Opposition by Boss Fire and Safety Pty Ltd to registration of trade mark application 1812214 (9) – FYREBOX & Device - filed in the name of Fire Containment Pty Ltd. - [2019] ATMO 107

TRADE MARKS ACT 1995  DECISION OF A DELEGATE OF THE REGISTRAR OF TRADE MARKS WITH REASONS
Re:Opposition by Boss Fire and Safety Pty Ltd to registration of trade mark application 1812214 (9) – FYREBOX & Device - filed in the name of Fire Containment Pty Ltd.

Delegate: Debrett Lyons

Representation: Opponent: Karla Holzberger of IP Wealth Pty Ltd
Applicant: Christopher Wood of counsel instructed by SAI Lawyers

Decision: 2019 ATMO 107
Trade Marks Act 1995 - Opposition to registration under s 52: ss 42, 44, 58, 59, 60, 62 and 62A considered – s 44 established and opposition successful– trade mark to be refused registration.
Background

This matter concerns an opposition by Boss Fire and Safety Pty Ltd (“the Opponent”), under s 52 of the Trade Marks Act 1995 (“the Act”), to registration of the trade mark shown below in the name of Fire Containment Pty Ltd (“the Applicant”).
(“the Trade Mark”)
The application for the Trade Mark was filed on 29 November 2016, was examined, accepted and advertised as accepted for possible registration on 20 April 2017 in the Australian Official Journal of Trade Marks in respected of the following class 9 goods:
Fire control apparatus and equipment; apparatus and equipment for suppressing fires; fire extinguishing apparatus, equipment and installations; fire protection apparatus, equipment and installations
(“the Designated Goods”)
On 14 June 2017, the Opponent filed a Notice of Intention to Oppose registration of the Trade Mark. On 25 July 2017, a Statement of Grounds and Particulars (“SGP”) was filed which nominated grounds of opposition under ss 42, 44, 58, 59, 60, 62 and 62A of the Act.
On 15 November 2017 the Applicant filed a Notice of Intention to Defend the application.
After evidence was filed by both sides, the parties asked to be heard. A hearing was convened in Canberra on 4 March 2019 where I was appointed as the delegate of the Registrar of Trade Marks. Karla Holzberger, assisted by Chelsea Peters, both of IP Wealth appeared for the Opponent. Christopher Wood of counsel appeared for the Applicant, instructed by Phillip Sacks of SAI Lawyers.
The parties have already met in the now reported case of Boss Fire and Safety PL v Fire Containment PL [2019] ATMO 43 (29 March 2019) decided by this Office (“the Decided Opposition”).
The Decided Opposition
The Decided Opposition concerned application no. 1736748 made on 24 November 2015 for the plain word mark, FIREBOX. The goods at issue were
Class 6:
Building products of metal for preventing the spread of fire
Class 17:
Products and materials for resisting fire and for preventing the spread of fire, for use in the building and construction industry; fire and smoke stopping products used to protect openings for services including collars, wraps, clamps, boxes, dampers and cable transits
Class 19:
Intumescent and non-metal materials and products for resisting fire and preventing the spread of fire, for use in the building and construction industry
In the Decided Opposition the Opponent relied on grounds under sections 41, 42, 58, 59, 60, 62 and 62A of the Act. At the hearing the Opponent maintained all those grounds of opposition but relied primarily on s 58, s 62A and s 42(b). The Hearing Officer did not find that the Opponent had established any ground of opposition.
The Evidence
The Opponent relies on the declarations of Mr Mark Prior, the Opponent’s director, (“the Prior Declaration”) and Mr Daniel Bryant, both made on 19 February 2018. The Applicant relies on the (confidential) declarations of Mr John Rakic, the Applicant’s owner and managing director, (“the Rakic Declaration”) and Mr Christopher Gordon Dennis Todd, the Applicant’s National Technical Manager, (“the Todd Declaration”), both made on 24 May 2018. Those declarations restate much of the factual background laid out in the Decided Opposition and incorporate by reference the declarants earlier sworn statements.
