Opposition by Arlec Australia Pty Ltd to extension of protection to international registration designating Australia No. 1964376 (International Registration No. 1430256) – – held by Muller et Cie.

[2021] ATMO 68

TRADEMARKSACT1995

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

Re:Opposition by Arlec Australia Pty Ltd to extension of protection to international registration designating Australia No. 1964376 (International Registration No. 1430256) – – held by Muller et Cie.

DELEGATE:

Bianca Irgang

REPRESENTATION:

Opponent: Garry Fitzgerald of counsel

Holder: Not represented

DECISION:

2021 ATMO 68

Trade Mark Regulations 1995 - Opposition under regs 17A.33: sections 44, 60 and 42(b) pressed– section 60 established–protection not to be

  extended to the IRDA.  

Background

1. Muller et Cie (‘the holder’) has applied for extension of protection of International Registration Designating Australia (‘IRDA’) 1964376 in classes 9, 11 and 37 of the International Classification of Goods and Services. Relevant details of the IRDA are set out below.

controlling electricity; electric power failure devices, electric resistors, electric switches; temperature monitoring devices for household and industrial use; wireless controllers for remote monitoring and controlling of the operating and condition of heating and water heater apparatus; thermostat control apparatus; automatic, electronic and electric control apparatus and devices for heating and water heater apparatus; thermostat controllers; heat-sensitive identification indicators; electric and electronic programming units for heating apparatus and water heaters

Class 11: Apparatus and installations for heating, lighting, steam generating, cooking, refrigerating, drying, ventilation, air conditioning, water supply and sanitary facilities; heat

pumps; apparatus for the recovery, concentration and/or separation of heat and/or cold; boilers, water heaters; pressure regulators for water heaters; radiators, heating panels, convectors; air-conditioning installations and

apparatus; heating cables; drying apparatus and

installations; towel driers; hair driers; hand driers; radiators for heating in the form of panels; heat and steam

accumulators; temperature regulators for heating

radiators; hydraulic network for heating or cooling (panels or boards); apparatus for producing heat or cooling using the magnetocaloric effect

Class 37: Advice and information relating to air conditioning and heating installations; installation, maintenance and repair of apparatus for heating, air-conditioning, steam generation, cooking, refrigerating, drying, ventilation, water supply and sanitary facilities

Colour Claimed: GRAY and RASPBERRY; Parts Colour Claimed: GRAY: Pantone 425C and RASPBERRY: Pantone 7621C.

1. The IRDA was advertised as accepted for possible protection in the Australian Official Journal of Trade Marks on 2 April 2019. Arlec Australia Pty Ltd (‘the opponent’) filed a Notice of Intention to Oppose the extension of protection on 30 May 2019 followed by a statement of grounds and particulars. These two documents, taken together, constitute a notice of opposition (‘the Notice’)1. Thereafter the opponent and holder filed evidence as provided by the Trade Mark Regulations 1995 (‘the Regulations’).

¹ Trade Marks Regulations 1995 (Cth) reg 17A.32.

1. I heard the matter in Canberra on 8 February 2021 as a delegate of the Registrar of Trade Marks. Garry Fitzgerald of counsel instructed by Ponte – Business Lawyers for Business appeared on behalf of the opponent. The holder was not present at the hearing.

Grounds of Opposition

1. The Notice nominated a number of grounds of opposition under the Trade Marks Act 1995(‘the Act’) and those grounds of opposition under sections 42(b), 44, 58 and 60 were pressed. The onus is upon the opponent to establish one or more of its grounds of opposition. The Full Bench in Telstra Corporation Limited v Phone Directories Company Pty Ltd2 affirmed the approach in Pfizer Products Inc. v Karam3 where Gyles J referred to the standard of proof required in these matters in terms of a ‘balance of probabilities’.

