OneSteel Wire Pty Ltd v Austral Wire Products Pty

[2015] ATMO 52

TRADE MARKS ACT 1995

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

Re:Oppositions by OneSteel Wire Pty Ltd to registration of trade mark application 1457302 (6) GalMAX, 1457303 (6) GalMAX FENCING, and 1457304 (6) GalMAX FENCING MORE GAL - MORE LIFE! and device - filed in the name of Austral Wire Products Pty.

Delegate:	Nicole Worth
Representation:	Opponent: Andrew Fox of Counsel, instructed by Griffith Hack Patent & Trade Mark Attorneys Applicant: Benjamin Fitzpatrick of Counsel, instructed by Davies Collison Cave Patent & Trade Mark Attorneys
Decision:	2015 ATMO 52 Section 52 oppositions – ss 41, 44, 60, 42(b) and 43 pursued – no grounds established – applications may proceed to registration.

Background

1. This decision concerns oppositions under section 52 of the Trade Marks Act 1995 (‘the Act’) by OneSteel Wire Pty Ltd (‘the Opponent’) to three applications made by Austral Wire Products Pty (‘the Applicant’) to register the trade marks detailed below.

GalMAX Application No.: 1457302
Priority date: 11 Nov 2011
Class 6: Steel wire GalMAX FENCING Application No. 1457303
Priority date: 11 Nov 2011
Class 6: Steel wire Application No. 1457304
Priority date: 11 Nov 2011
Class 6: Steel wire

1. The applications were examined and a ground for rejection under section 44 was identified. After the Applicant obtained a letter of consent from the owner of trade mark registration no. 704542 for the word GALMAC (with which this decision is not concerned), the applications were accepted under the provisions of section 44(3)(b). Their acceptance was advertised in the Australian Official Journal of Trade Marks on 1 March 2012.

2. On 1 June 2012 the Opponent filed notices of opposition to registration of the Applicant’s trade marks. The notices nominated most of the grounds available under the Act to oppose registration.

3. Thereafter the parties filed their evidence, discussed in more detail later in this decision, and the matter was set down to be heard. As a delegate of the Registrar of Trade Marks I heard the parties in Sydney on 15 April 2015. Andrew Fox of Counsel, instructed by Shannon Fati of Griffith Hack Patent & Trade Mark Attorneys, represented the Opponent. Benjamin Fitzpatrick of Counsel, instructed by Maria Sun of Davies Collison Cave, represented the Applicant.

Grounds and onus

1. The Opponent pressed grounds of opposition under sections 44, 60, 42(b) and 43 in respect of all three applications. In respect of the first two applications 1457302 and 1457303, for the trade marks GalMAX and GalMAX FENCING respectively, it also pressed a ground of opposition under section 41. I will refer to these two marks collectively as ‘the word marks’, and the remaining application 1457304 as ‘the logo mark’.

2. For completeness, none of the remaining grounds listed in the notices of opposition are established.

3. The Opponent bears the onus of establishing at least one of its grounds of opposition. I confirm that the relevant standard of proof in these proceedings is the ordinary civil standard of the balance of probabilities[1], and that the relevant date at which the rights of the parties are to be determined is 11 November 2011, the filing date of the applications[2].

   [1] Pfizer Products Inc v Karam [2006] FCA 1663; (2006) 70 IPR 599 at [6] to [26].

   [2] Southern Cross Refrigerating Co v Toowoomba Foundry Pty Ltd [1954] HCA 82; (1954) 91 CLR 592.

Evidence

1. The evidence filed by the parties comprises declarations made by the following persons:

   Evidence in support

   1457302

   ·Brett Howlett, Rural Sales and Marketing Manager for the Opponent, with exhibits BH-1 to BH-23 including confidential exhibits BH-15, BH-21, BH-22, made 22 March 2013;

   ·Brett Howlett, with exhibit BH-24, made 27 March 2013;

   1457303

   ·Brett Howlett, with exhibits BH-1 to BH-23 including confidential exhibits BH-15, BH-21, BH-22, made 22 March 2013;

   ·Brett Howlett, with exhibit BH-24, made 27 March 2013;

   1457304

   ·Brett Howlett, with exhibits BH-1 to BH-23 including confidential exhibits BH-16 and BH-23 to BH-26, made 22 March 2013.

   Evidence in answer

   ·Dawn Logan Keeffe, trade mark attorney and employee of Davies Collison Cave Patent & Trade Mark Attorneys, with exhibit DLK-1, made 24 March 2014.

   ·Eric Thorncroft, Managing Director of the Applicant, with exhibits 1 to 7 and confidential exhibits 4 and 8 (which appears to be referred to erroneously as confidential exhibit 7 in the declaration), made 26 March 2014.

