Smart opines that the Applicant’s significant use of the Trade Marks and other ‘O’Brien’ trade marks has caused it to ‘become very well known as a trade services business with reference to the [Trade Marks] in Australia’.[18] The Applicant is also the registrant of several domain names featuring the word ‘O’Brien’ including windscreenobrien.com.au, obrienglass.com.au, obrien.com.au and obrientint.com.au.
[18] Ibid [23].
20. Ms Smart first became aware of the Opponent in or around July 2018 when the Opponent’s Marks were raised as objections to the current applications. Ms Smart subsequently conducted internet searches of the Opponent and deduced that it ‘had a limited online presence’ and its services were ‘limited to industrial boilers’.[19] In Ms Smart’s opinion, the Opponent ‘principally services industrial clients’.[20]
[19] Ibid [68].
[20] Ibid [70].
21. The Smart Declaration also responds to O’Brien 1. Ms Smart disagrees that it is common in Australia for electrical or plumbing service providers to also provide boiler related services. Rather, in her experience, ‘it is common practice for a plumber to subcontract a third party electrician to perform the electrical aspects of boiler-related work, and vice versa’.[21] Ms Smart also provides submissions regarding alleged dissimilarities between the Trade Marks and the Opponent’s Marks as well as the respective goods and services claimed. The alleged instances of confusion detailed in O’Brien 1 are also addressed. In Ms Smart’s view, these examples do not demonstrate consumer confusion. Instead, they simply demonstrate administrative error because ‘the relevant goods and services have already been purchased or the choice to purchase has already been made’.[22]
EIR
[21] Ibid [72].
[22] Ibid [77(d)].
22. O’Brien 2 disputes statements contained in the Smart Declaration. Specifically, Mr O’Brien claims that the registered goods and services of the Opponent’s Marks are similar and/or closely related to the Opposed Services. Based on his industry experience, Mr O’Brien undertakes a detailed comparison of the relevant goods with the Opposed Services. In short, he declares that plumbing and electrical services are required for the installation, maintenance and repair of boiler units. O’Brien 2 also provides dictionary definitions of the words ‘electrical’ and ‘apparatus’ and provides submissions as to why boilers and boiler goods fall within the term ‘electrical apparatuses’.
Discussion
Section 44
23. Section 44 of the Act relevantly provides:
Identical etc. trade marks
(2) Subject to subsections (3) and (4), an application for the registration of a trade mark (applicant's trade mark) in respect of services (applicant's services) must be rejected if:(a) it is substantially identical with, or deceptively similar to:
(i) a trade mark registered by another person in respect of similar services or closely related goods; or
(ii) a trade mark whose registration in respect of similar services or closely related goods 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 services is not earlier than the priority date for the registration of the other trade mark in respect of the similar services or closely related goods.
…
(3) If the Registrar in either case is satisfied:(a) that there has been honest concurrent use of the 2 trade marks; or
(b) that, because of other circumstances, it is proper to do so;
the Registrar may accept the application for the registration of the applicant's trade mark subject to any conditions or limitations that the Registrar thinks fit to impose. If the applicant's trade mark has been used only in a particular area, the limitations may include that the use of the trade mark is to be restricted to that particular area.
24. To establish this ground of opposition, at least one trade mark which satisfies the following requirements must be identified:
it is in the name of a person other than the Applicant (‘First Requirement’);
it has a priority date which is earlier than the priority date of the Trade Marks (‘Second Requirement’);
it is in respect of services and/or goods which are either similar and/or closely related to the Opposed Services (‘Third Requirement’); and
it is substantially identical with, or deceptively similar to, the Trade Marks (‘Fourth Requirement’).
25. The SGPs identified the Opponent’s Marks as underpinning this ground of opposition. Evidently, each of the Opponent’s Marks is registered by a person other than the Applicant and each has a priority date which is earlier than 12 April 2018. The First and Second Requirements are satisfied.
26. As regards to the Third Requirement, for reasons that will become apparent, the remainder of this discussion will undertake a comparison of the 78 Mark and the Trade Marks.