Grounds of Opposition
The Opponent bears the onus of establishing at least one of the grounds of opposition on the balance of probabilities. As noted, the grounds in the SGP rely on ss 42, 44, 58, 59, 60, 62 and 62A of the Act. The time at which a ground of opposition must be established is the filing date, or for the purposes of ss 44 and 60 the “priority date”, of the application, that date, 29 November 2016, coinciding here.
Consideration and Reasons
As in the Earlier Opposition, the focal points of contention at the hearing centered on questions of ownership under s 58 and bad faith under s 62A, but the ground which most concerns me in these proceedings is that premised on s 44, a ground not relevant to the Decided Opposition.
The Opponent is the applicant for registration of pending trade mark no. 1737702 (“the Opponent’s Application”) for the word mark FyreBox filed on 26 November 2015 in classes 17 and 19 for the following goods:
Class 17: Fire collars and wraps containing fire resistant sealing, packing or insulating materials, for use with pipes; Fire resistant expansion joints; Fire resistant materials; Fire retardant materials for building purposes; Fire-resistant sealant compounds for joints; Fireproof seals; Materials for use in fire protection; Sleeves for fire proofing plastic pipes
Class 19: Coatings being intumescent building materials; Intumescent building materials; Intumescent building materials for preventing the spread of fire; Intumescent construction materials
(“the Opponent’s Goods”)
At the time of the hearing, examination of the Opponent’s Application had been deferred pending the outcome of the Decided Opposition for the reason that the trade mark application involved in that matter, no. 1736748 for FIREBOX (word), was an impediment to registration of the Opponent’s Application by reason of s 44 of the Act.
At the time of writing, the Opponent’s Application continues in a state of deferment. Although the Decided Opposition was unsuccessful and the 29 March 2019 decision was to register application no. 1736748 (with the potential consequence that this Office would have by now refused the Opponent’s Application), the Opponent has appealed the Office decision to the Federal Court and those proceedings are in motion.
Previous direction to the Registrar from the Federal Court has been to require the Registrar to continue with the administration of the Act notwithstanding the existence of related court proceedings having a potential impact on other matters and for that reason I have found it proper to determine the s 44 ground of opposition in these proceedings in spite of the possible scenario in which the Opponent’s Application ultimately fails and might no longer pose a basis for the Opponent’s s 44 case in this action.
I have taken note of Applicant’s submission regarding the possibility of conflicting findings if this matter is decided prior to the final determination of the fate of application no. 1736748 but have given my reason for proceeding now.
Section 44
Relevant provisions of the Act with respect to the s 44 ground are reproduced below:
Section 44 - Identical etc. trade marks
1. (1) Subject to subsections (3) and (4), an application for the registration of a trade mark (applicant's trade mark) in respect of goods (applicant's goods) must be rejected if:
i. (i) a trade mark registered by another person in respect of similar goods or closely related services; or
ii. (ii) a trade mark whose registration in respect of similar goods or closely related services is being sought by another person; and
Note 1: For deceptively similar see section 10.
Note 2: For similar goods see subsection 14(1).
Note 3: For priority date see section 12.

