Onsite Rental Group Operations Pty Ltd v Coates Hire Operations Pty Limited
[2024] ATMO 46
•12 March 2024
TRADE MARKS ACT 1995
DECISION OF A DELEGATE OF THE REGISTRAR OF TRADE MARKS WITH REASONS
Re:Opposition by Onsite Rental Group Operations Pty Ltd to registration of trade mark application number 2148551 (classes 35, 37, 39, 40, 41, 42, 43, 44 and 45) - COATES CONNECT - in the name of Coates Hire Operations Pty Limited
Delegate:
Anne Makrigiorgos
Representation:
Opponent: brandU Legal
Applicant: Herbert Smith Freehills
Decision:
2024 ATMO 46
Trade Marks Act 1995 (Cth) – opposition under section 52 – ss 42(b), 44, 58, 60 and 62A considered – no ground of opposition established – trade mark to proceed to registration
Background
1. This decision concerns an opposition under s 52 of the Trade Marks Act 1995 (Cth)[1] by Onsite Rental Group Operations Pty Ltd (‘Opponent’) to registration of the following trade mark:
Trade mark number: 2148551 (‘Application’)
Trade mark: COATES CONNECT (‘Trade Mark’)
Applicant: Coates Hire Operations Pty Limited (‘Applicant’)
Filing Date and Priority Date: 20 January 2021 (‘Relevant Date’)
Specification: See Annexure A (‘Applicant’s Services’)
[1] Unless otherwise stated, each reference to a section is a reference to a section of the Trade Marks Act 1995 (Cth) and each reference to a regulation is a reference to a regulation in the Trade Marks Regulations 1995 (Cth).
2. The Trade Mark was examined and advertised as accepted for possible registration on 9 December 2021.
3. On 20 January 2022, the Opponent filed a Notice of Intention to Oppose the Trade Mark. On 1 February 2022, the Opponent filed its Statement of Grounds and Particulars (‘SGP’). The Applicant filed a Notice of Intention to Defend the Opposition on 12 April 2022.
4. The Opponent filed Evidence in Support (‘EIS’) on 13 July 2022. The Applicant filed Evidence in Answer (‘EIA’) on 18 October 2022. The Opponent filed Evidence in Reply (‘EIR’) on 20 December 2022
5. The parties were given the opportunity to either request an oral hearing or to file written submissions. Both parties elected to be heard by written submissions. The Opponent filed written submissions, drafted by Melissa McGrath of Counsel, on 8 January 2024. The Applicant filed written submissions, drafted by Jeremey Herz of Herbert Smith Freehills, on 17 January 2024.I have decided this matter based on the particulars set out in the SGP, the evidence and the written submissions of the parties.
Grounds and onus
6. The SGP nominates grounds of opposition under ss 42, 44, 58, 60 and 62A.
7. The Opponent carries the burden of establishing one or more of the grounds of opposition[2] on the balance of probabilities.[3] The rights of the parties are assessed as at the Relevant Date.[4]
[2] Food Channel Network Pty Ltd v Television Food Network GP [2010] FCAFC 58, [32] (Keane CJ, Stone and Jagot JJ).
[3] Telstra Corporation Limited v Phone Directories Company Pty Ltd [2015] FCAFC 156, [133] (Besanko, Jagot and Edelman JJ).
[4] Southern Cross Refrigerating Co v Toowoomba Foundry Pty Ltd (1954) 91 CLR 592, 595 (Kitto J).
Evidence
8. The following EIS was filed:
·Declaration of Banipal Sulaiman, senior legal counsel of the Opponent, dated 13 July 2022 with Exhibits BS-1 to BS-18 (‘Sulaiman Declaration’).
·Declaration of Natalie Murray-Jones, employee of brandU Legal, dated 13 July 2022 with Exhibits NMJ-1 to NMJ-6.
9. The following EIA was filed:
·Declaration of Stephen Cowan, Chief Commercial Officer of the Applicant, dated 17 October 2022 with Exhibits SC-1 to SC-8.
·Declaration of Casey Hogan, employee of Herbert Smith Freehills, dated 17 October 2022 with Exhibits CH-1 to CH-8 (‘Hogan Declaration’).
10. The following EIR was filed:
·Second Declaration of Natalie Murray-Jones dated 20 December 2022 with Exhibits NMJ-1 to NMJ-5.
Summary of EIS
11. Sulaiman states that the Opponent was established in 1990 and provides B2B equipment rental solutions across 35 branches and targeted co-locations across Australia.
12. Sulaiman claims that the Opponent’s market share in the addressable B2B equipment rental market in Australia is around 7 to 9%.
13. Sulaiman provides details of three Australian trade mark registrations owned by the Opponent (‘Opponent’s Marks’). Summary details appear in the table below and a full list of the goods and services appear in Annexure B (‘Opponent’s Goods and Services’).
Mark
Number
Priority Date
Classes
ONSITE CONNECT
(‘Onsite Connect Word Mark’)
1860957
24 July 2017
9, 37, 38, 39, 40, 42, 43 and 44
(‘Connect Onsite logo’)
1860962
24 July 2017
9, 37, 38, 39, 40, 42, 43 and 44
(‘Connect logo’)
2166915
27 March 2021
(after the Relevant Date)
37, 39, 40, 41, 43 and 44
14. Sulaiman states that the Opponent uses the trade marks Connect logo, Connect Onsite logo, Onsite Connect Word Mark and CONNECT solus in relation to the rental of equipment in the construction industry including a digital system online allowing customers to rent equipment and manage equipment rental in real time including obtaining quotes and downloading invoices (‘Opponent’s System’).
15. Sulaiman claims the Opponent’s System is provided as a free offering to new and existing customers. These customers can either access the system as a direct customer or access is provided to customers at their construction sites. In July 2022, after the Relevant Date, Sulaiman claims that 1,004 customers have access to the Opponent’s System and there are currently 7,500 construction sites which use the Opponent’s Goods and Services and the data for each of those sites is accessible via the Opponent’s System.
16. Sulaiman asserts the Opponent’s System was developed in 2014 and launched on its website at (‘Opponent’s Website’) on 18 February 2015. Sulaiman claims that the trade mark CONNECT was chosen for the Opponent’s System by the Opponent’s employees in April 2014. The original trade mark logo (‘Original Logo’) and other related brand concepts were developed in April 2014 by Aegir Brands, an outside agency.
17. Sulaiman claims first use of the Onsite Connect Word Mark and the Original Logo on 18 February 2015.
18. Sulaiman asserts that the Opponent’s System was accessed by 3000 customers via the login page on the Opponent’s Website from in or around July 2015 through to December 2018. In support, Sulaiman provides a list of logins to the system on an undated spreadsheet.
19. Sulaiman declares that by November 2021, the Opponent’s System was available as an app but offers no evidence to support this claim.
20. Sulaiman declares that the Opponent commenced using the Connect Onsite logo in early 2017, before the Relevant Date and the Connect logo by March 2021, after the Relevant Date.
21. Sulaiman claims that the Opponent and its customers refer to the Opponent’s System as ‘CONNECT’ and that the Opponent has promoted some of the Opponent’s Marks and CONNECT solus since at least 2015 in relation to the Opponent’s Goods and Services and provides the following support for both these claims:
·an email dated April 2014 from Aegir Brands. I note that the email reference is ‘Connect logo options’, the content of the email refers to the ‘cONnect logo’ and the wording in all brand concepts attached to the email show a combination of ‘cONnect’ and ‘ONSITE’ or ‘ONsite’. I note that there is no use of CONNECT solus.
·two undated presentations to customers claimed to be from 2015. I note use of the trade marks Onsite Connect Word Mark and a slight variation of the Original Logo,. I also note that there is no use of CONNECT solus.
·screenshots from a YouTube® video dated 25 November 2016 with 543 views but I note there is no indication as to the actual dates of these views. I also note use of the trade marks Onsite Connect Word Mark, a slight variation of the Original Logo, and the Connect Onsite logo and that there is no use of CONNECT solus.
·an undated presentation at a trade show in Las Vegas, USA claimed to be in March 2017. I note use of the Connect Onsite logo but not use of CONNECT solus.
·eight Wayback[5] machine screenshots dated between 20 March 2018 and 21 January 2021 of the Opponent’s Website. I note the use of the Onsite Connect Word Mark, CONNECT solus and the Connect Onsite logo.
