Opposition by CUBIC-Modulsystem A/S to registration of trade mark application number 2122273 (class 9) - CUBO (word) - in the name of Voltex Electrical Accessories Pty Ltd

[2024] ATMO 114

TRADE MARKS ACT 1995

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

Re:Opposition by CUBIC-Modulsystem A/S to registration of trade mark application number 2122273 (class 9) - CUBO (word) - in the name of Voltex Electrical Accessories Pty Ltd

Delegate:

Benjamin Goldsworthy

Representation:

Opponent: Spruson & Ferguson

Applicant: Collison & Co

Decision:

2024 ATMO 114

Trade Marks Act 1995 (Cth) – opposition under section 52 – grounds under ss 42, 60 and 62A and reg 4.15A of the Trade Marks Regulations 1995 (Cth) pursued – none established.

Background

1. On 1 October 2020 (‘Relevant Date’) an application for a trade mark was filed under the Trade Marks Act 1995 (Cth)[1] in the name of Voltex Electrical Accessories Pty Ltd (‘Applicant’), details of which I extract below:

   Trade mark number: 2122273

   Trade mark: CUBO (‘Trade Mark’)

   Goods: Class 9: Electrical switchgear; Switchboards; Apparatus and instruments for controlling electricity; Apparatus and instruments for regulating electricity; Apparatus and instruments for switching electricity; Apparatus for accumulating electricity

   [1] Unless specified otherwise, a reference in these reasons to a section is a reference to such in the Trade Marks Act 1995 (Cth) and a reference to a regulation is a reference to such in the Trade Marks Regulations 1995 (Cth).

2. The Trade Mark was examined and acceptance was advertised on 2 March 2021. On 28 April 2021 CUBIC-Modulsystem A/S (‘Opponent’) filed its Notice of Intention to Oppose. The Opponent filed its Statement of Grounds and Particulars (‘SGP’) on 26 May 2021. The Applicant filed its Notice of Intention to Defend on 28 July 2021.

3. The Opponent filed its Evidence in Support (‘EIS’) on 20 October 2021 which consists of a declaration of Jacob Møller Knudsen, CEO and managing director of the Opponent, dated 15 October 2021 (‘Knudsen’), with Annexures A to P.

4. On 25 January 2022, parties requested a cooling off period which was granted. On 29 July 2022, this office notified the parties that the cooling-off period had expired on 25 July 2022.

5. On 24 October 2022, the Applicant filed its Evidence in Answer (‘EIA’), consisting of a declaration of Stephen Lea, Product Developer of the Applicant, dated 25 January 2022, with Exhibits SL-1 to SL-4 (‘Lea’). The Opponent filed no evidence in reply.

6. On 8 November 2022, this office notified the parties that the goods in the application for the Trade Mark had been amended to the following as a result of a request for amendment:[2]

   Class 9: Enclosures for the mounting of standard verified load (electrical switchgear) – voltage switch gear and protective devices (‘Applicant’s Goods’)

   [2] The Applicant had made a request for an amendment to the goods of the trade mark application on 7 October 2022.

7. The Opponent requested to be heard by written submissions only on 30 January 2023. On 1 February 2023, the Applicant also requested to be heard by written submissions only.

8. The Opponent filed its written submissions on 18 January 2024 prepared by Fabiola Dos Santos and Daniel Wilson from Spruson & Ferguson. The Applicant filed its written submissions on 25 January 2024 prepared by Anthony Norris from Collison & Co.

9. I am to decide this matter as a delegate of the Registrar of Trade Marks.

Onus and grounds

1. Opponent asserts grounds of opposition under ss 42, 60, 62A and reg 4.15A. The Opponent has the onus to prove at least one ground of opposition[3] and the standard of proof is that of the balance of probabilities.[4] The Opponent no longer presses a ground of opposition under s 58 and I consider it abandoned.[5]

Evidence

[3] Food Channel Network Pty Ltd v Television Food Network GP [2010] FCAFC 58, [32] (Keane CJ, Stone and Jagot JJ).