   Evidence in reply

   1457302

   ·Brett Howlett, with exhibits BH-25 to BH-33 including confidential exhibits BH-15, BH-21, BH-22, made 24 July 2014;

   ·Stephen Price, Southern Regional Engineering and Maintenance Manager for OneSteel Wire Pty Ltd, made 28 July 2014;

   1457303

   ·Brett Howlett, with exhibits BH-25 to BH-33 including confidential exhibits BH-15, BH-21, BH-22, made 24 July 2014;

   ·Stephen Price, Southern Regional Engineering and Maintenance Manager for OneSteel Wire Pty Ltd, made 28 July 2014;

   1457304

   ·Brett Howlett, with exhibits BH-25 to BH-33 including confidential exhibits BH-15, BH-21, BH-22, made 24 July 2014;

   ·Stephen Price, Southern Regional Engineering and Maintenance Manager for OneSteel Wire Pty Ltd, made 28 July 2014.

2. The Opponent is a subsidiary of a major metals and mining business in Australia, referred to in this decision as ‘OneSteel’. OneSteel operates in the mining, mining consumables, steel and recycling products market sectors, and produces a range of rural and farm fencing products under the umbrella brand WARATAH. In particular it produces a range of fence posts under the trade marks GALSTAR MAXY and GALSTAR EXTREME (and appears to also have provided fence posts under related marks such as GALSTAR PLUS and GALSTAR UTILITY). When the trade marks were originally conceived of MAXY was spelled MAXI, but the “I” was changed to a “Y” because it was considered reminiscent of the shape of star picket fence posts. The Opponent has registered the trade marks GALSTAR MAXI EXTREME, GALSTAR MAXI, GALSTAR FAT MAXI, GALSTAR MAXY, GALSTAR MAXY EXTREME and GALSTAR FAT MAXY in Australia in respect of a range of metal and fencing goods in class 6.

3. The fence posts are galvanized by being “hot-dipped” in zinc which provides protection against corrosion, thus increasing their durability. As well as fence posts the Opponent applies the GALSTAR name to post drivers, post caps and post clips.

4. In addition to WARATAH and GALSTAR MAXY or GALSTAR EXTREME, the Opponent’s advertising material often displays the OneSteel logo in black and white. Certain other material, being price books, show the logo in red and silver/grey. Both are shown as below:

OneSteel has used the red and silver colour combination since 2000, which was purposely chosen because a majority of steel companies at that time were using shades of blue and/or grey in their insignia.

1. The Applicant is a provider of wire products. It devised the trade mark GalMAX in 2010 because, as declared by Mr Thorncroft, “it was a coined term that fancifully incorporated the abbreviation gal for the word galvanized and also the abbreviation max for the word maximum” He explains that the mark seemed appropriate for the Applicant’s new product range of heavy galvanised steel wire. He also declares that at no point during creation of the trade marks did he recall the Opponent’s GALSTAR MAXY trade mark nor believe that GalMAX would have any associations with it.

2. The Applicant began commercially using the applied-for trade marks during March 2011 and has distributed and sold steel wire under them in the states of NSW, QLD, VIC and SA.

3. Mr. Thorncroft declares that the Applicant had a substantial reciprocal commercial relationship with the Opponent prior to the commencement of this opposition, in which the Applicant purchased wire from the Opponent and the Opponent purchased wire from the Applicant. A particular transaction involved the supply of wire by the Opponent to the Applicant in June 2012. There was considerable debate over this transaction, in particular what inferences could be drawn from it. For now it is sufficient to note that a division of the Opponent agreed to supply wire to the Applicant in tranches and to affix the Applicant’s labels to it (as part of a toll manufacturing arrangement), without first having seen the Applicant’s labels and apparently under the impression that they would be “Austral-branded”. For its part the Applicant did not believe that the GalMAX trade mark would cause the Opponent any concern. A separate manufacturing facility of the Opponent actually supplied the wire and affixed the label, and it completed several stages of the transaction before being notified by another division of the Opponent that it should stop.

4. The Opponent’s solicitors sent a letter of demand to the Applicant alleging infringement and passing off and requiring that the Applicant cease using the GalMAX trade mark. The Applicant denied the allegations, asserting that the prefix GAL- in respect of class 6 goods was commonplace and that many trade marks with the GAL- prefix co-existed on the Register in respect of similar goods.

5. To that end the Applicant has adduced the extracts of 43 trade marks registered in respect of similar products and containing the prefix GAL-, and Google® search results showing use, including by subsidiaries of the Opponent, of “gal” to refer to galvanised metal.

6. Lastly the Applicant declares that in the preceding three years, it has not become aware of any instances of confusion with the Opponent or the GALSTAR MAXY trade mark.

Section 41

1. The Opponent only advances the section 41 ground of opposition in respect of the word marks, not in respect of the logo mark.

2. As at the filing date of the applications, being 11 November 2011, section 41 relevantly provided[3]:

   [3] Section 41 was amended with effect from 15 April 2013, however the repealed section continues to apply to trade mark applications filed prior to that date. See Clearlight Investments Pty Ltd v Sandvik Mining and Construction Oy [2013] ATMO 50.