Evidence

1. The evidence in this matter consists of the following declarations:

Evidence in Support

·     Declaration of Gunalan Jeganathan (Chief Executive Officer of Arlec) (‘Jeganathan’);

·     Declaration of Dimitrios Menelaou (General Manager Sales at Arlec) (‘Menelaou’);

·     Declaration of Paul Renton (Design Manager at Arlec) (‘Renton’);

·     Declaration of Pradeep Sundaravathanam (Customer Service Supervisor at Arlec) with exhibits PS-1 to PS-10 (‘Sundaravathanam’);

·     Declaration of Richard Minney (Technical Services Manager at Arlec) (‘Minney’);

·     Declaration of Peter Davis (former Chief Operating Officer of Bunnings) (‘Davis’);

·     Declaration of Simon Musgrave (Lecturer of Linguistics at Monash University) (‘Musgrave’);

·     Declaration of Leon Wesley Ponte, Jr. (Founding Principal of Ponte – Business Lawyers for Business) (‘Ponte’);

·     Declaration of Michelle Garner with exhibits MG-1 to MG-16 (Strategy and Business Development Manager at Arlec) (‘Garner’);

² [2015] FCAFC 156, [133]

³ [2006] FCA 1663, [26]

·     Declaration of Jayden Jonathon Rossis (Associate Lawyer at Ponte – Business Lawyers for Business) with exhibits JJR-1 to JJR-8 (‘Rossis 1’);

·     Declaration of Victoria Aziz Agdam (Paralegal at Ponte – Business Lawyers for Business) with exhibit VA-1 (‘Agdam’); and

·     Declaration of Brett Lewis (Principal of TM Logic Pty. Ltd.) with exhibits BL-1 to BL-6 (‘Lewis 1’)

Evidence in Answer

·     Declaration of Russell John Waters (of Phillips Ormonde Fitzpatrick Patent & Trade Mark Attorneys) with Exhibits RJW-1 to RJW-4 dated 5 February 2020 (‘Waters’)

Evidence in Reply

·     Declaration of Jayden Jonathon Rossis with exhibits JJR-1 to JJR-5 dated 7 April 2020 (‘Rossis 2’)

Further Evidence

·     Declaration of Brett Lewis with exhibits BL-1 to BL-3 dated 27 May 2020 (‘Lewis 2’)

Discussion

Section 60 - Reputation in Australia

1. Section 60 of the Act provides:

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

   The registration of a trade mark in respect of particular goods or services may be opposed on the ground that:

   (a)another trade mark had, before the priority date for the registration of the first-mentioned trade mark in respect of those goods or services, acquired a reputation in Australia; and

   (b)because of the reputation of that other trade mark, the use of the first-mentioned trade mark would be likely to deceive or cause confusion.

2. To establish the ground of opposition under section 60 the opponent is relying predominantly on its use of and reputation in the trade mark below:

ARLEC

(‘ARLEC trade marks’)

1. The opponent has obtained registration for its plain text word ARLEC registered in classes 9, 11, 35 and 37, one of which has a priority date of 5 February 1976. According to Jeganathan Garner and Rossis 1, the opponent’s products under the ARLEC trade marks relevantly include heating, cooling, lighting, cooking, drying and ventilation apparatus and accessories, such as cooling products, exhaust fans, free standing heaters, heated towel rails, fireplace heaters, bathroom heaters and panel heaters, as well as electrical switches and devices for regulating electricity such as extension leads, power boards, plug-in timers, power supplies and transformers and wiring accessories.

2. The opponent has also been using a variation on its ARLEC trade marks since 20144 which is as follows:

(‘ARLEC ES trade mark’)

1. Garner, Sundaravathanam, Jeganathan, Rossis 1 and Agdam state that the opponent also offers ancillary installation, maintenance and repair services and advice and information under the ARLEC trade marks and the ARLEC ES trade mark.

2. Unlike section 44 of the Act, section 60 does not require that the goods upon which the opponent uses its trade mark be of a specified standard of similarity with the goods of interest to the holder, nor is there a requirement that the trade marks be substantially identical or deceptively similar. However, I am satisfied that the goods and services of the opponent are the same or similar to the goods and services of interest to the holder. Although I acknowledge this is not necessary for the opponent to be successful in its section 60 ground of opposition.

⁴ Minney at [5] and [7].

1. It is now for me to determine whether the opponent has established that before 7 February 2018 the opponent’s ARLEC trade marks were recognised by the relevant market, or at least by a significant number of persons in Australia and whether because of that, the use by the holder of its IRDA would be likely to cause confusion.