[4] Telstra Corporation Ltd v Phone Directories Co Pty Ltd [2015] FCAFC 156, [133] (Besanko, Jagot and Edelman JJ).

[5] Opponent’s Submissions, [10].

EIS

1. The Opponent is an electromechanics company founded in 1973 that supplies goods, including electrical switchboard and enclosing products. The products it offers includes modular systems switch boards, standard and custom enclosures, distribution panels, busbars and electrical components and switches. The EIS shows use of the plain word ‘CUBIC’ in relation to electrical goods.

2. The Opponent is the owner of an international registration which is protected in Australia, which has the following details:

   Trade mark: CUBIC (‘Opponent’s Trade Mark’)

   Trade Mark Number: 1008676

   International registration number: 713657

   Priority date: 28 May 2004

   Goods and services: the specification is reproduced at Schedule 1 to these written reasons (‘Opponent’s Goods’ and ‘Opponent’s Services’)

3. The evidence shows laboratory test reports for certain goods of the Opponent for Australia between 2003 and 2006,[6] which mentions the Opponent’s Trade Mark in combination with other elements, such as ‘Cubic panel S2000’, all in relation to electrical goods such as switchboard assemblies. The goods of the Opponent have at times been sold through its subsidiary Cubic Australia Pty Ltd. This relationship is reflected in the Memorandum of Understanding (‘Memorandum’) at Annexure E to Knudsen, dated 6 December 2002. Another business, NHP Electrical Engineering Products Pty Ltd (‘NHP Electrical’), has been the exclusive distributor of the Opponent’s goods in Australia since 2017 and is also party to the Memorandum. The copy of the Memorandum in evidence is signed by representatives of Cubic Australia Pty Ltd and NHP Electrical (but not by the Opponent) in 2002.

   [6] Knudsen, Annexure C.

4. Knudsen provides various screen captures of the website (‘NHP Website’) from the years 2012 to 2015, 2017, 2019, 2020 and 2021 which show the word ‘CUBIC’ alongside NHP Electrical’s name. Annexure G has dated screen captures of the NHP Website, dated in 2012, 2013, 2014, 2015, 2017, 2019 and 2020 in relation to enclosures and electrical parts. Other material, such as catalogues, consist of product sheets dated in 2018 and 2015 for goods such as busbars, fault protectors, panel systems, electrical components and modular systems.

5. Confidential Annexure O to Knudsen evidences sizeable amounts of expenditure on advertising ‘in relation to the CUBIC goods’ in the financial years 2017/2018, 2018/2019 and 2019/2020. Knudsen does not specify whether this expenditure is for Australia and/or worldwide activities. Confidential Annexure P to Knudesen shows ‘revenue generated through sales of Goods offered under or by reference to the CUBIC Trade Mark’ in financial years 2017/2018, 2018/2019 and 2019/2020 for Australia and separately for the rest of the world. The figures do not specify the particular goods supplied and appear to refer to ‘electronic goods including but not limited to electrical switchboards and enclosures’.[7] These amounts are substantial.

   [7] Knudsen, [5].

6. Much of the EIS consists of catalogues and other marking material which is otherwise not dated or is dated after the Relevant Date. This material also does not always mention Australia and refers on to overseas locations.

EIA

1. Lea states that the Applicant commenced working on a range of domestic enclosures in 2018.[8] The word trade mark CUBO was selected in September 2020. Lea describes the filing process and reasons for selecting the Trade Mark. Lea also briefly describes the differences between the customers of the Applicant and the Opponent.

   [8] Lea, [9].

2. Exhibits to Lea include Exhibit SL-1 which is copy a company summary of the Applicant from the Australian Securities and Investments Commission’s database; Exhibit SL-2 which is copy of the trade mark registration number 902070 CABLE-LOC; Exhibit SL-3 being an undated photograph of a range of domestic enclosures featuring the Trade Mark; and Exhibit SL-4 which is a copy of the Trade Mark as it appears on the Australian Trade Mark Search and a copy of the case details report for a NZ TM which is identical to the Trade Mark.