Trade mark not distinguishing applicant's goods or services

(2) An application for the registration of a trade mark must be rejected if the trade mark is not capable of distinguishing the applicant's goods or services in respect of which the trade mark is sought to be registered (designated goods or services) from the goods or services of other persons.

…

(3) In deciding the question whether or not a trade mark is capable of distinguishing the designated goods or services from the goods or services of other persons, the Registrar must first take into account the extent to which the trade mark is inherently adapted to distinguish the designated goods or services from the goods or services of other persons.

(4) Then, if the Registrar is still unable to decide the question, the following provisions apply.

(5) If the Registrar finds that the trade mark is to some extent inherently adapted to distinguish the designated goods or services from the goods or services of other persons but is unable to decide, on that basis alone, that the trade mark is capable of so  distinguishing the designated goods or services:

(a) the Registrar is to consider whether, because of the combined effect of the following:

(i) the extent to which the trade mark is inherently adapted to distinguish the designated goods or services;
(ii) the use, or intended use, of the trade mark by the applicant;
(iii) any other circumstances;

the trade mark does or will distinguish the designated goods or services as being those of the applicant; and

(b) if the Registrar is then satisfied that the trade mark does or will so distinguish the designated goods or services—the trade mark is taken to be capable of distinguishing the applicant's goods or services from the goods or services of other persons; and
(c) if the Registrar is not satisfied that the trade mark does or will so distinguish the designated goods or services—the trade mark is taken not to be capable of distinguishing the applicant's goods or services from the goods or services of other persons.

…

(6) If the Registrar finds that the trade mark is not inherently adapted to distinguish the designated goods or services from the goods or services of other persons, the following provisions apply:

(a) if the applicant establishes that, because of the extent to which the applicant has used the trade mark before the filing date in respect of the application, it does distinguish the designated goods or services as being those of the applicant—the trade mark is taken to be capable of distinguishing the designated goods or services from the goods or services of other persons;
(b) in any other case—the trade mark is taken not to be capable of distinguishing the designated goods or services from the goods or services of other persons.

…

1. The Opponent asserted that the word marks fall for consideration under section 41(6) because they convey an obvious meaning. To support its argument it cited Cantarella Bros Pty Ltd v Modena Trading Pty Ltd (‘Cantarella’)[4] in which the High Court illustrated words containing a direct reference to goods by referring to Howard Auto-Cultivators Ltd v Webb Industries Pty Ltd (‘Howard’)[5]. In Howard the High Court held that the word “rohoe” was not capable of registration in respect of agricultural implements because the relevant market, comprising farmers and agriculturalists, would understand it to be an obvious contraction of “rotary hoe”. The Opponent argues that those principles apply to the applications here, in that the trade mark GalMAX is merely an abbreviated combination of known words, is directly descriptive of the character or quality of steel wire and the relevant market of farmers and agriculturalists would understand it as such. (The word “fencing” in the second mark, it argues, is purely descriptive of the goods and therefore carries no weight).

   [4] [2014] HCA 48

   [5] (1946) 72 CLR 175; [1946] HCA 15

2. To further evince the asserted descriptiveness of the trade mark GalMAX the Opponent pointed to the tag line in the Applicant’s logo mark, “MORE GAL. MORE LIFE!”; the Applicant’s declared statement that GalMAX was “a coined term that fancifully incorporated the abbreviation gal for the word galvanized and also the abbreviation max for the word maximum”; and the Applicant’s letter denying the assertions of infringement and passing off (in which the Applicant states that “gal” is commonly used as an abbreviation for “galvanised” and “maxi”/“maxy” is likely to be regarded as descriptive use indicating either quality or a subcategory of the Opponent’s GALSTAR brand).

3. The Applicant on the other hand submitted that the evolution of section 41 (and provisions that preceded it) discussed in Cantarella has tended toward extending the classes of marks that are registrable. It argued that GalMAX did not contain any direct reference to the goods: unlike “rohoe” in respect of “rotary hoes”, as neither “gal” nor “max” referred directly to the steel wire. Rather GalMAX was more akin to marks that contain a covert and skillful allusion, per Mark Foy’s Ltd v Davies Coop & Co Ltd[6] (also applied in Cantarella) or portmanteau words such as “Whisqueur”[7] and ALLERFREE[8]. It submitted that this conclusion is entirely consistent with both the state of the Register, where analogous marks such as ‘powermax’, ‘ecomax’, ‘enviromax’ and ‘fibermax’ (in addition to the previously referred to marks containing the GAL- prefix) had been registered without the need for evidence of use. The Opponent also submitted that the conclusion would be consistent with longstanding authority and the High Court in Cantarella.

   [6] [1956] HCA 41; (1956) 95 CLR 190.

   [7] Hallgarten’s Appn (1948) 66 RPC 105 at 108 (UK Reg), cited in Shanahan, D.R. Australian Law of Trade Marks and Passing Off, 2^nd edition, © The Law Book Company Limited 1990, along with other portmanteau words considered registrable such as “Cuffusa”, “Bitumetal”, “Frumato” and “Flavotainer”.

