Opposition by Jaguar Land Rover Limited to extension of protection to International Registration 1373509 (classes 1, 4, 6, 7, 8, 9, 11, 12, 16, 17, 20, 21, 28, 35, 37, 38, 41, 42) (Australian trade mark application...
[2021] ATMO 96
•3 September 2021
TRADE MARKS ACT 1995
DECISION OF A DELEGATE OF THE REGISTRAR OF TRADE MARKS WITH REASONS
Re:Opposition by Jaguar Land Rover Limited to extension of protection to International Registration 1373509 (classes 1, 4, 6, 7, 8, 9, 11, 12, 16, 17, 20, 21, 28, 35, 37, 38, 41, 42) (Australian trade mark application number 1884515) – VÖGELE – held by Joseph Vogele AG
| Delegate: | Nicholas Barbey |
| Representation: | Opponent: Phillips Ormonde Fitzpatrick Holder: Corrs Chambers Westgarth |
| Decision: | 2021 ATMO 96 Trade Marks Regulations 1995 (Cth) – regulation 17A.33 opposition – grounds of opposition under sections 42(b), 43, 44, 59 and 60 of the Trade Marks Act 1995 (Cth) – none established – protection to be extended to Australia |
Background
This decision concerns an opposition brought by Jaguar Land Rover Limited (‘Opponent’) to the extension of protection in Australia of the following International Registration Designating Australia (‘IRDA’):
Trade Mark: (‘Trade Mark’)
Application Number: 1884515
International Registration: 1373509
Holder: Joseph Vogele AG (‘Holder’)
Filing Date: 19 August 2016
Priority Date: 26 February 2016
Specification: See Annexure 1 (‘Goods and Services’)
Endorsement: Provisions of paragraph 44(3)(b) and/or Reg 4.15A(3)(b) applied
The IRDA’s acceptance was advertised in the Australian Official Journal of Trade Marks on 1 July 2019. The Opponent filed a notice of intention to oppose the extension of protection on 28 August 2019 followed by a Statement of Grounds and Particulars (‘SGP’), later rectified, on 25 September 2019. The Holder filed a notice of intention to defend on 20 January 2020.
Evidence in Support (‘EIS’) was filed by the Opponent and the Holder filed Evidence in Answer (‘EIA’). An oral hearing was requested and the Opponent filed submissions on 7 May 2021 (‘Opponent’s Submissions’). Submissions were subsequently filed by the Holder on 14 May 2021 (‘Holder’s Submissions’).
As a delegate of the Registrar of Trade Marks, I heard this matter by video conference on 21 May 2021. Gregory Chambers of Phillips Ormonde Fitzpatrick and Jürgen Bebber of Corrs Chambers Westgarth presented submissions on behalf of the Opponent and the Holder, respectively.
Grounds of opposition, onus and standard of proof
Regulation 17A.34 of the Trade Mark Regulations 1995 (Cth) (‘Regulations’) provides that the extension of protection may be opposed on any of the grounds on which an IRDA may be rejected and also on the grounds set out in ss 58 to 61 and 62A of the Trade Marks Act 1995 (Cth) (‘Act’).
The SGP nominated grounds of opposition under ss 42(b), 43, 44, 59 and 60 of the Act. However, only ss 44 and 59 were pressed in written submissions and at the hearing. To be successful in this opposition, the Opponent bears the onus of establishing at least one of these grounds.[1]
[1] Food Channel Network Pty Ltd v Television Food Network GP [2010] FCAFC 58, [32] (Keane CJ, Stone and Jagot JJ) (‘Food Channel’).
The relevant standard of proof is the ordinary civil standard based on the balance of probabilities.[2] The date at which the rights of the parties are to be determined is usually the filing date of the IRDA except in respect of those grounds which mention a priority date. The IRDA’s filing date is 19 August 2016 and a convention priority date of 26 February 2016 has been claimed in respect of all of the Goods and Services.
[2] Telstra Corporation Limited v Phone Directories Company Pty Ltd [2015] FCAFC 156, [133] (Besanko, Jagot and Edelman JJ).
Evidence
The following declarations were filed as evidence:
| EIS |
|
| EIA |
|
The Opponent’s evidence
The Chambers Declaration asserts that the Goods and Services cover a wide range of classes and the items particularised within each are ‘extraordinarily diverse’.[3] Having inspected the Holder’s website,[4] Mr Chambers observes that it promotes ‘a very narrow range of goods all related to road construction’.[5] According to information published on the website, the Holder has historically been involved in the railway engineering, construction and road paving industries. Mr Chambers points out that the Holder ‘was integrated within the Wirtgen Group’ (‘Wirtgen’) in 1996 and transitioned to the provision of road paving equipment including road pavers, screeds and power feeders.
[3] Chambers Declaration, [4].
[4] See (‘Holder’s website’).
[5] Chambers Declaration, [5].
10. According to the Chambers Declaration, Wirtgen is a German company that develops and produces machinery for road construction and maintenance. Mr Chambers’ investigation of ‘internet sources’ failed to locate any statements indicating that the Holder has an intention ‘to expand its product range beyond road paving equipment and associated services’.[6] On this basis, it is claimed that the Goods and Services encompass numerous items which the Holder has no intention to use the Trade Mark in respect of and the IRDA has been filed for defensive purposes.