Preliminary

1. I note that on 2 February 2024, the Opponent also filed supplementary submissions bringing my attention to a decision of the New Zealand Assistant Commissioner of Trade Marks in Voltex Electrical Accessories Pty Ltd v CUBIC-Modulsystem A/S,[9] dated 1 February 2024 (‘NZ Decision’). For completeness I note that this material does not change the outcome of this decision and had my decision been likely to be otherwise, I would have afforded an opportunity to the Applicant to respond to this material before deciding the matter.

Consideration

[9] [2024] NZIPOTM 5.

Regulation 4.15A

1. Regulation 4.15A relevantly provides:

   4.15A  Grounds for rejection—trade mark identical etc to trade mark protected under Madrid Protocol

   (1) For section 189A of the Act, and subject to subregulations (3) and (5), an application for the registration of a trade mark (applicant’s trade mark) in respect of goods (applicant’s goods) must be rejected if:

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

   (b)a protected international trade mark; or

   (ii) a trade mark in respect of which the Registrar has received notification of an IRDA;

   held by another person in respect of similar goods or closely related services; and

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

   Note: Under subsection 189A(3) of the Act, regulations made for the purposes of section 189A:

   (a) may be inconsistent with the Act; and

   (b) prevail over the Act (including any other regulations or other instruments made under the Act), to the extent of any inconsistency.

   Division 2 of Part 4 of the Act includes provisions relating to the grounds on which an application for the registration of a trade mark must be rejected.

2. The Opponent relies on the Opponent’s Trade Mark. The Opponent’s Trade Mark has an earlier priority date and it is in the name of a person other than the Applicant. The goods of most relevance for comparison with the Applicant’s Goods are the Opponent’s ‘housings for electrical equipment, electric armatures, electric contacts and parts and fittings (not included in other classes) for all aforementioned goods’. These goods are clearly the same as or include all of the Applicant’s Goods as they are all forms of housings and enclosures.

Substantially identical

1. The test for whether two trade marks are substantially identical is expounded in Shell Co (Aust) Ltd v Esso Standard Oil (Aust) Ltd:

   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.[10]

   [10] [1963] HCA 66, [12] (Windeyer J).

2. Comparing the Trade Mark and the Opponent’s Trade Mark side by side there is a similarity in the presence the prefix element ‘cub-’. The Trade Mark consists solely of the word ‘CUBO’. The Opponent’s Trade Mark contains a visual alteration being that the word terminates with the letter ‘-ic’ rather than ‘-o’. These differences are of significance. I am not satisfied that a total impression of resemblance emerges from a side by side comparison of the trade marks. Therefore, I do not consider the Trade Mark to be substantially identical with the Opponent’s Trade Mark.

Deceptive similarity

1. Section 10 provides that a trade mark is deceptively similar to another trade mark if it ‘so nearly resembles that other trade mark that it is likely to deceive or cause confusion’. I must compare the respective trade marks as wholes,[11] with regard to essential or distinguishing features,[12] and consider them visually and aurally, and in the context of the relevant surrounding circumstances.[13] Also of importance is the effect and meaning of the trade marks,[14] especially their effect or impression produced on the mind of ordinary consumers.[15] I should account for imperfect recollection of those ordinary consumers and the addition of even a single word can in the right circumstances relevantly differentiate one remembered mark from another in the minds of those consumers.[16] Ultimately, what is required is a real tangible danger of confusion.[17] That is, ‘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’.[18] Actual instances of deception or confusion are of great weight though not required.[19]

   [11] Torpedoes Sportswear Pty Limited v Thorpedo Enterprises Pty Limited [2003] FCA 901, [78] (Bennett J).

   [12] Crazy Ron’s Communications v Mobileworld Communications [2004] FCAFC 196, [77]-[88] (Moore, Sackville and Emmett JJ).

   [13] New South Wales Dairy Corporation v Murray Goulburn Co-operative Co Ltd (1989) 86 ALR 549, 589 (Gummow J).