27. Section 14 of the Act relevantly provides:
Definition of similar goods and similar services
(2) For the purposes of this Act, services are similar to other services:(a) if they are the same as the other services; or
(b) if they are of the same description as that of the other services
28. The guiding factors for determining if goods are similar are well settled and require a holistic consideration of:
[T]he nature and characteristics of the goods, their origin, their purpose, whether they are usually produced by one and the same manufacturer or distributed by the same wholesale houses, whether they are sold in the same shops over the same counters during the same seasons and to the same class or classes of customers, and whether by those engaged in their manufacture and distribution they are regarded as belonging to the same trade. In the case of Jellinek's Application (63 R.P.C. 59), Romer, J. classified these various factors under three heads, viz., the nature of the goods, the uses thereof, and the trade channels through which they are bought and sold.[23]
[23] Application by John Crowther & Sons (Milnsbridge) Ltd (1948) 65 RPC 369, 372.
29. These guiding factors have, subject to any necessary modification, been recognised as being equally applicable to determining whether services are similar.[24] Further, it is the notional scope of the goods and services which must be considered for the purposes of comparison under s 44 of the Act.[25] As such, allegations that the Opposed Services are directed towards the residential sector whereas the 78 Services are geared towards the industrial sector are not relevant. This is because the Opposed Services and the 78 Services do not contain any such limitations.
[24] See Mid Sydney Pty Ltd v Australian Tourism Co Ltd & Ors [1998] FCA 1616 (Burchett, Sackville and Lehane JJ).
[25] Berlei Hestia Industries Ltd v Bali Co Inc [1973] HCA 43, [11] (Mason J).
30. The Applicant conceded that ‘at least some of the services designated in the Trade Marks are similar to the services designated in the Opponent’s Marks or are closely related to at least some of the goods designated in the Opponent’s Marks’.[26] However, no further explanation was provided. As such, given the qualified nature of the Applicant’s concession, it is necessary to consider what is encompassed by the 78 Services and the extent to which the registered claims are similar to the Opposed Services.
[26] Applicant’s Submissions, [27].
31. At the outset, I acknowledge that the 78 Services are peculiar insofar as certain items have been drafted without any specificity. Be that as it may, it is well established that the meaning and scope of the specification is to be resolved by considering the actual words used in the description of the 78 Services as this is what the Opponent has achieved registration for.[27] Peripheral considerations, such as the nominated class number (i.e., class 37) or the Opponent’s actual use of the 78 Mark are thus not determinative of the goods or services that may fall within the 78 Services. This is because the Register of Trade Marks is to speak for itself.[28]
[27] Nikken Wellness Pty Ltd v van Voorst [2003] FCA 816, [42]–[44] (Wilcox J).
[28] Ibid [44].
32. Here, the items in the 78 Services have been deliberately and consistently separated by semicolons. As a matter of construction, this drafting necessitates that each item be construed discretely. There is no cogent basis to treat the first semicolon as a colon and then treat the remaining semicolons differently. To do so would be arbitrary and plainly impermissible according to the way the 78 Services have been drafted.[29] It follows that the 78 Mark has attained registration for certain items which are exceptionally broad in a notional context. This is most apparent in the first item of the 78 Services which is described as ‘installation’ without any particularisation as to the subject matter of such services. In its ordinary English sense,[30] members of the public would naturally understand ‘installation’ to include all types of installation services. It follows that all the Opposed Services are similar to the 78 Services. Notionally, each service that falls within the Opposed Services is either encompassed by the claim for ‘installation’ or would be considered services of the same description given ‘installation’ is capable of corresponding to any particularised description. For example, ‘installation’ would encompass the Opposed Services claim for ‘installation of fittings for buildings’ and it would be considered services of the same description as the Opposed Services claim for ‘plastering’ given traders who provide such services invariably provide plasterboard installation. Consequently, the Third Requirement is satisfied.
[29] Treating the items as interrelated would also lead to inane outcomes such as the 78 Mark being registered in respect of, for example, ‘installation of repairs and maintenance of boilers’.
[30] Bauer Consumer Media Ltd v Evergreen Television Pty Ltd [2019] FCAFC 71, [244] (Burley J).
33. Turning to the Fourth Requirement, the test for ‘substantial identity’ was articulated by Windeyer J in Shell Company of Australia Ltd v Esso Standard Oil (Australia) 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.[31]
[31] [1963] HCA 66, [12] (‘Shell’).
34. The Full Federal Court in Urban Alley Brewery Pty Ltd v La Sirène Pty Ltd observed that:
A side-by-side comparison of two marks is a studied comparison. It highlights the differences between the marks just as much as it shows their sameness, in order to reach a conclusion as to whether the two marks are, in fact, substantially identical.[32]
[32] [2020] FCAFC 186, [98] (Middleton, Yates and Lee JJ).