2. The principles relevant to the assessment of the likelihood of confusion, etc, were set out by French J in Registrar of Trade Marks v Woolworths: 5

   (ii)   A trade mark is likely to cause confusion if the result of its use will be that a number of persons are caused to wonder whether it might not be the case that the two products or closely related products and services come from the same source. It is enough if the ordinary person entertains a reasonable doubt.

It may be interpolated that this is another way of expressing the proposition that the trade mark is likely to cause confusion if there is a real likelihood that some people will wonder or be left in doubt about whether the two sets of products or the products and services in question come from the same source.

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

(iv)The rights of the parties are to be determined as at the date of the application.

(v)    The question of deceptive similarity must be considered in respect of all goods or services coming within the specification in the application and in respect of which registration is desired, not only in respect of those goods or services on which it is proposed to immediately use the mark. The question is not limited to whether a particular use will give rise to deception or confusion. It must be based upon what the applicant can do if registration is obtained.

In respect of the last proposition, Mason J observed in Berlei Hestia Industries Ltd v The Bali Company Inc:6

“...the question whether there is a likelihood of confusion is to be answered, not by reference to the manner in which the respondent has used its mark in the past, but by reference to the use to which it can properly put the mark. The issue is whether that use would give rise to a real danger of confusion.”

1. Reputation is to be assessed according to the test set out in McCormick & Company Inc v McCormick7 by Kenny J:

⁵ [1999] FCA 1020 [50]

⁶ [1973] HCA 43; (1973) 129 CLR 353, 362

⁷ [2000] FCA 1335 [81]

What is intended by the word “reputation” in s 60? The word is defined in The Macquarie Dictionary as follows:

reputation 1. the estimation in which a person or thing is held, esp. by the

community or the public generally; repute ... 2. favourable repute; good name ... 3. A favourable and publicly recognised name or standing for merit, achievement, etc. ... 4. The estimation or name of being, having done, etc, something specified.

Cf. The Oxford English Dictionary. In s 60, the word is, I think, apt to refer to “the recognition of the McCormick & Co marks by the public generally”.

Does the evidence establish that in Australia before 9 March 1992 the McCormick & Co marks were recognised by the public generally and, because of that, the use by Mary McCormick of her marks would be likely to cause the public confusion, as for example, by the public’s mistakenly attributing a business connection between the two or attributing her product to the company?

1. The Jeganathan declaration avers that since 1999 the opponent has sold heating products under the ARLEC trade marks on a continuous basis. The product range includes free standing heaters, free standing panel heaters, mounted panel heaters, heated towel rails, fireplace heaters and bathroom heaters. He also states that the opponent’s products have a presence in most Australian homes and workplaces. This is supported by the evidence which demonstrates that in each of the years since at least 2015, in excess of 90,000 heating products were sold by the opponent in Australia under the ARLEC trade marks annually, with in excess of 290,000 heating products having been sold by the opponent in Australia under the ARLEC trade marks for the financial year ending 30 June 2019.

1. In Australia, Jeganathan states that the opponent’s retail customers include well-known chains such as;

·     Bunnings, which has a network of over 300 hardware stores and has sold products under the ARLEC trade marks since the mid-1990s;

·     Mitre 10, which has around 350 retail stores and has also been selling the opponent’s products bearing the ARLEC trade marks since at least the mid-1990s;

·     Blackwoods, which is Australia’s largest chain of industrial and safety products and has over 60 retail stores; and,

·     Kmart which has over 200 stores and has been selling products under the ARLEC trade marks for over 20 years8.

1. In addition to these suppliers, Menelaou avers that the opponent also supplies a number of other national and interstate retailers and more than 1,500 independent retailers throughout Australia. Many of these business relationships have been in place for decades.

1. The opponent has claimed confidentiality in a number of its exhibits which I will discuss in general terms only so far as is necessary in order to provide reasoning for my decision. Therefore, I turn to the revenue generated through sales of the opponent goods and services under its ARLEC trade marks for a number of years before the priority date of the IRDA which is very considerable9. The same can be said for the substantial amounts the opponent has invested in advertising and marketing its goods and services in Australia10.

2. Given all of the above, I am satisfied that the ARLEC trade marks had acquired a reputation in Australia for their goods and services before the priority date of the IRDA. It now needs to be determined if, given this reputation in Australia, use of the IRDA by the holder would be likely to deceive or cause confusion.