   [8] Self Care Corporation Pty Ltd v Johnson & Johnson [2015] ATMO 27.

4. Additionally, the Applicant submitted that should I find that trade marks were not inherently adapted to distinguish such that they did not qualify for registration on a prima facie basis, then they fell for consideration under 41(5) rather than 41(6) and the evidence of use was sufficient to satisfy those provisions.

5. The test for assessing a trade mark’s inherent adaptation to distinguish was articulated in Cantarella as:

   In accordance with the principles established in Mark Foy's and restated in Clark Equipment, Faulding and Burger King, determining whether a trade mark is "inherently adapted to distinguish", as required by s 41(3), requires consideration of the "ordinary signification" of the words proposed as trade marks to any person in Australia concerned with the goods to which the proposed trade mark is to be applied.

   As shown by the authorities in this Court, the consideration of the "ordinary signification" of any word or words (English or foreign) which constitute a trade mark is crucial, whether (as here) a trade mark consisting of such a word or words is alleged not to be registrable because it is not an invented word and it has "direct" reference to the character and quality of goods, or because it is a laudatory epithet or a geographical name, or because it is a surname, or because it has lost its distinctiveness, or because it never had the requisite distinctiveness to start with. Once the "ordinary signification" of a word, English or foreign, is established an enquiry can then be made into whether other traders might legitimately need to use the word in respect of their goods. If a foreign word contains an allusive reference to the relevant goods it is prima facie qualified for the grant of a monopoly. However, if the foreign word is understood by the target audience as having a directly descriptive meaning in relation to the relevant goods, then prima facie the proprietor is not entitled to a monopoly of it. Speaking generally, words which are prima facie entitled to a monopoly secured by registration are inherently adapted to distinguish. [Footnotes omitted].[9]

   [9] Supra, at [70].

6. I do not consider that the trade mark GalMAX contains a direct reference to the goods. I acknowledge that “gal” refers to “galvanised” and “max” alludes to “maximum”. However GalMAX does not contain the same sort of direct reference as perhaps “maximum gal” or “heavy gal” might for similar goods. Rather, it alludes to products which are highly or heavily galvanised by using word elements that refer to those ideas, and places them in the reverse order to that which would be used in ordinary speech, in a single word. As noted by the delegate in ALLERFREE, “[O]bviousness of meaning must not be confused with obviousness of method of coining or derivation”.[10]

   [10] Hallgarten’s Appn, supra, also cited in Self Care Corporation Pty Ltd v Johnson & Johnson, supra.

7. Evidence regarding the state of the Register must always be approached with caution because one does not know the circumstances under which previous marks were registered. Nonetheless, I agree with the Applicant’s point that one can at least surmise the sorts of trade marks deemed to be inherently adapted to distinguish by the Registrar – they can be distinguished by the lack of endorsement (under the current Act) applying provisions of section 41. In this case, excluding the parties’ marks and marks containing the prefix “galva” rather than “gal”, the following have been registered without applying provisions of section 41 in respect of a broad range of metal goods in class 6: GALTUBE, GALCON, GALCOTE, GALPRO, GAL140, GALFORCE, RAW-GAL, TUFF GAL, PRO-GAL, and GAL PLUS+. Such registrations support a conclusion that “gal” together with other relatively non-distinctive elements may nonetheless be considered prima facie registrable in combination. The same might be applied to the “max” marks pointed out by the Applicant: POWERMAX, ECOMAX, ENVIROMAX and FIBERMAX.

1. Accordingly, although the word marks are not entirely without reference to the goods they do not contain the sort of direct reference referred to in Howard. The relevant market of farmers and agriculturalists would be unlikely to perceive GalMAX as a mere description of the steel wire to which that name would be applied. The combination of “gal” and “max” into a single word with an unusual grammatical juxtaposition results in a trade mark that is inherently adapted to distinguish, even if it be comprised of elements that on their own or in a different order might not be so adapted.

2. Given I am satisfied that the word marks are inherently adapted to distinguish the Applicant’s goods, I need not consider the provisions of subsections 41(5) or (6) and the ground of opposition under section 41 fails.

Section 44

1. Section 44 of the Act relevantly provides:

Identical etc. trade marks

44.(1) Subject to subsections (3) and (4), an application for the registration of a trade mark (applicant's trade mark) in respect of goods (applicant's goods) must be rejected if:

(a) the applicant's trade mark is substantially identical with, or deceptively similar to:

(i) a trade mark registered by another person in respect of similar goods or closely related services; or
(ii) a trade mark whose registration in respect of similar goods or closely related services is being sought by another person; and

(b) the priority date for the registration of the applicant's trade mark in respect of the applicant's goods is not earlier than the priority date for the registration of the other trade mark in respect of the similar goods or closely related services.

1. Accordingly, to establish the ground the Opponent must establish the existence of another trade mark that:

   ·     Has a priority date earlier than the Applicant’s trade marks;

   ·     Is substantially identical with or deceptively similar to the Applicant’s marks; and

   ·     Is in respect of similar goods or closely related services to steel wire.