35. The trade marks are reproduced below:
| 78 Mark | Trade Marks |
36. The Opponent asserts that the 78 Mark is substantially identical with the Trade Marks. In its view, the ‘essential feature of each trade mark remains the word O’BRIEN because none of the other features in each trade mark substantially affects its identity’.[33] By contrast, the Applicant submits that substantial identity does not exist because ‘no mark constitutes “O’Brien” alone and it cannot reasonably be in dispute that the device components of the Trade Marks and the Opponent’s Marks are noticeable; as are the additional words in the Opponent’s Marks’.[34]
[33] Opponent’s Submissions, [19].
[34] Applicant’s Submissions, [33].
In my assessment, the 78 Mark is not substantially identical with the Trade Marks. On a side by side comparison, the term ‘energy engineered’ would be immediately apparent in the 78 Mark. The Opponent sought to characterise the term as being ‘descriptive words’ which may be disregarded. However, no submissions were provided to support this characterisation. Whilst I accept that the essential features of a trade mark are unlikely ‘to be found in mere descriptive elements’,[35] it is unclear how ‘energy engineered’ is merely descriptive of the services offered. For example, the term does not possess the same level of descriptiveness that ‘clinical imaging’ has in respect of radiological services. For this reason, I consider that its absence in the Trade Marks results in a total impression of dissimilarity emerging from a studied comparison of the trade marks.
[35] Pham Global Pty Ltd v Insight Clinical Imaging Pty Ltd [2017] FCAFC 83, [52] (Greenwood, Jagot and Beach JJ).
38. Section 10 of the Act provides that ‘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’. The assessment of deceptive similarity was considered in Shell by Windeyer J who stated:
The marks are not now to be looked at side by side. The issue is not abstract similarity, but deceptive similarity. Therefore the comparison is the familiar one of trade mark law. It is between, on the one hand, the impression based on recollection of the plaintiff's mark that persons of ordinary intelligence and memory would have; and, on the other hand, the impressions that such persons would get from the defendant's [mark].[36]
[36] Shell (n 31) [13].
39. In my opinion, the 78 Mark is deceptively similar to the Trade Marks. By virtue of its relative size and emphasis, the word ‘O’Brien’/‘OBRIEN’ forms a prominent element of each trade mark. Its presence gives rise to significant visual, aural and conceptual similarities between the trade marks and these are discussed below.
40. Visually, the parallelogram device in the Trade Marks is depicted in a subsidiary manner and cannot reasonably be characterised as ‘a prominent part’ of the Trade Marks.[37] The same is true of the rectangular device that appears in the 78 Mark. Whilst neither device can be wholly ignored for the purposes of comparison, I do not consider that either would substantially affect the visual similarity of the trade marks that arises from the prominence of ‘O’Brien’/‘OBRIEN’. Meanwhile, the variance in presenting ‘OBRIEN’ without the apostrophe in the 78 Mark is unlikely to be construed as a material distinction between the trade marks.[38] Likewise, the presence of the term ‘energy engineered’ in the 78 Mark does not visually distinguish the trade marks in any meaningful way. First, the positioning and emphasis of the term within the 78 Mark is subordinate to the ‘OBRIEN’ element such that it may not even be noticed or recalled by ordinary consumers. Second, whilst I do not consider the term to be merely descriptive of the services offered, it is by no means highly distinctive. As the Opponent’s brand identity guidelines recognise, the term is a ‘brand statement’ which should be omitted when the need arises.[39]
[37] Cf Millennium & Copthorne International Limited v Kingsgate Hotel Group Pty Ltd [2012] FCA 1022, [52] (Jacobson J).
[38] Carnival Cruise Lines Inc. v Sitmar Cruises Limited [1994] FCA 936, [63] (Gummow J).
[39] O’Brien 1, Annexure BO-D.8.
41. An aural comparison of the trade marks reveals further similarities. I consider that ‘O’Brien’ and ‘OBRIEN’ would be pronounced in a highly similar, if not identical, manner. In my view, the presence of the term ‘energy engineered’ in the 78 Mark does not substantially dilute the aural similarities which naturally arise from the common element of ‘O’Brien’/‘OBRIEN’. This is particularly so given the first word of a trade mark is generally the most important means of distinguishing marks. The term ‘energy engineered’ may not even be perceived or articulated and the Trade Marks are devoid of any additional word elements. As such, I consider the trade marks to be aurally similar.