[5] undated flyer claimed to be distributed to customers from June 2021. I note the use of the Connect logo and CONNECT solus.
·an undated capability statement claimed to be from 2021. I note use of the Connect Onsite logo, use of CONNECT in text such as ‘CONNECT Customer Portal’ and also as follows:
and
·a template for a pricing proposal to customers dated November 2021, after the Relevant Date. I note the use of CONNECT solus.
·media releases from the Opponent’s Website dated 20 June 2022, after the Relevant Date. I note the use of the Onsite Connect Word Mark, the Connect logo and CONNECT solus.
·An undated capability statement. I note use of the Connect Onsite logo and use of ‘CONNECT’ solus.
·undated screenshots from the Opponent’s Website. I note use of the Opponent’s Marks and ‘CONNECT’ solus.
·five email communications with customers showing the use of ‘CONNECT’ by the Opponent and customers dated May or June 2022, after the Relevant Date.
22. Sulaiman claims the Opponent was nominated in the Queensland Mining Awards in 2020 for its capabilities with the Opponent’s System and nominated for the Innovation Awards to Bowen Basin Mining Club in the years leading up to 2020. No evidence of these nominations has been provided.
23. Sulaiman asserts that its securing of a number of customers and the associated value of contracts since 2021 is attributable to the Opponent’s System, however there is no cogent evidence to support this assertion.
24. Sulaiman asserts that the Applicant is a direct competitor of the Opponent claiming that the equipment and service offering, customers and target markets of the parties are the same. In support, Sulaiman annexes undated printouts from the Opponent’s Website and the Applicant’s website at (‘Applicant’s Website’).
25. Sulaiman declares that he became aware of the Applicant offering a system similar to the Opponent’s System under the Trade Mark in mid-2021. Sulaiman further declares his awareness of instances of confusion where three customers queried whether the Opponent’s System was the same as the “Coates Connect system” on or around August 2021 and on 14 and 15 June 2022, all after the Relevant Date.
26. Murray-Jones repeats a number of the claims and supporting evidence in the Sulaiman Declaration such as screenshots from the Opponent’s Website, which are undated but are claimed to be dated 4 July 2022.
27. Murray-Jones provides a comparison table based on her opinion as to which of the Applicant’s Services are the same as, or of the same description as, some of the services of the Opponent’s Marks.
28. Murray-Jones annexes a printout of search results conducted on 4 July 2022 of the Australian trade mark database limited to registered trade marks for the word CONNECT or including the word CONNECT (exact) in respect of services in classes 37, 39, 40, 42, 43 and 44. The search revealed 497 registered trade marks of which she claims that other than the Opponent’s Marks, none of these registered trade marks cover services she considers the same as, or of the same description, as the Opponent’s Marks.
Summary of EIA
29. Cowan states that the Applicant was founded in Melbourne and it has provided engineering consultancy, equipment manufacturing and hire services since 1885. These services are claimed to have been provided under COATES HIRE and COATES SERVICE. Cowan attests that the Applicant provides a broad range of mechanical, civil engineering, equipment rental and ancillary services and provides summaries of fifteen current major infrastructure projects Australia wide involving the Applicant.
30. Cowan provides a table of ‘COATES’ formative trade marks in Australia which includes eleven registrations and the Application.
31. Cowan declares that the Trade Mark was honestly adopted in Australia by the Applicant as the name for the new iteration of its online customer portal (‘Portal’), a product which had been on offer to the Applicant’s customers since at least 2014. Cowan annexes an undated copy of the Applicant’s customer user guide for the Portal and dashboard for the Portal dated after the Relevant Date, and claims that throughout the guide and dashboard, the Portal is referred to by the Trade Mark.
32. Cowan claims that the Portal is widely accessed by the Applicant’s customers and gives figures for page views and sessions in July 2022 and active customers who logged in from May to July 2022. These figures are after the Relevant Date. Cowan claims there were over 3069 users of the Portal in the preceding two years but provides no supporting evidence.
33. Cowan states that only registered customers of the Applicant are or can be users of the Portal, which is accessed through the Applicant’s Website. Cowan annexes extracts of the Applicant’s Website between February 2021 and September 2022 showing the placement of the login link for the Portal displaying the Trade Mark on its home page.
34. Cowan attests that the Applicant has not been made aware of any actual instances of consumer confusion arising between the ‘Coates Connect’ and ‘Onsite Connect’ online customer portals.
35. Hogan provides the results of searches of the Australian trade mark register for trade mark applications and registrations containing the ‘part’ word ‘CONNECT’. I note that this search returned 2520 total results.
36. Hogan claims that the word ‘CONNECT’ is in common use for online service portals and annexes extracts from ten websites dated after the Relevant Date. Nine of the extracts show use of [word] + “connect” marks and one the word connect solus.
Summary of EIR
37. Murray-Jones states that the word CONNECT is not common to the Applicant’s and the Opponent’s field or industry. She refers to the results of a search of the Australian trade marks database conducted on 7 December 2022 that reveals:
· 147 pending applications or registrations for the ‘exact’ word ‘CONNECT’ in classes 35, 37, 39, 40, 41, 42, 43, 44 and 45 that contain the word ‘rental’ in the wording of the goods and/or services.
· Of the 147 trade marks revealed, only ten trade marks cover services in classes 37, 39 and 43 which Murray-Jones considers the same, or of the same description as, the goods and services provided by the Opponent and Applicant.
38. In response to the claim by Hogan that the word ‘CONNECT’ is in common use for online service portals, Murray-Jones annexes printouts of the websites of the ten trade marks referred to in paragraph 37 above, to show that the commercial activities of the owners are entirely different to the commercial activities of the Applicant and the Opponent. I note that the printouts are all dated after the Relevant date.
39. Murray-Jones provides Wayback machine search results of the Applicant’s Website which claim to show use of the name ‘My Coates Hire’ by the Applicant for its Portal from around March 2016 and a transition to the name ‘COATES CONNECT’ in around January 2021.
Discussion and Reasons
Section 44
40. The relevant provisions of s 44 are reproduced below:
Identical etc. trade marks
(1) …
(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.
The Opponent relies on the Onsite Connect Word Mark and the Connect Onsite logo as the bases for this ground (collectively ‘Prior Registrations’):
As a starting point, to successfully oppose the Application pursuant to s 44, the Opponent must establish that:
- at least one of the Prior Registrations has a priority date which is earlier than the Relevant Date and is held in a name other than that of the Applicant (‘the first requirement’);
- the Trade Mark is substantially identical with or deceptively similar to one or more of the Prior Registrations (‘the second requirement’); and
- the Applicant’s Services are similar to and/or closely related to the services and goods claimed in the Prior Registrations (‘the third requirement’).
I am satisfied that the priority dates of the Prior Registrations are earlier than the Relevant Date and are in a name other than the Applicant. Therefore, the first requirement is satisfied.
The next consideration is whether the Trade Mark is substantially identical with or deceptively similar to one or both of the Prior Registrations.
The Opponent’s submissions do not contend that the Trade Mark and the Prior Registrations are substantially identical. For completeness, I do not find the Trade Mark to be substantially identical to either of the Prior Registrations. On a side by side comparison of the respective marks, there are obvious differences.
For ease, the following table shows the trade marks to be compared:
Trade Mark
Prior Registrations
COATES CONNECT
ONSITE CONNECT
47. The Trade Mark and the Prior Registrations have the word CONNECT in common but that is all. The Trade Mark begins with the word CONNECT and the Onsite Connect Word Mark with the word ONSITE. Each of these words are significantly different. Further the Connect Onsite logo has other elements in the mark which ensure that there is a total impression of dissimilarity. Visually and aurally, the marks look and are pronounced completely differently. As such, I cannot conclude that a total impression of resemblance emerges from a side by side comparison between the Trade Mark and the Prior Registrations.
48. Section 10 provides a definition of deceptively similar being 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”.
Justice Windeyer outlined the following approach for the assessment of deceptive similarity in The Shell Co. of Australia Ltd v Esso Standard Oil (Australia) Ltd (‘Shell’):
On the question of deceptive similarity a different comparison must be made from that which is necessary when substantial identity is in question. 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].[6]
[6] The Shell Co. of Australia Ltd v Esso Standard Oil (Australia) Ltd (1963) 109 CLR 407, [13] (‘Shell’).