2. The below trade marks, all owned by the Opponent, were raised as the basis for this ground of opposition:

GALSTAR MAXI EXTREME Registration No.: 1034445 Priority date: 14 Dec 2004 Class 6: Common metals and their alloys; metal building materials; non-electric cables and wire of common metal; wire products included in class 6; wire mesh and netting; metal fences; metal fencing materials; metal gates and rails; metal posts and stakes; pipes and tubes of metal for fencing; parts and accessories for all of the aforesaid being goods made of metal included in class 6	GALSTAR MAXI Registration No.: 1034446 Priority date: 14 Dec 2004 Class 6: Common metals and their alloys; metal building materials; non-electric cables and wire of common metal; wire products included in class 6; wire mesh and netting; metal fences; metal fencing materials; metal gates and rails; metal posts and stakes; pipes and tubes of metal for fencing; parts and accessories for all of the aforesaid being goods made of metal included in class 6	GALSTAR FAT MAXI Registration No.: 1034447 Priority date: 14 Dec 2004 Class 6: Common metals and their alloys; metal building materials; non-electric cables and wire of common metal; wire products included in class 6; wire mesh and netting; metal fences; metal fencing materials; metal gates and rails; metal posts and stakes; pipes and tubes of metal for fencing; parts and accessories for all of the aforesaid being goods made of metal included in class 6
GALSTAR MAXY Registration No.: 1147186 Priority date: 15 Nov 2006 Class 6: Common metals and their alloys; metal building materials; non-electric cables and wire of common metal; wire products included in class 6; wire mesh and netting; metal fences; metal fencing materials; metal gates and rails; metal posts and stakes; pipes and tubes of metal for fencing; parts and accessories for all of the aforesaid being goods made of metal included in class 6	GALSTAR MAXY EXTREME Registration No.: 1147187 Priority date: 15 Nov 2006 Class 6: Common metals and their alloys; metal building materials; non-electric cables and wire of common metal; wire products included in class 6; wire mesh and netting; metal fences; metal fencing materials; metal gates and rails; metal posts and stakes; pipes and tubes of metal for fencing; parts and accessories for all of the aforesaid being goods made of metal included in class 6	GALSTAR FAT MAXY Registration No.: 1147188 Registration No.: 15 Nov 2006 Class 6: Common metals and their alloys; metal building materials; non-electric cables and wire of common metal; wire products included in class 6; wire mesh and netting; metal fences; metal fencing materials; metal gates and rails; metal posts and stakes; pipes and tubes of metal for fencing; parts and accessories for all of the aforesaid being goods made of metal included in class 6

1. For ease of comparison the Applicant’s marks are reproduced below:

GalMAX GalMAX FENCING

1. The Opponent did not argue that the trade marks were substantially identical, nor was there any disagreement that the goods of the parties were similar and the priority dates of the Opponent’s marks were earlier. The only contested issue, and that which remains for determination here, is whether the trade marks of the Applicant and Opponent are deceptively similar.

2. The expression “deceptively similar” is defined in section 10 of the Act as a trade mark that so nearly resembles another trade mark that it is likely to deceive or cause confusion. The test for determining whether this is the case was described by Dixon and McTiernan JJ in Australian Woollen Mills Ltd v F.S. Walton and Company Ltd[11]:

   The marks ought not…to be compared side by side. An attempt should be made to estimate the effect or impression produced on the mind of potential customers by the mark or device for which the protection of an injunction is sought. The impression or recollection which is carried away and retained is necessarily the basis of any mistaken belief that the challenged mark or device is the same…The usual manner in which ordinary people behave must be the test of what confusion or deception may be expected. Potential buyers of goods are not to be credited with any high perception or habitual caution. On the other hand, exceptional carelessness or stupidity may be disregarded.

   [11] [1937] HCA 51; (1937) 58 CLR 641.

3. It is submitted that consumers place emphasis upon the “front end” of the marks, and here the front ends of all the marks are the same, comprising “gal”. Additionally, subsequent elements of the Opponent’s marks correspond with the second part of the Applicant’s marks, being “maxi”/“maxy” and “max” respectively (it is submitted that the “i”/“y” in “maxi”/“maxy” is not a significant component). The “star” part of the Opponent’s marks is submitted to be less prominent given it is the “back end” of GALSTAR. As a result of the dominance of “gal” and “max”/“maxi”/“maxy”, the aural and visual impression left by the parties’ trade marks are submitted to have synchronicity to the extent that they are deceptively similar.

4. The Opponent also submits that the descriptive abbreviation “gal” tends to promote deception or confusion because it is an abbreviation rather than the whole word. Additionally, the Opponent contends that there is a propensity for Australian consumers to shorten or abbreviate long trade marks, such as “Coca-cola” to “Coke” or “MacDonalds” to “Macca’s”, and on this basis submits that its GALSTAR MAXI/Y marks might be abbreviated as GALSTAR or GALMAXI/Y.