1. Overall I consider that, given the reputation acquired by the ARLEC trade marks, a significant number of consumers would at the very least experience a reasonable doubt11 as to the existence of some sort of connection between the ARLEC trade marks and the IRDA if they were used on the goods and services listed in the opposed application. In considering the similarities between the ARLEC trade marks and the IRDA it becomes clear that the respective trade marks share some striking similarities.

⁸ Menelaou at [5].

⁹ Jeganathan at [11].
¹⁰ Menelaou at [6].

¹¹ Southern Cross Refrigerating Co v Toowoomba Foundry Pty Ltd (1954) 91 CLR 592 at 594-5

Opponent’s trade marks	Trade Mark
ARLEC

1. Each trade mark begins with the letter ‘A’, contains a letter ‘R’ towards the middle of the trade mark and contains the suffix ‘-LEC’. The Trade Mark does contain what could be perceived as the letter ‘I’ and the letter ‘E’. The letter ‘E’ may also be perceived by a potential customer as a three line device within the center of the trade mark resembling a vent or air flow lines given the goods and services the Trade Mark would be applied to. However, regardless of these additional letters or letter and device, the trade marks are likely to be pronounced and viewed very similarly with an ‘AR-‘ or ‘AIR-‘ prefix followed by a strong ‘- LEC’ suffix.

1. The holder has asserted that it has not heard of any marketplace conflict or confusion with the Opponent and the mark ARLEC in Australia, New Zealand, or anywhere else in the world.

1. The holder submitted via the Waters declaration:

The ARLEC and AIRELEC marks have coexisted for many years in various jurisdictions without any such confusion or interference with each other.

1. Waters states that the Trade Mark has been used in France for more than 60 years by the Holder or AIRELEC INDUSTRIES. AIRELEC INDUSTRIES was established in Paris in 1958. By 1997, AIRELEC INDUSTRIES had enlarged its production and become a market leader in France. According to Waters, the holder is one of the biggest manufacturers of electrical heating systems worldwide, acquired AIRELEC INDUSTRIES in the same year. All of the AIRELEC products are produced in France. They are then exported to approximately 50 countries worldwide. However, I note that despite claims to have exported

their goods to Australia and NZ, the evidence is severely limited and insufficient to establish any sales of the goods and services within Australia.

1. Whilst there are differences between the Trade Mark and the ARLEC trade marks, it is the similarities, which are most significant, whether visual, audible, distinctive or conceptual12. I am satisfied that there are striking similarities between the trade marks which add to the potential for confusion. This is particularly so when the opponent has demonstrated extensive use on the same and similar goods and services over a long period of time. I am satisfied it is highly likely that a significant number of consumers would at the very least experience a reasonable doubt13 as to the existence of some sort of connection between the ARLEC trade marks and the Trade Mark, particularly when these trade marks are applied to the same or similar goods and services.

1. I am satisfied that the opponent has established the section 60 ground of opposition in relation to all the goods and services of the IRDA. Having found in favour of the opponent in terms of section 60 there is no need for me to discuss the other grounds as set out in the Notice, although this ground or any others in the Act may also be relied on in the event of an appeal from this decision.

Decision

1. Regulation 17A.34 provides:

17A.34     Decision on opposition

(1)   Unless the opposition proceedings are discontinued or dismissed, the Registrar must decide:

(a)to refuse protection in respect of all of the goods or services listed in the IRDA; or

(b)to extend protection in respect of some or all of the goods or services listed in the IRDA (with or without conditions or limitations);

having regard to the extent (if any) to which any ground on which the IRDA was opposed has been established.

(2)   The Registrar must tell the International Bureau of his or her decision.

1. 
   I find that the opponent has met the onus upon it, in terms of the ground of opposition under section 60. Accordingly, I refuse to extend protection to IRDA 1964367.

   ¹² Austin, Nichols & Co Inc. v Stichting Lodestar (2005) 11 TLCR 265 at [13].

   ¹³ Southern Cross Refrigerating Co v Toowoomba Foundry Pty Ltd (1954) 91 CLR 592 at 594-5

Costs

1. 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 applicant under section 221 of the Act in terms of Schedule 8 of the Regulations given that the opponent was successful in establishing a section 60 ground of opposition.

Bianca Irgang Hearing Officer

Oppositions and Hearings 16 July 2021