The High Court in Self Care IP Holdings Pty Ltd v Allergan Australia Pty Ltd[7] (‘Self Care’) conveniently stated the relevant principles, which may be summarised as follows:
[7] [2023] HCA 8 (Kiefel CJ, Gageler, Gordon, Edelman and Gleeson JJ) (‘Self Care’).
(a)the resemblance between the two marks must be the cause of the likely deception or confusion;[8]
[8] Swancom Pty Ltd v The Jazz Corner Hotel Pty Ltd [2022] FCAFC 157, [69] (Yates, Abraham and Rofe JJ).
(b)in the trade mark comparison, the marks must be judged as a whole taking into account both their look and their sound;[9]
[9] Cooper Engineering Co Pty Ltd v Sigmund Pumps Ltd (1952) 86 CLR 536, 538 (Dixon, Williams and Kitto JJ).
(c)the marks should not be compared side by side;[10]
[10] Australian Woollen Mills Ltd v F S Walton & Co Ltd (1937) 58 CLR 641, 658 (Dixon and McTiernan JJ) (‘Australian Woollen Mills’).
(d)the effect of spoken description must be considered; if a mark is in fact or from its nature likely to be the source of some name or verbal description by which buyers will express their desire to have the goods (or services), then similarities both of sound and of meaning may play an important part;[11]
[11] Ibid.
(e)the focus is upon the effect or impression produced on the mind of potential customers of the goods (or services) in relation to which the two marks are used and in the case of the registered mark, allowing for ‘imperfect recollection’;[12]
[12] Ibid.
(f)the notional buyer is a person with no knowledge about any actual use of the registered mark, the actual business of the owner of the registered mark, the goods the owner produces, any acquired distinctiveness from the use of the marks prior to filing, or any reputation associated with the registered mark;[13]
[13] C A Henschke & Co v Rosemount Estates Pty Ltd (2000) 52 IPR 42, 62 [43] (Ryan, Branson and Lehane JJ).
(g)the correct approach is to compare the impression (allowing for imperfect recollection) that the notional buyer would have of the registered mark (as notionally used on all of the goods or services covered by the registration), with the impression that the notional buyer would have of notional and normal fair use of the opposed mark;[14]
[14] Shell (n 6) 415.
(h)“deceived” implies the creation of an incorrect belief or mental impression; “causing confusion” may merely involve “perplexing or mixing up the minds” of potential customers; [15]
[15] Coca-Cola Company v All-Fect Distributors Ltd (1999) 96 FCR 107, 122 [39] (Black CJ, Sundberg and Finkelstein JJ) quoting Pioneer Hi-Bred Corn Co v Hy-Line Chicks Pty Ltd [1978] 2 NZLR 50, 62 (Richardson J).
(i)the usual manner in which ordinary people behave must be the test of what confusion or deception may be expected, having regard to the character of the customers who would be likely to buy the goods in issue;[16]
[16] Campomar Sociedad Limited v Nike International Limited (2000) 202 CLR 45, 79 [83] (Gleeson CJ, Gaudron, McHugh, Gummow, Kirby, Hayne and Callinan JJ).
(j)it is not necessary to establish actual probability of deception or confusion, but a mere possibility of confusion is not enough. There must a real, tangible danger of deception or confusion occurring. It is enough if the notional buyer would entertain a reasonable doubt as to whether, due to the resemblance between the marks, the two products come from the same source. Put another way, there must be “a real likelihood that some people will wonder or be left in doubt about whether the two sets of products ... come from the same source”;[17]
[17] Registrar of Trade Marks v Woolworths Ltd [1999] FCA 1020, [50(ii)] (French J) restating principles from Southern Cross Refrigerating v Toowoomba Foundry Pty Ltd (1954) 91 CLR 592, 594-595 (Kitto J).
(k)evidence of actual confusion is of great weight, but not essential, and lack of such evidence may also be relevant;[18] and
[18] Australian Woollen Mills (n 10).
(l)any intention to deceive or cause confusion may be a relevant consideration but is not required.[19]
[19] Hashtag Burgers Pty Ltd v In-N-Out Burgers Inc (2020) 385 ALR 514, 533 [67] (Nicholas, Yates and Burley JJ) citing Australian Woollen Mills (n 10) 657.
Justice French expressed the view in Registrar of Trade Marks v Woolworths Ltd[20] that the determination of whether, and to what degree, an applicant’s goods or services are similar to, or closely related to, the relevant goods or services of the earlier trade mark owner is “logically antecedent to” assessing the similarity of the parties’ trade marks. In particular, French J explicitly approved the observation in Wilcox J’s first instance decision in the Woolworths Ltd v Registrar of Trade Marks matter that, ‘[t]he closer the relationship between the services and particular goods, the more likely any similarity in marks will prove deceptive’.[21]
[20] [1999] FCA 1020, [39].
[21] Ibid. See also Enagic Co Ltd v Horizons (Asia) Pty Ltd (No 3) [2021] FCA 1512, [33] (Charlesworth J).
It is also relevant to take into account whether elements of the rival marks have a descriptive character’.[22] Whilst this does not preclude a finding of deceptive similarity,[23] the Full Court noted in Combe International Ltd v Dr August Wolff GmbH & Co. KG Arzneimittel:
[22] The Agency Group Australia Limited v H.A.S. Real Estate Pty Ltd [2023] FCA 482, [73] (Jackman J).
[23] Lift Shop Pty Ltd v Easy Living Home Elevators Pty Ltd [2014] FCAFC 75, [64] (Besanko, Yates and Mortimer JJ).
It is correct to observe, as his Honour did, that an element of a trade mark that is descriptive may not tend to cause confusion about the source of a product because it calls to mind the nature of the product, rather than its trade source. However, as we have noted, each case must be considered on the basis of the marks in question and the facts established. The authorities do not say that where there is a common descriptive element in marks that component is to be ignored for the purposes of comparison. In this regard the observation made by Lord Evershed (Asquith and Jenkins LJJ agreeing) in Broadhead’s Application (at 215.1-5), to the effect that even where there is a common denominator one must be careful not to treat words as though the common part was not there at all, is apposite.[24]
[24] [2021] FCAFC 8, [78] (McKerracher, Gleeson and Burley JJ).
In light of the authorities, I must decide whether there is a real, tangible danger of deception or confusion by reason of the use of the Trade Mark, having regard to the imperfect recollection of the notional consumer. That is not to be judged by a side by side comparison of, on the one hand, the Trade Mark, and on the other, the Opponent’s Registrations. Rather, I am required to take all of the surrounding circumstances into consideration, including those in which the Trade Mark and the Opponent’s Registrations are used and the circumstances in which the services are and will be sold. Here it is clear that the trade marks will be used for some identical and therefore similar services in classes 37, 39, 40, 43 and 44.
The Opponent submits that the Trade Mark is deceptively similar to each of the Opponent’s Registrations as consumers would be caused to wonder whether the Opponent was a provider of the Applicant’s Services on the basis that:
·The Trade Mark and the Opponent’s Registrations both incorporate a six letter business name that commences with a curved letter (C or O) and includes the same consonants T, E, and S followed by the word CONNECT.
·The dominant cognitive cue of the Opponent’s Registrations, which is retained when applying the imperfect recollection test, is the word “CONNECT”, which is also identical to the dominant feature of the Trade Mark.
·The Opponent’s customers refer to the Opponent’s digital system as the word ‘CONNECT’.
·The use of the word “CONNECT” is not common to the Applicant’s and the Opponent’s field or industry.
The Applicant submits:
·The word ‘CONNECT’ used in the context of a company’s customer portal or in relation to rental and engineering consultancy services more broadly, is a word that other traders have incorporated into their trade marks without improper motive and consumers understand the word to be a commonplace and descriptive business word.
·The Opponent’s Registrations were not cited at the examination stage.
·The essential element of each of the Opponent’s Registrations is the word ONSITE, which has a meaning in English. The essential element of the Trade Mark is the word COATES, which has no meaning in English. The words ONSITE and COATES are the more distinctive elements of the respective marks.
·The words ‘ONSITE’ and ‘COATES’ are also essential elements because they are more prominently positioned in the respective marks being the first of two words.