In its written submissions the Applicant stated that since the Opponent’s Application had not yet been accepted, it did not stand as an impediment to registration of the Trade Mark. That is incorrect since s 44(1)(a)(ii) contemplates an earlier pending right. That earlier pending right, application no. 1737702, carries a priority date before that of the Trade Mark and in terms of the case law I find that the trade marks, compared side by side and as shown below, are substantially identical.
FyreBox

What remain to be decided is whether or not the Designated Goods and the Opponent’s Goods are “similar goods”, an expression defined by s 14(1) of the Act to mean goods which are the same or of the same description as each other.
The word “intumescent”, used to qualify class 19 of the Opponent’s Goods, refers to a coating or sealant which expands when heated, protecting the material underneath or sealing a gap in the event of a fire. The Opponent pointed to the fact that the Opponent’s Goods include various broad expressions such as “fire resistant materials” (17), “fire retardant materials for building purposes” (17), and “intumescent building materials” (19). More particularly, it noted that the Opponent’s Goods cover “materials for use in fire protection” and the Designated Goods include the term “fire protection apparatus, equipment and installations”. It was said that the apparatus, equipment and installations in Class 9 of the Designated Goods directly overlaps with the fire protection materials in Class 17 of the Opponent’s Goods.
The parties offered declaratory statements which seem at odds with their interests, at least for the purposes of this s 44 analysis. The Prior Declaration describes the Opponent as a supplier of passive fire stopping measurers. It became plain to me that the word “passive” had been deliberately chosen for there is discussion in the evidence as to the distinction which might be drawn between active and passive fire protection systems. The Todd Declaration contains the following passage at [102-109] (suitably redacted):
ACTIVE VS PASSIVE FIRE PROTECTION
The fire protection industry can be divided between “active” and “passive” fire protection systems.
Active fire protection can be described as fire protection measure that actively operate, for instance, smoke detectors will trigger an alarm and call the fire brigade, sprinklers will release water when triggered. Typical active fire protection measures include smoke and heat detectors, sprinklers, extinguishers, hydrants and hose reels.
Passive fire protection may be described as measures which do not “operate” or “trip”, but rather they remain inert in a building during its lifetime. Passive fire protection measures are usually part of the building fabric and resist the spread of fire. The effectiveness of passive fire protection products is assessed by their ability to prevent the spread of fire measured in minutes, against variable flame and heat levels.
The Fire Protection Association Australia has a Passive Fire Protection Technical Advisory Committee, for which I am the Vice Chairman, and which has interests in the applications of passive fire protection products.
The active fire protection industry is a large and mature market, having been heavily regulated and visible in Australia for over a hundred years. The passive fire protection market is significantly younger and smaller, with building code requirements only recognising the requirements for passive fire protection in around the last twenty years.

The Todd Declaration, on the other hand, states that “any difference that can be drawn between “active” and “passive” fire protection is not relevant to the present case. Class 9 goods are not limited to fire protection systems that might be classified as “active”, and the trade mark class does not make this distinction.”
At the hearing it was simplistically put to me that class 9 might be regarded as embracing “active” fire stopping measurers in the nature of heat and smoke detectors, sprinklers and extinguishers whereas classes 17 and 19 related to “passive” fire stopping measurers in the nature of building materials that reduce the spread of fire.
The Opponent produced a comparison table showing how the terms of the Designated Goods and the Opponent’s Goods aligned but for the most part this highlights only where the word fire/s is used by both. I do not think that is the correct approach to the issue before me. Nevertheless, a question remains in my mind as to whether the specifications, as worded, overlap and so include the same goods. Whatever may be the answer to that question, there is certainly a live issue as to whether they are goods of the same description and I remind myself that:
[t]he meaning of this expression was examined in J Lyons and Coy. Ld.'s Application to rectify the Register in respect of Trade Mark No. 418, 577("Hostess") (1959) RPC 120, a decision of the Court of Appeal. After referring to a number of authorities, Lord Evershed MR said (at 128):
"To all these cases the oft-quoted proposition that each was  decided on its own particular facts is, to my mind,  peculiarly applicable. In all cases of this kind regard  will be had to such matters as the nature and composition  of the goods, to their respective uses and functions, and  to the trade channels through which respectively they are  marketed or sold; and in different cases (as Mr. Levy  observed) one (but not always the same one) of these  characteristics may have greater significance or emphasis  than the others. The matter falls to be judged, as  Lindley, LJ, observed in the case already quoted  (Australian Wine (1899) 6 RPC 311), 'in a business sense';  and this is to my mind made clear by considering the  legislative background against which the problem has to be  judged. By the Trade Marks legislation Parliament has  provided that a registered proprietor of a mark, to be used  by him in the course of his trade, has a monopoly right to  that mark as an indication of the trade source or origin of  the goods, and the restriction contemplated by Sec. 26 is  an incident of the general legislative purpose. The  question whether goods are or not goods of the same  description must therefore (I think) be one to be answered  in the context of that purpose; and having regard to that  context, the cases cited, and particularly McDowell's case  ((1926) 43 RPC 334 (C.A.), (1927) 44 RPC 342 (H.L.)) and  the Australian Wine case, lend some support to the view  that the phrase 'goods of the same description' ought not  to be given too restrictive a construction - not, at all  events, so as to be limited to goods substantially  analogous in kind, or commonly used as mere substitutes or  alternatives the one for the other."