42. Conceptually, the trade marks are largely indistinguishable. Each mark would be perceived as the surname ‘O’Brien’ and be recalled as such. For the above explained reasons, I do not consider the presence of the devices or the subordinate element ‘energy engineered’ in the 78 Mark would materially alter this conceptual similarity. The Applicant asserted that ordinary consumers would be unlikely to recall any of the trade marks by the term ‘O’Brien’/‘OBRIEN’ alone because it is a common surname.[40] Leaving to one side the absence of any evidence to support the assertion, I do not find this line of argument persuasive and note that the present situation can be distinguished from circumstances where the common element is directly descriptive of the goods or services offered.[41] Here, the Applicant has not led any evidence to suggest that ‘O’Brien’/‘OBRIEN’ is directly descriptive of the services in question. As such, I consider that the trade marks are conceptually similar notwithstanding the additional elements in each trade mark.
[40] Applicant’s Submissions, [41].
[41] See, eg, Watches of Switzerland Pty Ltd v Mappin & Webb Limited [2015] ATMO 23; Cars on Demand IP Pty Ltd v Cars on Demand Limited [2014] ATMO 87.
43. In light of the above, when the trade marks are considered as wholes, I am satisfied that ordinary consumers with an imperfect recollection of the 78 Mark would at least be caused to wonder whether similar services bearing the Trade Marks come from the same source. As such, I am satisfied that a real tangible danger of confusion between the Trade Marks and the 78 Mark exists. The 78 Mark is deceptively similar to the Trade Marks and the Fourth Requirement is satisfied.
44. Accordingly, the Opponent has in principle established a ground of opposition under s 44(2) of the Act in relation to all the Opposed Services. Given the Applicant only commenced use of the Trade Marks in relation to the Opposed Services in or around November 2018, a finding of honest concurrent use or prior use is not open to it on the evidence filed. However, s 44(3)(b) of the Act provides that the s 44 ground of opposition may be overcome if the Applicant is able to satisfy the Registrar that because of ‘other circumstances’, it is proper to accept the applications for the registration of the Trade Marks. To this end, ‘other circumstances’ which may be relied on include circumstances which came into existence after the priority date of the Trade Marks. This is because the relevant date for determining whether s 44(3)(b) applies is the time at which the discretion is exercised.[42]
[42] Bendigo and Adelaide Bank Limited v Community First Credit Union Limited [2021] FCAFC 31, [228] (Middleton and Burley JJ); Trident Seafoods Corporation v Trident Foods Pty Ltd [2019] FCAFC 100, [83] (Reeves, Jagot and Rangiah JJ).
45. The Applicant claimed that several circumstances exist that would make it proper to accept the applications. Broadly speaking, the Applicant’s extensive post priority date use of the Trade Marks in respect of the Opposed Services together with its established reputation in the Trade Marks in respect of glass related activities were relied on as constituting relevant circumstances. The Applicant’s portfolio of trade marks that incorporate ‘O’Brien’ and, in particular, Australian trade mark registration 1427832[43] which is registered in respect of the same representation as the Trade Marks and has a priority date of 30 May 2011 was also highlighted. Similarly, another circumstance said to weigh in favour of exercising the discretion is that, in the Applicant’s view, the trade marks are directed towards different markets. To this end, the Applicant offered to add the following limitation at the end of the Claimed Services to reflect this, namely ‘but excluding all services in this class relating to industrial boilers’ (‘Proposed Limitation’).[44]
[43] The relevant details of this Australian trade mark registration are reproduced at [16] of this decision.
[44] Applicant’s Submissions, [2]. I note that, as at the date of this decision, no formal request to restrict the Claimed Services has been filed by the Applicant.
46. For the reasons which follow, I do not consider the circumstances identified by the Applicant warrant the acceptance of the applications under the provisions of s 44(3)(b) of the Act.
47. The Applicant has not addressed what steps, if any, it took to determine the registrability of the Trade Marks in respect of the Opposed Services prior to commencing use. Nor has the Applicant explained why it continued to use the Trade Marks in the face of the Opponent’s Marks given it was aware of these rights and in fact had direct knowledge of the Opponent’s objection to its use.[45] By its own evidence, the Applicant has been aware of the Opponent’s Marks since at least July 2018.[46] Despite this, it pressed ahead and commenced use of the Trade Marks in November 2018 notwithstanding the fact that the Trade Marks were still under examination at that stage. By proceeding, clearly the Applicant was willing to assume the inherent risks associated with this course of action. Such risks obviously included the possibility that the Trade Marks may never proceed to registration. To my mind, it does not seem proper that the Applicant should now seek to benefit from this use and rely on it as a circumstance favouring the application of s 44(3)(b) of the Act.