·The context of the comparison is that of the commercial and construction equipment hire industry which are not services procured on impulse and the consumers for these services would predominantly include those knowledgeable about the services and their trade origins.
Regarding the Applicant’s submission that the Opponent’s Registrations were not cited at the examination stage, I must consider the ground under s 44 afresh, not constrained by the examiner’s reasoning or findings. I must take into account the particular evidence and submissions filed in this opposition.
57. Regarding the Opponent’s submission that the Opponent’s customers refer to the Opponent’s System as the word ‘CONNECT’, reputation in the market and therefore whether or not customers refer to the Opponent’s System as the word ‘CONNECT’, is not relevant considerations to the determination of deceptive similarity. The High Court in Self Care[25] made it clear that reputation should not be taken into account when assessing deceptive similarity.
[25] Self Care (n 7) [36], albeit in the context of s 120(1).
58. In Self Care, the Court noted the following:
In considering the likelihood of confusion or deception, "the court is not looking to the totality of the conduct of the defendant in the same way as in a passing off suit"[26]. In addition to the degree of similarity between the marks, the assessment takes account of the effect of that similarity considered in relation to the alleged infringer's actual use of the mark[27], as well as the circumstances of the goods, the character of the likely customers, and the market covered by the monopoly attached to the registered trade mark[28]. Consideration of the context of those surrounding circumstances does not "open the door" for examination of the actual use of the registered mark, or, as will be explained, any consideration of the reputation associated with the mark.[29][30]
[26] New South Wales Dairy Corporation v Murray-Goulburn Co-operative Co Ltd (1989) 86 ALR 549 at 589; 14 IPR 26 at 67 (New South Wales Dairy) (emphasis added), approved in Henschke at [44], Hashtag Burgers at [64], Combe International Ltd v Dr August Wolff GmbH & Co KG Arzneimittel (2021) 157 IPR 230; [2021] FCAFC 8 at [27], PDP Capital Pty Ltd v Grasshopper Ventures Pty Ltd (2021) 285 FCR 598; 391 ALR 608; 160 IPR 174; [2021] FCAFC 128 (PDP Capital) at [97] (see also [111]) and Swancom at [73].
[27] s 68.
[28] New South Wales Dairy [1989] FCA 124; (1989) 86 ALR 549 at 589.
[29] Swancom (2022) 168 IPR 42 at 59 [89]. See also Henschke (2000) 52 IPR 42 at 62 [44].
The comparison to be made under s 44 is the impression (allowing for imperfect recollection) that the notional buyer would have of the Opponent’s Registrations (as notionally used on all of the goods or services covered by the registrations), with the impression that the notional buyer would have of notional and normal fair use of the Trade Mark. Material external to the Opponent’s Registrations is irrelevant to deceptive similarity. If the Opponent’s claim is that the notional buyer’s imperfect recollection of the Opponent’s Registration is only the word CONNECT, then I do not agree.
The Applicant’s submissions that the word ‘ONSITE’ is the first word in the Opponent’s Registration only applies to the Onsite Connect Word Mark as the word ‘ONSITE’ is obviously not the first word in the Connect Onsite logo.
While the Applicant submits that the Trade Mark and the Opponent’s Registrations both incorporate a six letter business name that commences with a curved letter and includes the same consonants T, E, and S followed by the word CONNECT, this argument takes the Opponent nowhere. The words COATES and ONSITE are completely different aurally, visually and conceptually.
I disagree with the Opponent that the dominant cognitive cue of the Opponent’s Registrations which is retained when applying the imperfect recollection test is the word CONNECT solus, and that this word is also the dominant feature of the Trade Mark.
In my opinion, the word CONNECT has a low level of distinctiveness in respect of the both the Applicant’s Services and the goods and services of the Opponent’s Registrations. One meaning of connect is to ‘establish communication between’.[31] In my opinion, this meaning would be well known to the general Australian population. I am aware from my own knowledge that there are many ways to connect customers and the goods and services of businesses such as online through websites and portals including social media websites and virtual meeting websites. Businesses can also connect to other businesses in the same way. It seems to me that the word ‘CONNECT’ is very apt to describe a portal which allows customers to connect through a website or app to obtain the goods and services of a business or to contact a business.
[31] Macquarie Dictionary online.
Both parties refer to the state of the Register as it sheds light on the inherent character of the ‘CONNECT’ element of the compared trade marks. In Dr August Wolff GmbH & Co KG Arzneimittel v Combe International Ltd, Stewart J stated:
It has been recognised that the state of the register does not establish what is actually happening out in the market and that comparison with other marks on the register is in principle irrelevant when considering a particular mark that has been tendered for registration.
The significance of the evidence of the registrations and the limited sales of the limited products is not in relation to the knowledge or understanding of the ordinary consumer of existing trade marks and therefore of their capacity for confusion. It is rather in its support of the notion that the word or prefix VAG or the prefix VAGI- are likely to be understood by the ordinary consumer to be references to the vagina, and are therefore descriptive. The fact that many traders seek to register VAG or VAGI in relation to particular types of feminine healthcare products is indicative of that likely understanding.[32]
[32] [2020] FCA 39, [73]-[74] (citations omitted).
While the fact that other registered marks may use the word ‘CONNECT’ is largely irrelevant to this inquiry,[33] I do not need the help of the Register to understand how the word ‘CONNECT’ would be understood by the ordinary person in respect of a great variety of goods and services including those of the Applicant and Opponent.
[33] Automobile Club De L’Oeust v Gardiakos [2005] ATMO 19, [48] (Hearing Officer McDonagh).
Given the word ‘CONNECT’ has low distinctive value in the context of the goods and services provided by each party, its mere presence within each trade mark does not automatically render them deceptively similar. Consumers would not necessarily assume that every trade mark containing the word ‘CONNECT’ denotes the same trader. This is particularly so where additional word/s and or devices create further aural and visual differences between the trade marks. The low distinctive nature of ‘CONNECT’ provides a sufficient basis to infer that consumers will differentiate their choice of services based on more than this word. It is thus unlikely that either of the Opponent’s Prior Registrations would be recollected or referred to solely as ‘CONNECT’. In such circumstances, the presence of the common element ought to be given less weight in considering whether the respective marks are deceptively similar.
With respect to the Opponent’s evidence of confusion, in determining deceptive similarity “[e]vidence of actual cases of deception, if forthcoming, is of great weight”.[34] The Sulaiman Declaration contains three instances of alleged customer confusion which are all dated after the Relevant Date.[35] It appears that Sulaiman is of the opinion that a customer merely asking whether the Opponent’s System was the same as the Applicant’s is evidence of confusion whereas those customers may already be users of the Applicant’s system and were merely wondering about the inherent capabilities of the Opponent’s System. In my opinion, this evidence does not assist the Opponent.
[34] Australian Woollen Mills (n 10).
[35] Sulaiman Declaration, [43].
I now consider the issue of deceptive similarity in respect of the Opponent’s Registrations separately.
Onsite Connect Word Mark
In my opinion the Trade Mark is not deceptively similar to the Onsite Connect Word Mark. Visually, aurally and conceptually, considered as a whole, the differences are significant.
The common element in the marks is the word ‘CONNECT’, which has low distinctiveness. I believe the impression or recollection to be carried away and retained by the notional consumer with an imperfect recollection of the Onsite Connect Word Mark will be both ONSITE and CONNECT. The identity of the Onsite Connect Word Mark resides in this combination and not ‘CONNECT’ solus as advanced by the Opponent.
It is highly unlikely that consumers with an imperfect recollection of the Onsite Connect Word Mark would immediately link the Trade Mark to a memory of association with the Onsite Connect Word Mark. The word ONSITE is a key feature of the Onsite Connect Word Mark being the first part of the mark, whereas the word COATES in the Trade Mark is that mark’s key visual and aural feature.
In my opinion, compared as a whole, even allowing for imperfect recollection, I am satisfied that there is no real tangible danger of confusion between the Trade Mark and the Onsite Connect Word Mark.
Connect Onsite logo
The Connect Onsite logo is not simply the word ‘CONNECT’ or the words ‘CONNECT’ and ‘ONSITE’. Rather, it is the two words ‘CONNECT’ and ‘ONSITE’ in different fonts, the word CONNECT being the much larger of the two and additionally the words ‘RENTAL GROUP’ in very smaller lettering and a series of four rectangles. Therefore, the Opponent has the exclusive right to use the particular form of the mark as registered. To ignore the significance of any of the elements of the Connect Onsite logo would be to extend its scope well beyond the monopoly that has been granted to the Opponent by registration of the mark under the Act.[36]
[36] Australian Meat Group Pty Ltd v JBS Australia Pty Limited [2018] FCAFC 207, [78] (Allsop CJ, Besanko and Yates JJ).