   [14] Self Care IP Holdings Pty Ltd v Allergan Australia Pty Ltd [2023] HCA 8, [51] (Kiefel CJ, Gageler, Gordon, Edelman and Gleeson JJ) (‘Self Care’).

   [15] Ibid [51] and [67], citing Australian Woollen Mills Ltd v F S Walton & Co Ltd (1937) 58 CLR 641 (Dixon and McTiernan JJ) (‘Australian Woollen Mills’).

   [16] Jockey International Inc v Darren Wilkinson [2010] ATMO 22 (Hearing Officer Spence).

   [17] Southern Cross Refrigerating Co v Toowoomba Foundry Pty Ltd (1954) 91 CLR 592, 595 (Kitto J) (‘Southern Cross’); Registrar of Trade Marks v Woolworths [1999] FCA 1020, [50](i) (French J) (‘Woolworths’); Campomar Sociedad Limitada v Nike International Ltd [2000] HCA 12, [83] (Gleeson CJ, Gaudron, McHugh, Gummow, Kirby, Hayne and Callinan JJ).

   [18] Woolworths ibid [50](ii); Southern Cross ibid 594-595 (Kitto J). See also, Australian Woollen Mills (n 15) 658.

   [19] Self Care (n 14) [30]; Australian Woollen Mills (n 15) 658.

2. The shared element for both trade marks is the leading prefix element of the letters ‘cub-’. Whilst the leading element is, ‘as a rule, far the most important for the purpose of distinction’[20], the words of the trade marks here terminate in a different manner. The element ‘-ic’ is strikingly distinct from something which would be pronounced as ‘-oh’. The second syllable after the prefix is likely to be one which would be stressed.

   [20] Re London Lubricants (1920) Ltd (1925) 42 RPC 264, 279 (Sargant LJ).

3. I consider consumers as likely to notice the differences here noted. Consumers are not likely to refer to and imperfectly recall the trade marks as ‘cub-’, perhaps pronounced ‘cube’, itself. The trade marks share a similarity in that they may be pronounced as ‘cube-oh’ and the Opponent’s Trade Mark as ‘cube-ick’ when spoken. However, ‘cubo’ may also be pronounced as ‘cub-oh’. The leading element of ‘cub-’ itself is not visually ‘so unusual that [its] presence in more than one trade mark would necessarily cause consumers to wonder whether they came from the same source’.[21]

   [21] OneSteel Wire Pty Ltd v Austral Wire Products Pty [2015] ATMO 52, [44] (Hearing Officer Worth).

4. In Clipsal Australia Pty Ltd v Clipso Electrical Pty Ltd (No 3),[22] Peram J compared the word trade marks CLIPSO and CLIPSAL. Justice Peram considered those trade marks to be deceptively similar for various electrical goods, noting that whilst CLIPSAL had some origins in the formative descriptive words ‘clips all sizes’, this did not assist in the identification of essential features of that coined term. Ultimately, CLIPSAL was held to not have ‘any feature…beyond itself’.[23] In other words, the entire word CLIPAL was the sole feature of that trade mark. So goes for CUBO. By contrast, the word ‘cubic’ has a very clear meaning and effect here.[24]

   [22] [2017] FCA 60 (Perram J).

   [23] Ibid, [174].

   [24] See also, Sumol Compal S A v Sumo IP Holdings Pty Ltd [2018] ATMO 81 (Hearing Officer Worth) where the delegate compared the trade mark ‘SUMOL’ with the known word ‘SUMO’.

5. Overall, the trade marks have conceptual, visual and aural dissimilarities such that when they are viewed as wholes, I am not satisfied that there is a real tangible danger of confusion.

6. I note the Applicant’s reference to the NZ Decision and regardless of the findings there, for the reasons above I am not satisfied that the requirements of the reg 4.15A ground of opposition are established. While office decisions are often echoed across the Tasman, this is certainly not a given. Part of the reason for differences in findings may be the differences in terms of onus on an applicant in New Zealand opposition proceedings, and those on an opponent in Australia.