[45] See [13] of this decision which details communications between the Opponent and the Applicant.
[46] Smart Declaration, [67].
48. Likewise, the potential hardship the Applicant faces if the Trade Marks are not registered in respect of the Opposed Services does not, in this instance, constitute a circumstance that warrants the discretion being exercised. As noted above, the Applicant knowingly assumed the risks of using the Trade Marks prior to registration and it is only proper that it must now bear the consequences. The potential hardship that may be suffered by the Applicant’s franchisees does not improve its position. Each franchisee voluntarily entered into an agreement with the Applicant and it was incumbent upon them to conduct their own franchise due diligence. To this end, I agree with Mr Maguire’s observation that the delegate’s comments in Western Australian Land Authority are apposite:
It seems to me to be unlikely that the drafters of the Act intended the Registrar to permit the registration of deceptively similar trade marks, thereby eroding the rights of the owner of a registered trade mark, on the basis of hardship arising out of a failure by applicants to ensure as far as possible that they are likely to be able to register a particular trade mark before investing significant resources in it. It is possible at the very early stages of trade mark development that potential trade marks can be applied for and, if necessary, their examination expedited. This is a fairly straightforward procedure which can avoid significant hardship for an applicant. A failure to carry out such procedures or a decision to proceed with the investment of significant funds in the face of an adverse examination report does not warrant the exercise of the Registrar’s discretion on the basis of hardship.[47]
[47] [2014] ATMO 10, [30].
49. Further, I note that any potential hardship suffered by the Applicant is partially offset by the fact that, irrespective of the outcome of this opposition, the Trade Marks will have the opportunity to proceed to registration for the services which have not been opposed. Similarly, any potential hardship is further mitigated insofar as the Applicant will continue to enjoy some protection for a subset of the Opposed Services via its earlier registered trade marks.[48]
[48] For example, the ‘glazing services’ contained in the Opposed Services are essentially the same as trade mark registration number 1427832’s claim for ‘installation, repair, replacement and servicing of glass, glass products and glass substitute products’.
50. Turning to the Applicant’s portfolio of trade marks, I do not consider the mere existence of such trade marks to be a compelling reason to exercise the discretion in the Applicant’s favour. This is particularly so given each of these trade marks are registered for either a narrower or dissimilar scope of services than what it particularised in the Claimed Services. For similar reasons, the Applicant’s reputation in the Trade Marks in respect of glass related activities does not assist its position given glazier services are dissimilar to the majority of items that fall within the Opposed Services and have no obvious nexus with same.
51. In relation to the Proposed Limitation, I agree with the Opponent’s criticisms that the Proposed Limitation is inherently vague and does not adequately reduce the potential for confusion. That is, there is no clear delineation between what does and does not fall within the ambit of a ‘industrial boiler’. At the hearing, Mr Cooke noted that the Applicant was open to adding ‘commercial boilers’ to the Proposed Limitation in order to cover off any ambiguity. However, I do not consider this addition resolves the underlying issue particularly given the absence of any agreed definition as to what constitutes a ‘commercial boiler’.
For the above reasons, whether considered individually or collectively, I am not satisfied that the circumstances identified by the Applicant make it proper to accept the applications under s 44(3)(b) of the Act. Accordingly, the s 44 ground of opposition has been established in respect of the Opposed Services for both Trade Marks.
Decision
53. Section 55 of the Act relevantly provides:
Decision
(1) Unless subsection (3) applies to the proceedings, the Registrar must, at the end, decide:(a) to refuse to register the trade mark; or
(b) to register the trade mark (with or without conditions or limitations) in respect of the goods and/or services then specified in the application;
having regard to the extent (if any) to which any ground on which the application was opposed has been established.
54. In Apple Inc v Registrar of Trade Marks, Yates J stated that:
My finding that the application for registration of APP STORE for the designated services in Class 35 must be rejected determines the fate of the application as a whole. This is because there are no separate applications for registration of the mark for the designated services Classes 38 and 42. There is but one application covering registration of the mark for all the services that have been specified. If the application fails in one respect, it fails as a whole. In these circumstances, is not necessary for me to proceed to determine the registrability of APP STORE for the designated services in Class 38 or Class 42.[49]
[49] [2014] FCA 1304, [232] (emphasis added).