Consideration of the question of deceptive similarity proceeds from a premise that is hypothetical rather than actual.[37] But, importantly, the hypothesis is knowledge of the mark as registered, even though in undertaking the analysis of deceptive similarity allowance must be made for the imperfect recollection of that mark.[38]
[37] Optical 88 Ltd v Optical 88 Pty Ltd (No 2) [2010] FCA 1380, [97] (Yates J).
[38] The Agency Group Australia Ltd v H.A.S. Real Estate Pty Ltd [2023] FCAFC 203 [60 - 61] (Yates, Markovic and Kennett JJ).
In the present case, the hypothesis is that potential customers of the Applicant’s Services know, but may have an imperfect recollection of, the particular stylised form of the Connect Onsite logo, not just knowledge of, and an imperfect recollection of, the word ‘CONNECT’.
76. Visually, as a whole, the marks do not look alike. The Connect Onsite logo consists of 4 words, all of which have low distinctiveness, and a multi rectangle device, whereas COATES CONNECT is a word mark with 2 words, where only word is in common with the Connect Onsite logo, namely the word ‘CONNECT’.
77. Aurally, as a whole, the words in the marks do not sound alike. Further, even discounting somewhat the words RENTAL GROUP, which have low prominence in the Connect Onsite logo and may therefore not be remembered by those with an imperfect recollection of the Connect Onsite logo, CONNECT ONSITE compared to COATES CONNECT do not sound alike.
78. In my opinion, compared as a whole, even allowing for imperfect recollection, I am satisfied that there is no real tangible danger of confusion between the Trade Mark and Connect Onsite logo.
79. Given I have not found the Trade Mark to be deceptively similar to either of the Opponent’s Registrations, it is not necessary for me to further discuss the third requirement.
Section 58
The provisions of s 58 provide:
Applicant not owner of trade mark
The registration of a trade mark may be opposed on the ground that the applicant is not the owner of the trade mark.
The SGP relies on the Opponent’s use of the Opponent’s Marks and its ‘CONNECT’ brand continuously in Australia since before the Relevant Date in respect of the same kind of goods and services as the Applicant’s Services. The Opponent claims that Trade Mark is substantially identical to the Opponent’s Marks
The Act provides for registration of ownership and not ownership by registration.[39] Ownership of a trade mark may be established ‘either by reason of authorship and prior use or by reason of authorship, filing the application and an intention to use’.[40]
[39]Accor Australia & New Zealand Hospitality Pty Ltd v Liv Pty Ltd [2017] FCAFC 56, [170] (Greenwood, Besanko and Katzmann JJ). See also PB Foods Ltd v Malanda Dairy Foods Ltd [1999] FCA 1602, [78]-[80] (Carr J).
[40] Pham Global Pty Ltd v Insight Clinical Imaging Pty Ltd [2017] FCAFC 83, [29] (Greenwood, Jagot and Beach JJ) (‘Pham Global’).
The right to registration under the Act depends upon ownership of the trade mark and this requirement must be satisfied at the filing date of the application,[41] which in this case is 20 January 2021.
[41] Ibid [14].
84. The concept of trade mark ownership was discussed in Anchorage Capital Partners Pty Limited v ACPA Pty Ltd wherein the Full Court of the Federal Court observed:
[O]wnership may be acquired by the act of applying for registration of a trade mark even though the applicant has not previously used the mark and the mark has already been used outside Australia by someone else. However, the applicant’s claim to ownership of the mark may be defeated if another person has previously used the mark, or a substantially identical mark, in Australia as a trade mark in relation to the same goods or services, or goods or services of the same kind, as those that are the subject of the application for registration.[42]
[42] [2018] FCAFC 6, [49] (Nicholas, Yates and Beach JJ).
This ground of opposition will be established if it is found the Applicant is not the owner of the Trade Mark in respect of the Applicant’s Services.
The Opponent must establish that the Opponent’s Marks and/or the trade mark CONNECT solus were used before the Relevant Date in relation to the same services, or goods or services of the same kind, as those of the Application and that these previously used trade marks are at least substantially identical to the Trade Mark.
Given I have already decided that the Opponent’s Registrations are not substantially identical to the Trade Mark under the s 44 ground, what is left to decide is firstly whether the Connect logo and/or CONNECT mark have been used before the Relevant Date in relation to the same services, or goods or services of the same kind, as those of the Application and secondly, whether either or both of these marks are at least substantially identical to the Trade Mark.
Sulaiman declares that the Opponent commenced using the Connect logo by March 2021.[43] Given this is after the Relevant Date, I am satisfied that there was no use of the Connect logo before the Relevant Date.
[43] Sulaiman Declaration, [24].
89. The Opponent’s evidence of use of the CONNECT solus mark consist of the following:
·the trade mark CONNECT was chosen for the Opponent’s System by the Opponent’s employees in April 2014.
·the development of the Original Logo and the other related brand concepts by Aegir Brands in April 2014.
·extracts from the Opponent’s Website from March 2019 which state:
oOnsite Rental Group (Onsite) is your national, specialist B2B equipment rental partner. At Onsite …that is why we have invested in leading edge technology to bring you CONNECT™.
oCONNECT™ is the online Total Rental Management (TRM) system of choice and makes hiring with Onsite even easier. The best part is, it is completely complimentary as part of your rental relationship with Onsite….
·an extract from the Opponent’s Website from February 2018 which states “CONNECT: TOTAL RENTAL MANAGEMENT”.
Whilst slight, I am satisfied that the evidence shows use of the trade mark CONNECT in respect of the Opponent’s System. I must now consider whether the trade mark CONNECT is substantially identical to the Trade Mark.
Substantial Identity
The starting point of an analysis as to whether trade marks are substantially identical is the well-known dicta of Windeyer J in Shell,[44] where his Honour stated:
[44] Shell (n 6) [12].
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.
92. Thus, if a total impression of similarity emerges from a comparison between the two marks, the marks are “substantially identical”.
93. In Pham Global Pty Ltd v Insight Clinical Imaging Pty Ltd (‘Pham Global’),[45] the Full Court clarified the way in which a “side by side comparison” of trade marks is to be carried out in order to determine whether the two marks are substantially identical. The Full Court identified that the proper approach for determining whether trade marks are substantially identical is an evaluative process which begins with a comparison of the essential elements of the marks, before considering the differences between them. This is explained in Pham Global at [52]:
[45] Pham Global (n 40).
The required exercise of side-by-side comparison is not carried out in a factual and legislative vacuum. The purpose of the exercise is to decide if two trade marks are substantially identical, where a trade mark is “a sign used, or intended to be used, to distinguish goods or services dealt with or provided in the course of trade by a person from goods or services so dealt with or provided by any other person” (s 17). Given this context, it is unlikely that the essential elements of a mark or its dominant cognitive clues are to be found in mere descriptive elements, which are not apt to perform this distinguishing role in respect of the relevant goods or services. While this does not mean that differences, including descriptive differences, may be ignored, it does mean that the side-by-side comparison is to be carried out cognisant of the essential elements of the mark.
94. Whether there is substantial identity is a question of fact.[46] The comparison here is between CONNECT and COATES CONNECT. Neither the Applicant’s nor the Opponent’s submissions discuss whether the trade mark CONNECT is substantially identical to the Trade Mark. On a side-by-side basis, the common element between the trade marks is clearly the word CONNECT. As previously found above, the word CONNECT has a low level of distinctiveness. There are clear differences between the marks which mean that a total impression of dissimilarity emerges from a comparison of the CONNECT trade mark and the Trade Mark. While the marks share the word CONNECT, the addition of the first word ‘COATES’ operates to render the marks sufficiently different.
[46] Ibid [53].
95. I am therefore not satisfied that the CONNECT trade mark is substantially identical to the Trade Mark. As such, the Opponent has not made out the ground of opposition under s 58.