A quite similar enumeration of relevant considerations is to be found in Southern Cross Refrigerating Company v. Toowoomba Foundry Proprietary Limited (1954) 91 CLR 592 at 606, and see Lever Brothers, Port Sunlight, Ld. v. Sunniwite Products, Ld. (1949) 66 RPC 84 at 99.
In my opinion, the application of a principle so broadly stated requires some concentration upon the object which s. 23(2) exists to serve. That object seems plainly to be the avoidance of confusion and deception in the market place, which would be likely to arise should a mark become available for use by two or more different companies, which are unrelated, upon goods of the same description. From that point of view, the expression "goods of the same description" is generally to be understood in such a sense that, if two different items are held not to fall within the expression, their sale under the same mark by different companies is not likely to lead to confusion or deception. That approach would seem to me to accord with the common sense business view recommended by Lord Evershed.

There are a number of factors which influence me here. One is recognition of whether those engaged in the manufacture and distribution of the goods are considered as belonging to the same trade. Others hinge on the observations by the High Court in Southern Cross Refrigerating Co v Toowoomba Foundry Pty Ltd (cited above) at 606-607:
The fact that examination of the nature of the applicant’s goods may, by itself, induce an observer to conclude that they are different in character from those of an opponent, and designed to serve different purposes, is by no means conclusive. Nor is the fact that the applicant’s goods are not specified by the regulations as being within the same class of goods: see In re The Australian Wine Importers Ltd (1889) 41 Ch D 278, at p 291 and Reckitt & Colman (Australia) Ltd v Boden (1945) 70 CLR 84, at p 90 per Latham CJ.

Both parties operate in, what has been described by both sides as, the fire protection industry. Both describe their goods as fire protection measures. The Prior Declaration states that the active fire protection industry is a large and mature market and the passive fire protection market is significantly younger and smaller, but there is no evidence that the trade channels through which the Opponent’s Goods and the Designated Goods are offered, bought, and sold are not the same or similar. The Prior Declaration states that only a very few businesses sell both active and passive fire protection measures but even when I give that unsubstantiated statement the weight it deserves, it tells me nothing of how consumers would perceive the market for these goods. In that regard it is not without significance that both the industry and the compared goods share generic descriptors. Furthermore, given the ambit nature of some of the expressions used in both the Opponent’s Goods and the Designated Goods there is still doubt in my mind as to whether there is not in fact direct overlap. In the result, I find in this case and these circumstances that the compared goods are at least of the same description as each other.
It follows from that finding that the Opponent has established its s 44 ground of opposition. I have considered the arguments advanced by the Applicant based on ss 44(3) and (4) of the Act but do not find them well developed or persuasive.
Decision
Section 55 of the Act relevantly provides:
Decision
(1) Unless subsection (3) applies to the proceedings, the Registrar must, at the end, decide:
(a) to refuse to register the trade mark; or
(b) to register the trade mark (with or without conditions or limitations) in respect of the goods and/or services then specified in the application;

having regard to the extent (if any) to which any ground on which the application was opposed has been established.
Note: For limitations see section 6.

The Opponent has established a ground of opposition nominated in the SGP and so I refuse to register the Trade Mark.
Costs
Both parties sought costs. I see no reason to depart from the general rule that costs follow the event. As the Opponent has established a ground of opposition, I award costs against the Applicant as per Schedule 8 of the Trade Mark Regulations 1995.
Debrett Lyons
Hearing Officer
Oppositions and Hearings
12 July 2019

Delegate:	Debrett Lyons
Representation:	Opponent: Karla Holzberger of IP Wealth Pty Ltd Applicant: Christopher Wood of counsel instructed by SAI Lawyers
Decision:	2019 ATMO 107 *Trade Marks Act 1995 -* Opposition to registration under s 52: ss 42, 44, 58, 59, 60, 62 and 62A considered – s 44 established and opposition successful– trade mark to be refused registration.