5. Lastly, the Opponent emphasises the use of red and silver by OneSteel which corresponds to the Applicant’s logo mark (although I note that none of the parties’ marks are limited to any particular colours).

6. The Applicant asserts that although the front ends of the parties’ marks are the same, one cannot deny the obvious visual and phonetic differences between GalMAX and GALSTAR. It also raises the descriptive nature of “gal”, citing Conde Nast Publications Pty Ltd v Virginia Taylor[12] wherein EUROVOGUE was held not to be deceptively similar to VOGUE, in respect of clothing, on the basis that a trader was not entitled to entirely monopolise VOGUE because it was neither a made up word nor a word without any direct application to the goods.

   [12] (‘Conde Nast’) [1998] FCA 864; (1998) 41 IPR 505.

7. The Applicant also argues that although the trade mark GALSTAR alludes to “galvanised star picket fences”, it could conjure notions of outer space by combining elements of “galaxy” and “star”. Additionally, the Applicant states that the second syllable of “maxi”/“maxy” is significant and the fact that the Opponent changed the spelling of it to better reflect its product is testament to the importance of that syllable. Other factors the Applicant says supports its case are that the nature of the goods is such that they are normally purchased with careful consideration rather than impulsively; the state of the Register and marketplace show many co-existing marks which commence with the prefix “gal”; and, in the context of later events casting their shadow before them[13], use since 2011 has not given rise to any instances of confusion.

   [13] As referred to in Conde Nast, above.

8. In respect of the logo mark the Applicant emphasizes that it is a highly stylised trade mark, so that in addition to all its previous comments the extra features in the logo mark differentiate it further.

9. In order to determine whether the parties’ marks are deceptively similar I am to estimate the effect or impression left by them. In the context of steel wire, “gal” will generally give the impression of a reference to “galvanised” and it is a fairly common feature in trade marks applied to metal goods. “Max” is similarly a reference to “maximum”, and/or is colloquially used as a reference to something that has been enhanced. In GalMAX the elements are placed in an order which is somewhat grammatically unusual, in that in ordinary speech the words to which the elements allude would likely be reversed (such as “maximum gal”). The net impression of the trade mark GalMAX, therefore, is that of a name which refers to maximum or enhanced galvanisation in a manner which is not the usual way one would describe such goods.

10. In the context of fence posts “star” may be taken as a reference to star pickets, although in the context of general metal goods “star” could be taken as a reference to a celestial body, to brilliance or prominence, or possibly to a surname. “Maxi” and “maxy” also allude to “maximum”, and are commonly used in reference to things which are larger in size or length. Indeed, this is shown to be the case in the Opponent’s evidence wherein the trade mark GALSTAR MAXY is applied to extra-large fence posts (whereas GALSTAR EXTREME and GALSTAR UTILITY are applied to smaller fence posts). The trade marks GALSTAR MAXI and GALSTAR MAXY are also somewhat grammatically unusual, in that the more common way to refer to an extra-large or extra-long item is a “maxi [item]”.

11. The net impression therefore of the trade marks GALSTAR MAXI and GALSTAR MAXY, in the context of fence posts, could be that of a name referring to extra-large galvanised fence posts, particularly star pickets. Alternatively, GALSTAR MAXI and GALSTAR MAXY may leave the impression of a relatively vague reference to galvanised goods which may be extra-large or have some enhanced “maxi” quality, but with no real meaning to be discerned form the “star” portion of the mark.

12. Despite the common presence of the prefix “gal” in the parties’ marks, and the related word elements “max” and “maxi” or “maxy”, I am not persuaded that the impressions left by them are such that deception or confusion would ensue. Even though they contain somewhat related references alluding to their goods, those references are not so unusual that their presence in more than one trade mark would necessarily cause consumers to wonder whether they came from the same source. Additionally, it is possible that the Applicant’s marks may be taken as a reference to a greater degree of galvanization, whilst the Opponent’s marks may be taken as a reference to galvanised goods of greater size. I add also that the additional elements in the logo mark, and the words EXTREME and FAT in the Opponent’s marks, further differentiate those trade marks.

13. Taken as wholes, I am not satisfied that the trade marks of the parties’ are similar enough to cause consumers to be deceived or confused as to their origin.

14. The ground of opposition under section 44 accordingly fails.

Sections 60, 42(b) and 43

1. The relevant sections of the Act provide:

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.

Trade mark scandalous or its use contrary to law

42. An application for the registration of a trade mark must be rejected if:

(a) …
(b) its use would be contrary to law.

Trade mark likely to deceive or cause confusion

43. An application for the registration of a trade mark in respect of particular goods or services must be rejected if, because of some connotation that the trade mark or a sign contained in the trade mark has, the use of the trade mark in relation to those goods or services would be likely to deceive or cause confusion.