Section 60
96. The relevant provisions of s 60 are reproduced below:
Trade mark similar to trade mark that has acquired a reputation in Australia
The registration of a trade mark in respect of particular goods or services may be opposed on the ground that:
(a) another trade mark had, before the priority date for the registration of the first‑mentioned trade mark in respect of those goods or services, acquired a reputation in Australia; and
(b) because of the reputation of that other trade mark, the use of the first‑mentioned trade mark would be likely to deceive or cause confusion.
97. To establish this ground, the Opponent must demonstrate the existence of another trade mark which had acquired a reputation in Australia before the Relevant Date. The Opponent must then establish that because of this reputation, use of the Trade Mark would be likely to deceive or cause confusion.
98. The SGP identifies that the Opponent has used the Opponent’s Marks and CONNECT solus, before the Relevant Date, in respect of the goods and services detailed in Annexure C (‘Used Goods and Services’) and as a result the Opponent has gained a significant reputation in the Australian marketplace such that use of the Trade Mark would be likely to cause deception or confusion.
Reputation
99. The meaning of reputation was considered by Kenny J in McCormick & Co Inc v McCormick (‘McCormick’) as referring to ‘the recognition of the [trade mark] by the public generally’.[47]
[47] [2000] FCA 1335, [81] (‘McCormick’).
100. Further, Kenny J stated in McCormick that:
In practice, it is commonplace to infer reputation from a high volume of sales, together with substantial advertising expenditures and other promotions, without any direct evidence of consumer appreciation of the mark, as opposed to the product ... public awareness of and regard for a mark tends to correlate with appreciation of the products with which that mark is associated, as evidenced by sales volume, amongst other things.[48]
[48] Ibid [86].
101. The reputation in the other trade mark must be amongst a ‘significant or substantial’ number of Australian consumers but this is tempered by the nature of the relevant market.[49] Here, given the nature of the parties’ goods and services are the rental of equipment in the construction and building industry, the relevant market is relatively specialised. Meanwhile, the ‘existence and extent of reputation’ must be established as a matter of fact by the Opponent.[50]
[49] See, eg, Renaud Cointreau & Cie v Cordon Bleu International Ltee [2001] FCA 1170, [75] (Moore, Tamberlin and Goldberg JJ).
[50] ConAgra Inc v McCain Foods (Aust) Pty Ltd [1992] FCA 176, [77] (Lockhart J).
102. In Rodney Jane Racing Pty Ltd v Monster Energy Company (‘Rodney’), it was observed that:
The reputation of a trade mark has quantitative and qualitative dimensions. The quantitative dimension concerns the breadth of the public that are likely to be aware of the mark, which can be evidenced by the quantum of sales, advertising and promotion of goods or services to which the mark is applied. The qualitative dimension concerns the image and values projected by the trade mark, which affects the esteem or favour in which the mark is held by the public generally.[51]
[51] [2019] 142 IPR 275, [83] (O’Bryan J) (‘Rodney’).
103. The Opponent submits that the EIS establishes the required reputation in the Opponent’s Marks and CONNECT solus in Australia as at the Relevant Date, in connection with the Used Goods and Services.
104. The Applicant submits that:
· the Opponent has not established that any of its trade marks had acquired a reputation before the priority date of the Application.
· even if a reputation has been made out, the Trade Mark is not likely to cause deception or confusion because the Trade Mark is very different to the Opponent’s Marks and the CONNECT mark.
· on the Opponent’s admission, to gain access to the Opponent’s Goods and Services, prospective customers must already be account holders of the Opponent, with the Opponent’s System being ancillary and a free offering in support of the Opponent’s core rental equipment solutions.[52]
[52] Sulaiman Declaration, [31].
· the evidence is lacking all key markers of reputation such as sales and advertising figures, examples of promotional material and evidence of direct customer appreciation.
105. The Applicant criticises much of the Opponent’s evidence as it is undated or after the Relevant Date. I have already provided comments to that effect when summarising the EIS. The undated evidence and evidence dated after the Relevant Date is of limited value in establishing a reputation within Australia at the Relevant Date.
106. The evidence which supports a claim to use of the Opponent’s Marks and/or its CONNECT mark before the Relevant Date is not only limited, but I consider it insufficient to determine the breadth of the relevant market that are likely to be aware of the Opponent’s Marks and/or its CONNECT mark.
107. As observed in Rodney,[53] the reputation of a trade mark has quantitative and qualitative dimensions. Here, there is no evidence from the Opponent of sales figures attributable to the Opponent’s System, nor relevant evidence of advertising and promotion of the Opponent’s Marks and/or the CONNECT mark. As I have previously stated, while the Opponent provides the number of customers and the value of contracts secured since 2021 claimed to be attributable to the Opponent’s System, there is no supporting evidence. Given that the Opponent’s System is only available to account holders of the Opponent, there are other possible explanations as to why the contracts were secured such as price, quality of product etc. Further these customers may have been secured because of the Opponent’s reputation in the ONSITE trade mark.
[53] [2019] 142 IPR 275, [83].
108. Further, there is no relevant evidence relating to the qualitative dimension. There is little evidence which concerns the image and values projected by the Opponent’s Marks and/or the CONNECT mark, and therefore the esteem or favour in which the Opponent’s Marks and the CONNECT mark are held by the customers in the parties’ field generally.
109. In the end, the evidence lacks the necessary specificity to establish, as a matter of fact, that any of the Opponent’s Marks and/or the CONNECT mark had acquired a reputation in Australia amongst a significant or substantial number of consumers at the Relevant Date.
110. As I have found that none of the Opponent’s Marks and/or the CONNECT mark had acquired a reputation in Australia before the Relevant Date, there is no need for me to consider the second limb of s 60. The ground of opposition under s 60 has not been established.
Section 42(b)
111. Section 42(b) provides that a trade mark must be rejected if its use would be contrary to law.
112. The Opponent asserts for the same reasons as outlined under the s 60 ground, the use of the Trade Mark would be contrary to ss 18 and 29(1)(g) and (h) of the Australian Consumer Law (‘ACL’) which forms Schedule 2 to the Competition and Consumer Act 2010 (Cth). Additionally, the Opponent asserts that use of the Trade Mark would amount to the common law tort of passing off.
113. Section 18 of the ACL concerns conduct or representations that have, or are likely to, mislead or deceive. Sections 29(1)(g) and (h) of the ACL concerns representations that are false or misleading. These are stricter requirements than s 60 which can be established if the use is likely to cause confusion or wonderment.
114. Where an opponent is unsuccessful in establishing its s 60 ground, it will almost invariably be unable to establish the relevant sections of the ACL had been breached in circumstances where the opponent relies on a reputation of the very same trade mark(s). Having been unsuccessful under s 60, as the Opponent did not have the requisite reputation, it follows that on the stricter test of the ACL,[54] I am not satisfied that use of the Trade Mark is likely to mislead or deceive, or amount to a false or misleading impression under ss 18 and 29 of the ACL.
[54] Weili Mu v Guotai Huang [2021] ATMO 113, [35]-[36] (Hearing Officer Smith).
115. As I have found that the ACL has not been contravened, it also follows that use of the Trade Mark does not amount to passing off.[55]
[55] Equity Access Pty Ltd v Westpac Banking Corporation [1989] FCA 506, [40] (Hill J).
116. The ground of opposition under s 42(b) is not established.
Section 62A
117. Section 62A provides:
Application made in bad faith
The registration of a trade mark may be opposed on the ground that the application was made in bad faith
118. The SGP provides that the Applicant was aware of the Opponent’s Marks at the Relevant Date and despite this, filed the Application.
119. For this ground of opposition, I am required to decide what the Applicant knew at the time of filing the Application and then, in the light of that knowledge, whether the act of filing the Application fell short of acceptable commercial behaviour.[56]
[56] See Fry Consulting Pty Ltd v Sports Warehouse Inc (No 2) [2012] FCA 81, [143]-[167] (Dodds-Streeton J).
120. The Opponent submits that the Applicant:
· did not take steps or invest any amount nor engage a third party agency to conceive of an innovative and unique mark for its services.
· as a direct competitor, it should have been aware of the Opponent’s activities and use of CONNECT in relation to the Opponent’s System, either through trade channels or having its IP lawyers conduct proper searches.
· sought to springboard its fledgling venture by adopting the same word as the Opponent.