55. In circumstances where an opposition has been established in respect of some, but not all, of the goods or services under consideration, the Registrar may proceed to refuse the application in its entirety, under the principles outlined above. However, the Registrar also has a discretion to offer an amendment allowing an applicant to amend the application to remove goods or services for which a ground of opposition has been established.
56. On 22 December 2022, I notified the Applicant’s representative that it was my intention to refuse to register the Trade Marks unless the Claimed Services were amended as follows:
Class 37:
general plumbing; plumbing and glazing services; renovation of plumbing; maintenance of plumbing; electrical apparatus installation; electrical apparatus repair; electrical engineering services (construction); electrical installation services; electrical wiring services; installation of audio electrical apparatus; installation of electrical apparatus; interference suppression in electrical apparatus; maintenance and repair of electrical apparatus; maintenance, installation and repair of electrical items and equipment; repair of electrical appliances; residential, commercial and industrial installation and repair of electrical and computer wiring and cabling;carpentry services; installation of paving and concreting; placement of concrete paving; roofing services; maintaining and repair of roof guttering; installation, maintenance and repair services relating to garage doors and roller doors;swimming pool and spa bath maintenance; wall and floor tiling services;automotive cleaning or washing services; cleaning services including cleaning of buildings, cleaning of furniture, rugs, carpets, curtains, household and other utensils, shampooing services, washing services, drying services, disinfecting services, deodorising services, repair services in this class, protective treatment services in this class, colour restoration services in this class, preservation services in this class; consultancy services in this class in relation to the foregoing; renovation services; home maintenance and repairs; building and construction services; erection of pre-fabricated buildings;installation of fittings for buildings;interior refurbishment of buildings; on site building project management; painting and decorating of buildings; preservation of buildings;project preparation relating to building renovation; redevelopment of buildings; renovation of buildings;land clearing; land drainage; land excavating; land irrigation; land reclamation; scaffolding services;plastering; plumbing;pest and vermin control and exterminating services, other than for agriculture, aquaculture, horticulture and forestry; proofing of buildings against pest and vermin access;non-agricultural pest and vermin control advisory, information and inspection services; providing information, advisory and consultancy services, including by electronic means and via a global computer network, about all of the aforesaid services;installation of locks; locksmithing (repair, maintenance and installation); locksmithing services being the installation, repair and maintenance of locks and locking systems; installation, repair, modification and maintenance of safes; break-in repairs, including repairing and/or replacing doors and door frames, repair of security locks; repair of locks and security locks; installation and servicing of electronic access control; installation of vehicle security devices; installation of security systems; maintenance and servicing of security alarms; repair of security locks; emergency vehicle repair services; vehicle repair services; vehicle servicing; vehicle inspection services; maintenance and repair of motor vehicles; all the foregoing except services related to sign repair
57. On 20 January 2023, the Applicant’s representative informed IP Australia that the Applicant rejected the proposed amendment being made to either trade mark application.
58. Accordingly, the Opponent has established a ground of opposition under s 44 and I refuse to register the Trade Marks. Noting the Appeal period, this refusal will be recorded one month from the date of this decision unless the Registrar of Trade Marks is served with a notice of appeal. If the Registrar is served with a notice of appeal in respect of either trade mark application numbers 1919796 or 1919797, registration shall not occur until either the appeal is withdrawn or discontinued. Otherwise, the disposition of the relevant application should be in accordance with the court’s order or direction.
Costs
59. Both parties have sought an award of costs. Costs usually follow the event. Accordingly, in respect of trade mark application number 1919796, I award costs against the Applicant per s 221 of the Act in the amounts set out in Schedule 8 of the Trade Mark Regulations 1995 (Cth).
60. In respect of trade mark application number 1919797, I award reduced costs against the Applicant in the same manner as indicated in Hume Industries (Malaysia) Berhad v James Hardie & Coy Pty Ltd.[50]
[50] [2001] ATMO 78.
Nicholas Barbey
Hearing Officer
Delegate of the Registrar of Trade Marks
25 January 2023
and Edelman JJ).
Key Legal Topics
Areas of Law
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Intellectual Property
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Statutory Interpretation
Legal Concepts
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Statutory Construction
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Remedies
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Standing
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Appeal
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