7. Accordingly, the ground of opposition under reg 4.15A has not been established.

Section 60

1. The Opponent relies upon s 60 as a ground of opposition. Section 60 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.

   Note:          For priority date see section 12.

2. The Opponent must show that because of a reputation acquired in a trade mark the use of the Trade Mark for the Applicant’s Goods would likely deceive or cause confusion. The reputation must not be assumed, it rather must be established as a matter of fact by the Opponent.[25] A reputation can be demonstrated by various means including the quantum of sales or advertising and promotional activities.[26] Advertisements or other appearances of the trade marks at trade fairs, on television, radio or in magazines and newspapers may also be relevant. The reputation required is one of which a significant or substantial number of persons would be aware[27], or a ‘significant section of the public’[28] and it must exist at the Relevant Date.

   [25] ConAgra Inc v McCain Foods (Aust) Pty Ltd [1992] FCA 176, [77] (Lockhart J).

   [26] Rodney Jane Racing Pty Ltd v Monster Energy Company [2019] FCA 923, [83] (O’Bryan J).

   [27] Renaud Cointreau & Cie v Cordon Bleu International Ltee [2001] FCA 1170, [74]-[75] (Moore, Tamberlin and Goldberg JJ).

   [28] Fry Consulting Pty Ltd v Sports Warehouse Inc (No 2) [2012] FCA 81, [121] (Dodds-Streeton J) (‘Fry Consulting’).

3. The Opponent relies on an alleged reputation in the Opponent’s Trade Mark. The Applicant does not dispute that there is a reputation in the Opponent’s Trade Mark in relation to the Opponent’s Goods in class 9.[29] I agree that there is a reputation in the Opponent’s Trade Mark for electrical switch boards and parts. The extent of that reputation for specifically enclosures and housings is less apparent. The unit cost per item is also not specified so it is difficult to conclude what the extent of the reputation based on volume of goods moved and no market share information is provided.

   [29] Applicant’s Submissions, [36].

4. Section 60(b) remains in dispute. The Opponent submits that there is an extensive reputation in the Opponent’s Trade Mark and that the goods have a direct overlap as well as the purchasers. The Applicant submits that there is a sufficient degree of dissimilarity between the trade marks. It also relies on the word ‘cubic’ having a descriptive meaning both notionally for the Applicant’s Goods and in actual use. That is, the Opponent’s Goods as shown in the evidence are ‘cubic’ in shape. The Applicant also submits that the type of consumer here is likely a qualified and licensed electrician who would have care in purchasing the Applicant’s Goods.

5. I have already noted that both of the trade marks commence with word element ‘cub-’. The evidence reflects that there is some level of reputation in the Opponent’s Trade Mark for the Opponent’s Goods. The goods are likely to be provided by the same kind of traders, have similar purposes and natures, which heightens the likelihood of confusion arising by use of the Trade Mark for the Applicant’s Goods. The purchasers of the Applicant’s Goods and the goods for which there is a reputation in the Opponent’s Trade Mark also include the same persons. However, the electrical goods are specialised and there likely to be some discernment when purchased. Regardless, noting the differences between the trade marks that I refer to in my discussion of the ground of opposition under reg 4.15A, I do not agree that confusion is likely. I am not satisfied that because of the reputation of the Opponent’s Trade Mark, the use of the Trade Mark would be likely to deceive or cause confusion.

1. Accordingly, the ground of opposition under s 60 has not been established.

Section 42

1. Section 42(b) provides,

   An application for the registration of a trade mark must be rejected if… its use would be contrary to law

2. The requirement is that I be satisfied that the use of the Trade Mark would not could be contrary to law.[30]

   [30] Advantage-Rent-A-Car Inc v Advantage Car Rental Pty Ltd [2001] FCA 683, [28] (Madgwick J).