1. At the hearing the Opponent addressed the grounds under sections 60, 42(b) and 43 together on the basis that they were all predicated on the reputation the Opponent submitted it had in its trade marks and in the red and silver colour scheme used by OneSteel. In respect of the ground under section 42(b), use of the Applicant’s trade mark was submitted to be contrary to sections 18 and 29(1)(g) of the Australian Consumer Law in Schedule 2 of the Competition and Consumer Act 2010 (‘CCA’). In respect of the ground under section 43, the Opponent submitted that the connotation likely to result in deception or confusion was one of sponsorship or affiliation with OneSteel.

2. For convenience I will also address the grounds together, commenting upon them separately where necessary. As a starting point the Opponent must establish that one or more of its trade marks had acquired a reputation by the priority date. If it can establish such a reputation the next stage of the enquiry is to determine whether because of it, the use of the Applicant’s marks would be likely to cause confusion or deception (in terms of section 60), or would cause persons to be misled or deceived (in terms of the provisions of the CCA), or would give rise to a confusing or deceptive connotation of sponsorship or affiliation (in terms of section 43).

3. In establishing reputation the Opponent relies upon all of its trade marks identified in this decision, but also states:

   …in respect of development of reputation particular emphasis has been placed on ‘GALSTAR MAXY’. With respect to [the logo mark], the Opponent also relies on the colour schema of the ‘OneSteel’ red and silver logo [shown below].

1. I cannot find any use by the Opponent of the trade marks GALSTAR MAXI, GALSTAR MAXI EXTREME, GALSTAR FAT MAXI, GALSTAR MAXY EXTREME or GALSTAR FAT MAXY in the evidence. Of the trade marks identified in paragraph 31 of this decision, it is only GALSTAR MAXY that the Opponent appears to have used. Use is also shown of GALSTAR EXTREME and GALSTAR UTILITY in relation to ranges of smaller fence posts, and of the OneSteel logo in either black and white or red and silver. To that end, I will not specifically address any of the trade marks GALSTAR MAXI, GALSTAR MAXI EXTREME, GALSTAR FAT MAXI, GALSTAR MAXY EXTREME or GALSTAR FAT MAXY except to say that the evidence does not show that they have acquired a reputation.

2. The relevant test to determine reputation, as pointed out by the Opponent, was articulated in McCormick & McCormick Inc v McCormick[14] as:

   Does the evidence establish that in Australia before [11 November 2011], the opponent’s mark was recognised by the public generally and, because of that, the use by the [Applicant] of the opposed trade mark would be likely to cause the public confusion, as for example, by the public mistakenly attributing a business connection between the two or attributing [the Applicant’s] product to [the Opponent]?

At the same time the requirement for recognition amongst the public generally takes into consideration the relevant market for the goods:

What is “significant” or “substantial” will depend on the nature of the goods or services in question. For highly specialised products, awareness among a few thousand persons, or even less might be sufficient...[15]

[14] [2000] FCA 1335; (2000) 51 IPR 102.

[15] Le Cordon Bleu BV v Cordon Bleu International Ltee [2000] FCA 1587; (2001) 50 IPR 1.

1. Although the Opponent’s goods are not highly specialised they are nonetheless generally purchased by the farming and agricultural sector. Accordingly, it is amongst those persons (rather than the whole of the Australian general public) that reputation is to be established.

2. The date of first use of GALSTAR MAXY is not explicitly stated. Confidential annual sales made under the GALSTAR MAXY mark are provided for the years 2007 to 2012, and they show fairly steady growth and relatively significant sales. Confidential annual advertising figures for the GALSTAR MAXY mark are provided for the years 2010 to 2012, and they too are relatively significant. (I note at the same time that figures relating to years after the 2011 priority date are not relevant to the consideration here).

3. Numerous examples of the trade mark GALSTAR MAXY in use are provided, such as in advertisements in rural newspapers, product catalogues, flyers, coupons and brochures, upon packaging of the goods (it is declared that the mark appears upon the goods themselves, however the evidence shows that the actual fence posts display the words WARATAH MAXY rather than GALSTAR MAXY[16]), upon the Opponent’s website and upon third party distributor websites. Not all exhibits are dated but the majority of those that are are dated between 2007 and 2012 (and the majority of dated exhibits are prior to the priority date).

   [16] I note that in the first image on page 18 of this decision the words “New Galstar MaxY” and “Standard Galstar Post” appear to be superimposed onto the image of the fence post rather than actually printed/embossed upon it.

4. The OneSteel red and silver logo mark has been in use since 2000. Several annual reports and brochures are provided which show use of it, and I note that they display the colours red and silver/grey generally in their get-up. Confidential sales figures shows vast sales made by the “OneSteel group” in the years 2001 to 2012, of which the Opponent estimates 60-80% were generated under and by reference to the red and silver logo mark. Confidential approximate annual expenditure undertaken in advertising the red and silver logo mark is also provided for the years 2001 to 2012.