121. The Applicant submits that it adopted the Trade Mark as it implied a feature of the Applicant’s Services, namely that it would ‘connect’ the Applicant with its customers and therefore the Application was filed honestly. The Applicant also submits that no evidence of bad faith has been adduced.
122. I agree with the Applicant. The Applicant’s evidence provides details of the adoption of the Trade Mark. Given the low distinctiveness of the word CONNECT, the Applicant’s reasons for adopting the mark are reasonable. There is nothing in the Opponent’s evidence that might support an argument that the Applicant filed the Application in bad faith. At any rate, ‘mere knowledge before the relevant date of another person’s trade marks, without more, does not in itself constitute the basis for a finding of bad faith’.[57]
[57] 1872 Holdings VOF v Havana Club Holding SA [2017] ATMO 12, [64] (Hearing Officer Thompson).
123. As such, I am not persuaded that the Applicant applied for the Trade Mark in bad faith. Therefore, the Opponent has not established the ground of opposition under s 62A.
Decision
124. Section 55 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.
125. The Opponent has failed to establish any of the grounds of opposition it nominated in the SGP. Trade mark application number 2148551 may proceed to registration not less than one month from the date of this decision. If the Registrar is served with a notice of appeal before that time, I direct that registration shall not occur until either the appeal is withdrawn or discontinued. Otherwise, the disposition of the Application should be in accordance with the Court’s order or direction.
Costs
126. Both parties sought costs. It is usual for costs to follow the event, and I see no reason to depart from that principle here. I award costs against the Opponent under s 221 in the relevant amounts under Schedule 8 of the Regulations.
Anne Makrigiorgos
Hearing Officer
Oppositions and Hearings
Trade Marks and Designs
12 March 2024
Annexure A
Class
Services
35
Company data information services; Information services relating to business matters; Business consultancy relating to the administration of information technology; Business intelligence services
37
Advisory services relating to the construction of civil engineering structures; Advisory services relating to the construction of mechanical engineering structures; Electrical engineering services (construction); Hire of construction apparatus; Hire of construction equipment; Hire of construction machinery; Maintenance and repair of construction apparatus; Maintenance and repair of construction machines; Mechanical engineering services (construction); Providing information, including online, about building construction, and repair and installation services; Rental of apparatus for use in the construction of buildings; Rental of building construction machinery; Rental of construction apparatus; Rental of construction equipment; Rental of construction machinery; Rental of cranes (construction equipment); Rental of machinery for use in construction; Structural engineering services (construction); Installation of lighting systems; Rental of industrial lighting; Platform rental; Rental of apparatus for use in the repair of buildings; Rental of articulated loaders; Rental of backhoes; Rental of building apparatus; Rental of building machines; Rental of building tools; Rental of carpet cleaning machines; Rental of cleaning apparatus; Rental of cleaning equipment; Rental of cleaning machines; Rental of concrete pumping machines; Rental of concrete-mixing apparatus; Rental of drainage pumps; Rental of earth-moving and excavating machines; Rental of earthmoving machines; Rental of excavating machines; Rental of excavators; Rental of ladders; Rental of lifting apparatus; Rental of machine tools; Rental of machines for cleaning carpets; Rental of machines for cleaning floor coverings; Rental of machines for cleaning furniture; Rental of platforms and scaffolding; Rental of plumbing apparatus; Rental of scaffolding; Rental of tools; Rental of trestles; Rental of vacuum cleaners; Hire of scaffolding; Scaffolding hire; Scaffolding rental; Rental of vehicle maintenance equipment; Cleaning equipment hire; Hire of building apparatus; Hire of building machinery; Hire of building tools; Hire of cleaning apparatus; Hire of concrete mixing apparatus; Hire of earth moving machines; Hire of ladders; Hire of machines for use in civil engineering; Hire of tools; Plant hire; Agricultural equipment repair and maintenance; Farming equipment repair and maintenance; Machinery installation, maintenance and repair; Maintenance and repair of cleaning apparatus; Maintenance and repair of drying apparatus; Maintenance and repair of electrical apparatus; Maintenance, installation and repair of electrical items and equipment; Provision of information in relation to the repair, maintenance and installation of goods; Heating equipment installation and repair; Installation and repair of flood protection equipment; Machinery installation services; Rental of air compressors; Electrical apparatus installation; Repair of tools; Servicing of machine tools; Plant repair; Installation of industrial plant; Maintenance services for industrial plants; Cleaning and servicing of portable toilets; Dismantling of buildings; Installation of electricity generators; Machinery repair; Replacement of batteries; Advisory services relating to the repair of civil engineering structures; none of the aforementioned being motor vehicle maintenance or repair, tyre testing, wheel balancing or tyre balancing services or services provided in relation to tyre testing goods, wheel balancing machines, tyre balance testing machines
39
Rental of containers; Motor vehicle rental; Rental of commercial vehicles; Rental of motor vehicles; Rental of portable storage containers; Rental of retail storage equipment and fittings; Rental of road trailers; Rental of road vehicles; Rental of storage cartons; Rental of storage containers; Rental of storage units; Rental of trailers; Rental of trolleys; Rental of trucks; Vehicle rental; Truck rental; Rental of vehicles; Rental of tankers; Rental of warehouse units
40
Rental of air-conditioning apparatus; Rental of air conditioning apparatus; Rental of cutting equipment; Rental of electricity generators; Rental of generators; Rental of welding equipment; Hire of electrical generators; Custom assembling of materials (for others); Material treatment services; Rental of water treatment equipment
41
Rental of lighting apparatus for theatrical sets or television studios; Rental of stage lighting; Rental of theatre lighting; Rental of equipment for use at sporting events; Training
42
Civil engineering (design); Civil engineering design services; Civil engineering drawing services; Design services relating to civil engineering; Engineering consultancy, excluding software development; Engineering design, excluding software development; Engineering drawing; Engineering feasibility studies; Mechanical engineering services (design); Preparation of engineering drawings; Structural engineering services (design); Technical drawing services; Conducting of feasibility studies; Design of feasibility studies; Rental of measuring apparatus
43
Rental of commercial (business) lighting apparatus; Rental of household lighting apparatus; Rental of domestic lighting; Rental of transportable buildings; Rental of temporary accommodation
44
Agricultural equipment rental; Farming equipment rental; Lawn mower rental; Rental of agricultural machinery; Rental of farming equipment; Rental of portable toilets (rental of sanitation facilities); Rental of sanitary installations; Rental of showers; Rental of washroom facilities; Rental of mobile sanitary facilities; Rental of gardening apparatus
45
Rental of safety apparatus; Rental of safety equipment; Rental of crowd control barriers
Annexure B
Mark
Number
Classes and Goods and Services
ONSITE CONNECT
1860957
Class 9: Computer software; computer application software; Downloadable mobile applications for management, tracking and accounting of rental and hire equipment, rental transactions and equipment repair; Software to monitor the status of delivery and pick up of hired equipment; GPS apparatus and devices; Computer hardware for use with the management, tracking and account of rental and hire equipment
Class 37: Rental, hire, installation and servicing of building apparatus, construction apparatus, construction machinery, construction equipment and tools; rental of lifting apparatus and cranes (construction equipment); Rental, hire, construction, installation and servicing of platforms, including self-propelled elevating platforms, and scaffolding; rental and installation of industrial lighting; rental of air compressors; rental, hire, installation and servicing of mobile and modular buildings and site accommodation; rental, hire, installation and servicing of pumps including drainage pumps and dewatering pumps; rental, hire and installation of fencing and barricades; servicing of portable toilets; Installation of apparatus for sanitation; Installation of sanitary apparatus; Installation of washroom apparatus; Providing information, including online, about building construction, and repair and installation services; installation and servicing of containers including portable storage containers
Class 38: Communication services, namely, electronic messages containing equipment rental verification and information transmission via electronic communications networks; Providing access to databases; Providing on-line communications links which transfer the web site user to other local and global web pages; Providing user access to a global computer network and online sites including sites for the management, tracking and accounting of rental and hire equipment; Providing user access to global positioning signals for navigation purposes; Web portal services (providing user access to a global computer network); Providing access to a web-based on-line portal that provides customer access to information, including, information about tracking, locating and monitoring of their rental and hire equipment, and related information about the use, safety and performance of their equipment via a global computer network
Class 39: Rental of containers including portable storage containers; hire of containers including portable storage containers
Class 40: Rental of air conditioning apparatus; rental of heating apparatus; rental of generators; rental of power generating equipment; rental of water treatment equipment
Class 42: Providing a web site and software as a service (SAAS) services featuring software to manage, track and monitor the status of rental and hire equipment; Online provision of web-based software (non-downloadable) including mobile computer software applications relating to the rental, management, tracking and monitoring of equipment, vehicles and tools