3. The Opponent relies on (1) ss 18 and 29 of the Australian Consumer Law (‘ACL’)[31] and (2) the common law of passing off. Section 18 of the ACL concerns conduct or representations that have, or are likely to, mislead or deceive. Section 29 of the ACL concerns representations that are false or misleading. There is no material difference between the expression ‘mislead or deceive’ in s 18 of the ACL and ‘false or misleading’ in s 29 of the ACL.[32]

   [31] Schedule 2 to the Competition and Consumer Act 2010 (Cth).

   [32] Australian Competition and Consumer Commission v Coles Supermarkets Australia Pty Ltd [2014] FCA 634, [40] (Allsop CJ).

4. As already indicated in respect of s 60, I am not satisfied that the use of the Trade Mark for the Applicant’s Goods is likely to cause deception or confusion with the Opponent’s Trade Mark. It follows that on the stricter test of the ACL,[33] 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. As I have found that s 18 of the ACL has not been contravened, it also follows that use of the Trade Mark does not amount to passing off.[34]

   [33] Weili Mu v Guotai Huang [2021] ATMO 113, [35]-[36] (Hearing Officer Smith).

   [34] Equity Access Pty Ltd v Westpac Banking Corporation [1989] FCA 506, [40] (Hill J).

5. Accordingly, the ground of opposition under s 42(b) has not been established.

Section 62A

1. Section 62A provides that the registration of a trade mark may be opposed on the ground that the application was made in bad faith. For this, I must determine whether, ‘in all the particular circumstances, the [Applicant’s] knowledge was such that his decision to apply for registration at the relevant date would be regarded as in bad faith by persons adopting proper standards’.[35] This question is determined as at the Relevant Date.

   [35] Fry Consulting (n 28) [167] (Dodds-Streeton J).

2. In DC Comics v Cheqout Pty Ltd, Bennett J noted that:

   Bad faith is a combined test that involves subjective and objective elements. The subjective element refers to the knowledge of the relevant person at the time of making the application. The objective element requires the decision-maker to decide whether, in the light of that knowledge, the relevant person’s behaviour fell short of acceptable commercial standards.[36]

   [36] [2013] FCA 478, [62].

3. The Opponent submits that the Applicant ought to have known it was not entitled to seek registration of the Trade Mark.  The Opponent’s submission relies on the reputation of the Opponent’s Trade Mark and the Applicant’s alleged awareness of that reputation.

4. The Opponent has established a reputation for the purposes of s 60. Even if the Applicant had been aware of the reputation, an awareness of a reputation itself does not mean that the conduct here necessarily falls short of acceptable commercial standards: ‘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.’[37] The Opponent has not otherwise provided any evidence to support its assertions under s 62A of the Act. In the absence of such evidence, I cannot be satisfied that the application for the Trade Mark was made in bad faith.

   [37] 1872 Holdings VOF v Havana Club Holding SA [2017] ATMO 12, [64] (Hearing Officer Thompson).

5. Accordingly, the ground of opposition under s 62A has not been established.

Decision

1. Section 55 relevantly provides:

   55  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.

2. The Opponent has not established any ground of opposition. Accordingly, trade mark 2122273 may proceed to registration after the appeal period expires.

3. If the Registrar is served with a notice of appeal before that time, I direct that registration shall not occur until the appeal has been decided or discontinued and that the disposition of the application should otherwise be in accordance with the Court’s order or discretion.

Costs

1. The Applicant has sought costs, which generally follow the event. I award costs against the Opponent in accordance with schedule 8 to the Regulations.

Benjamin Goldsworthy

Hearing Officer

Oppositions and Hearings

Trade Marks and Designs

24 June 2024

Schedule 1

Class 6: Metal building materials; building panels and boards of metal; poles of metal; sheets and plates of metal, partitions of metal, guard rails of metal, wall claddings of metal; goods of common metal not included in other classes

Class 9: Electrical distribution boards, switchboards and control panels and parts and fittings (not included in other classes) thereto; housings for electrical equipment, electric armatures, electric contacts and parts and fittings (not included in other classes) for all aforementioned goods (‘Opponent’s Goods’)

Class 37: Building construction; repair; installation services, including repair and installation of electrical apparatus and instruments, control panels and switchboards (‘Opponent’s Services’)