5. I consider that the Opponent has established a reputation in the trade mark GALSTAR MAXY in respect of fence posts. However, I am not satisfied that because of that reputation confusion or deception is likely to occur from the use of the Applicant’s trade marks. The reasons for this are those outlined under section 44, although I note that deceptive similarity need not be established under section 60. Nonetheless, I consider that there is sufficient difference between the marks: the individual elements they have in common are relatively descriptive or commonly used (which is not to say that as wholes the marks are not adapted to distinguish), so that their presence in both parties’ marks does not necessarily lead to a likelihood of confusion. The principle that descriptive (or common) names will not ordinarily mislead the public was discussed in Hornsby Building Information Centre Pty Ltd v Sydney Building Information Centre Ltd[17], although the trade name at issue there was considerably more descriptive than the individual trade mark elements here.

   [17] [1978] HCA 11; (1978) 140 CLR 216.

1. I note also the Opponent’s submission that the legislative intent of section 60 was to lower the bar for similarity by focusing the enquiry solely on reputation. It is true that the requirement for deceptive similarity or substantial identity was removed in the amendments made to section 60 in 2006. The intention of doing so was to protect well known marks and to clarify that although they may be found not to be deceptively similar under section 44 they might nonetheless be found to cause confusion or deception in terms of section 60. Whilst I accept that the Opponent has a reputation in the trade mark GALSTAR MAXY, it has not established that the elements “gal” and “maxy” (or similar derivative words such as “max”) are so associated with it that their use in the Applicant’s trade marks, in a different format and in combination different features, would cause purchasers to wonder whether the Applicant’s trade marks were associated with the Opponent.

2. As to the red and silver colour scheme used by the Opponent, the Opponent did not claim it had a separate trade mark in the colours red and silver. Rather its submissions appeared to be that the colours red and silver were associated with OneSteel, a company with a very great reputation, and that by virtue of the use of the OneSteel logo in advertisements for the GALSTAR MAXY fence posts, purchasers may make an association between the red and silver used by OneSteel and the Applicant’s logo mark (which is represented in, although not limited to, the colours red and grey/silver) and therefore be caused to wonder whether they came from the same source. It also submitted that the connotation of sponsorship or affiliation (in terms of section 43) was at its strongest when one had regard to the colour scheme used in the logo mark.

3. I consider this a fairly tenuous connection. Firstly, the primary colour scheme used in respect of the trade mark GALSTAR MAXY is orange, the colour associated with the umbrella brand WARATAH. Typical examples of advertisements and catalogues are shown below. Secondly, it is the WARATAH umbrella brand that takes prominence over OneSteel: it is generally displayed more prominently in advertisements and is the word that appears upon the fence posts themselves.

1. Thirdly, the OneSteel logo is more commonly shown in black and white. It appears only to be represented in red and silver in price books which are distributed to OneSteel’s distributors, of which approximately 3000 are printed and distributed annually (an example of which is also shown below):

1. Lastly OneSteel’s annual reports and brochures, which use red and silver in their get-up, fall short of establishing an association in the mind of the public between red and silver and OneSteel or that the public may be confused by the use of those colours by other entities in respect of related products, even where the respective trade marks contain the same common or descriptive elements.

2. Accordingly, I am not satisfied that the public associates red and silver with OneSteel with any particular degree of exclusivity, nor that by virtue of the use of the OneSteel logo upon material promoting the GALSTAR MAXY goods, the public would make an association between the colour scheme used by OneSteel and the colour scheme apparently adopted by the Applicant. It follows then that I am not satisfied that the relevant market is likely to be caused to wonder whether the Applicant’s trade marks are, or are associated with, the Opponent’s trade marks, either by virtue of the use of “gal” and “max”, or by virtue of the colour schemes used by the parties, or when those factors are considered in combination.

3. Since I am not satisfied that the market would be caused to wonder about a connection between the parties’ marks in terms of section 60, I cannot be satisfied that market would be deceived or misled by the use of the Applicant’s trade marks (in terms of section 42(b) and the CCA), a higher threshold again. Likewise I am not satisfied that a connotation of sponsorship or affiliation exists such that the public are likely to be deceived or confused. Accordingly, none of the grounds under sections 60, 42(b) and 43 are established.

Decision

1. Section 55 relevantly provides that:

   …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.

2. The Opponent has not established any of the grounds of opposition and the opposition fails. Accordingly, I direct that trade mark applications 1457302, 1457303 and 1457304 may proceed to registration after one month from the date of this decision.

3. If the Registrar is served with a notice of appeal on or before that time, I direct that registration shall not occur until the appeal has been discontinued, or in the event of a decision from the Court, that the application be subject to the Court’s orders.

4. The parties sought costs. Costs generally follow the event, and I see no reason to depart from the general principle here. Accordingly, I award costs against the Opponent as per Schedule 8 of the Trade Marks Regulations 1995, with the costs in the second and third oppositions to be taxed at 20% of scale (per Hume Industries (Malaysia) Berhard v James Hardie & Coy Pty Ltd[18]).

   [18] (2001) 53 IPR 591.

Nicole Worth
Hearing Officer
Trade Marks Hearings
22 June 2015