Class 43: Rental of transportable buildings; rental of temporary accommodation; rental of rooms; rental of marquees and rooms for social functions; provision and rental of changing room facilities
Class 44: Rental and hire of sanitation facilities; rental and hire of mobile sanitation facilities; rental and hire of washroom facilities; rental and hire of portable toilets; provision and rental of shower facilities; rental and hire of portable toilets and ablution blocks
1860962
Class 9: Computer software; computer application software; Downloadable mobile applications for management, tracking and accounting of rental and hire equipment, rental transactions and equipment repair; Software to monitor the status of delivery and pick up of hired equipment
Class 37: Rental, hire, installation and servicing of building apparatus, construction apparatus, construction machinery, construction equipment and tools; rental of lifting apparatus and cranes (construction equipment); Rental, hire, construction, installation and servicing of platforms, including self-propelled elevating platforms, and scaffolding; rental and installation of industrial lighting; rental of air compressors; rental, hire, installation and servicing of mobile and modular buildings and site accommodation; rental, hire, installation and servicing of pumps including drainage pumps and dewatering pumps; rental, hire and installation of fencing and barricades; servicing of portable toilets; Installation of apparatus for sanitation; Installation of sanitary apparatus; Installation of washroom apparatus; Providing information, including online, about building construction, and repair and installation services; installation and servicing of containers including portable storage containers
Class 38: Providing access to databases; Providing user access to a global computer network and online sites namely sites for the management, tracking and accounting of rental and hire equipment; Providing user access to global positioning signals for navigation purposes; Web portal services (providing user access to a global computer network); Providing access to a web-based on-line portal that provides customer access to information, including, information about tracking, locating and monitoring of their rental and hire equipment, and related information about the use, safety and performance of their equipment via a global computer network
Class 39: Rental of containers including portable storage containers; hire of containers including portable storage containers
Class 40: Rental of air conditioning apparatus; rental of heating apparatus; rental of generators; rental of power generating equipment; rental of water treatment equipment
Class 42: Providing a web site and software as a service (SAAS) services featuring software to manage, track and monitor the status of rental and hire equipment; Online provision of web-based software (non-downloadable) including mobile computer software applications relating to the rental, management, tracking and monitoring of equipment, vehicles and tools
Class 43: Rental of transportable buildings; rental of temporary accommodation; rental of rooms; rental of marquees and rooms for social functions; provision and rental of changing room facilities
Class 44: Rental and hire of sanitation facilities; rental and hire of mobile sanitation facilities; rental and hire of washroom facilities; rental and hire of portable toilets; provision and rental of shower facilities; rental and hire of portable toilets and ablution blocks
2166915
Class 37: Rental and hire of building apparatus, construction apparatus, construction machinery, construction equipment and tools; rental of lifting apparatus and cranes (construction equipment); Rental and hire of platforms, including self-propelled elevating platforms, and scaffolding; rental of industrial lighting; rental of air compressors; rental and hire of mobile and modular buildings and site accommodation; rental and hire of pumps including drainage pumps and dewatering pumps; rental and hire of fencing and barricades; platform and scaffolding rental; rental of vehicle maintenance equipment; plant hire; Rental of air compressors; Rental of earth-moving and excavating machines; Rental of earthmoving machines; Rental of excavating machines; Rental of excavators; Rental of industrial lighting; rental of traffic management equipment including portable traffic lights; rental of fencing and barricades
Class 39: Rental of containers including portable storage containers; hire of containers including portable storage containers
Class 40: Rental of air conditioning apparatus; rental of heating apparatus; rental of generators; rental of power generating equipment; rental of water treatment equipment; Rental of cutting equipment; Rental of welding equipment
Class 41: Rental of facilities for the production of television programmes; Rental of stage lighting; Rental of theatre lighting; Rental of equipment for use at sporting events
Class 43: Rental of transportable buildings; rental of temporary accommodation; rental of rooms; rental of marquees and rooms for social functions; provision and rental of changing room facilities; rental of pavilions; rental of commercial lighting apparatus
Class 44: Rental and hire of sanitation facilities; rental and hire of mobile sanitation facilities; rental and hire of washroom facilities; rental and hire of portable toilets; provision and rental of shower facilities; rental and hire of portable toilets and ablution blocks
Annexure C
Computer software and computer application software for the management, tracking and accounting of rental and hire equipment, rental transactions and equipment repair; Downloadable mobile applications for management, tracking and accounting of rental and hire equipment, rental transactions and equipment repair; Software to monitor the status of delivery and pick up of hired equipment
Company data information services; information services relating to business matters; Business intelligence services
Rental and hire of building apparatus, construction apparatus, construction machinery, construction equipment and tools; rental of lifting apparatus and cranes (construction equipment); Rental and hire of platforms, including selfpropelled elevating platforms, and scaffolding; rental of industrial lighting; rental of air compressors; rental and hire of mobile and modular buildings and site accommodation; rental and hire of pumps including drainage pumps and dewatering pumps; rental and hire of fencing and barricades; platform and scaffolding rental; rental of vehicle maintenance equipment; plant hire; Rental of air compressors; Rental of earth-moving and excavating machines; Rental of earthmoving machines; Rental of excavating machines; Rental of excavators; Rental of industrial lighting; rental of traffic management equipment including portable traffic lights; rental of fencing and barricades; installation and servicing of building apparatus, construction apparatus, construction machinery, construction equipment and tools; construction, installation and servicing of platforms, including self-propelled elevating platforms, and scaffolding; installation of industrial lighting; installation and servicing of mobile and modular buildings and site accommodation; installation and servicing of pumps including drainage pumps and dewatering pumps; installation of fencing and barricades; servicing of portable toilets; Installation of apparatus for sanitation; Installation of sanitary apparatus; Installation of washroom apparatus; Providing information, including online, about building construction, and repair and installation services; installation and servicing of containers including portable storage containers; Maintenance and repair of construction apparatus; Maintenance and repair of construction machines; Maintenance and repair of electrical apparatus; Maintenance, installation and repair of electrical items and equipment; Provision of information in relation to the repair, maintenance and installation of goods; Heating equipment installation and repair; Installation and repair of flood protection equipment; Machinery installation services; Electrical apparatus installation; Repair of tools; Servicing of machine tools; Plant repair; Installation of industrial plant; Maintenance services for industrial plants; Cleaning and servicing of portable toilets; Dismantling of buildings; Installation of electricity generators; Machinery repair
Providing access to databases; Providing user access to a global computer network and online sites namely sites for the management, tracking and accounting of rental and hire equipment (including computerised inventory); Web portal services (providing user access to a global computer network) for the management, tracking and accounting of rental and hire equipment (including computerised inventory); Providing access to a web-based on-line portal that provides customer access to information, including, information about tracking, locating and monitoring of their rental and hire equipment, and related information about the use, safety and performance of their equipment via a global computer network
Rental of containers including portable storage containers; hire of containers including portable storage containers
Rental of air conditioning apparatus; rental of heating apparatus; rental of generators; rental of power generating equipment; rental of water treatment equipment; Rental of cutting equipment; Rental of welding equipment
Rental of facilities for the production of television programmes; Rental of stage lighting; Rental of theatre lighting; Rental of equipment for use at sporting events
Providing a web site and software as a service (SAAS) services being software to manage, track and monitor the status of rental and hire equipment; Online provision of web-based software (non-downloadable) relating to the rental, management, tracking and monitoring of equipment, vehicles and tools; mobile computer software applications relating to the rental, management, tracking and monitoring of equipment, vehicles and tools
Rental of facilities for the production of television programmes; Rental of stage lighting; Rental of theatre lighting; Rental of equipment for use at sporting events
Rental and hire of sanitation facilities; rental and hire of mobile sanitation facilities; rental and hire of washroom facilities; rental and hire of portable toilets; provision and rental of shower facilities; rental and hire of portable toilets and ablution blocks
[30] Self Care (n 7) [33].
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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Appeal
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