[6] Ibid [9].
11. Finally, the Chambers Declaration states that the Opponent’s Australian subsidiary, Jaguar Land Rover Australia Pty Ltd, is the owner of the following Australian trade mark registration:
Trade Mark: VOGUE (‘Opponent’s Mark’)
Registration Number: 780455
Priority Date: 8 December 1998
Specification: Class 12: Motor vehicles
Endorsement: Provisions of subsection 41(5) applied
The Holder’s evidence
12. The BA Declaration provides an overview of the Holder which is described as being an ‘international manufacturing and paving company’[7] founded in 1836. Throughout its history, the Holder has made railway, road construction, concrete mixing and asphalt paving products. According to the BA Declaration, the Holder ‘formed part of’ Wirtgen in 1996 and Deere & Company subsequently acquired Wirtgen in 2017. The Holder is headquartered in Ludwigshafen, Germany. At this location, it has ‘a world leading paving factory with a total investment value of 100 million Euros in connection to machines marked with the VÖGELE mark’.[8]
[7] BA Declaration, [7].
[8] Ibid [11].
13. The BA Declaration explains that discussions took place between the Holder and its local trade mark lawyers prior to filing International Registration number 1373509. These discussions touched on the Trade Mark’s worldwide filing strategy as well as merchandising issues for various jurisdictions including Australia. According to the BA Declaration, at the date of filing the IRDA, the Holder had either used or possessed the intention to use the Trade Mark in relation to all the Goods and Services. The BA Declaration also affirms that the Holder continues to use the Trade Mark or retains an intention to do so.
14. According to the BA Declaration, the Holder has used the Trade Mark in Australia in relation to products and road construction services since at least 2005. The products, which have been continuously offered in Australia since their launch, include road pavers, screeds, material feeders and digital paving, machine, application and screed technology. The BA Declaration also mentions that the Holder’s Australian subsidiary has ‘sales teams and offices in four states of Australia’.[9] These teams provide customers with ongoing support services in relation to products purchased from the Holder.
Discussion
[9] Ibid [19].
Section 44
15. Section 44 of the Act relevantly provides:
Identical etc. trade marks
(1) Subject to subsections (3) and (4), an application for the registration of a trade mark (applicant's trade mark) in respect of goods (applicant's goods) must be rejected if:
(a) the applicant's trade mark is substantially identical with, or deceptively similar to:
(i) a trade mark registered by another person in respect of similar goods or closely related services; or
(ii) a trade mark whose registration in respect of similar goods or closely related services is being sought by another person; and
(b) the priority date for the registration of the applicant's trade mark in respect of the applicant's goods is not earlier than the priority date for the registration of the other trade mark in respect of the similar goods or closely related services.
…
(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.
16. To establish this ground of opposition, the Opponent must identify at least one trade mark which satisfies the following requirements:
it is in the name of a person other than the Holder;
it has a priority date which is earlier than that of the Trade Mark;
it is substantially identical with, or deceptively similar to, the Trade Mark; and
it is in respect of goods and/or services which are either similar or closely related to the Goods and Services.
17. The Opponent’s Mark was identified in the SGP as underpinning this ground. It is registered by a person other than the Holder and has a priority date earlier than 26 February 2016. Requirements (i) and (ii) outlined above are satisfied. The Goods and Services include a class 12 claim for ‘vehicles’ and this would encompass the ‘motor vehicles’ claim in class 12 for which the Opponent’s Mark is registered. As such, requirement (iv) set out above is also satisfied in respect of at least some of the Goods and Services.
18. Accordingly, establishing this ground of opposition turns on satisfying requirement (iii) as detailed at [16] of this decision. The well accepted test for ‘substantial identity’ was set out by Windeyer J in Shell Company of Australia Ltd v Esso Standard Oil (Australia) Ltd (‘Shell’):
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] (‘Shell’).
19. More recently, the Full Court of the Federal Court in Urban Alley Brewery Pty Ltd v La Sirène Pty Ltd observed:
A side-by-side comparison of two marks is a studied comparison. It highlights the differences between the marks just as much as it shows their sameness, in order to reach a conclusion as to whether the two marks are, in fact, substantially identical.[11]
[11] [2020] FCAFC 186, [98] (Middleton, Yates and Lee JJ).
20. The trade marks are reproduced below:
| Trade Mark | Opponent’s Mark |
21. The Opponent contends that the trade marks are substantially identical because they share essential elements and have a similar length. In its view, the ‘differences are slight’ given each trade mark commences with the letters ‘VOG’[12] and finishes with the letter ‘E’.[13] The Holder disagrees and contends that there are sufficient visual and aural differences between the trade marks to preclude a finding of substantially identical.[14]
[12] The Opponent’s Submissions note this is subject only to the umlaut which appears in the Trade Mark.
[13] Opponent’s Submissions, [25]–[29].
[14] Holder’s Submissions, [14]–[16].
22. In my assessment, clear differences emerge when the trade marks are compared side by side. The Trade Mark contains an umlaut on the letter ‘O’, is comprised of six letters and ends with ‘-GELE’. In contrast, the Opponent’s Mark is comprised of five standard letters with no diacritical element and ends with ‘-GUE’. These differences contribute to a total impression of dissimilarity emerging from a studied comparison of the trade marks. It follows that the Trade Mark and the Opponent’s Mark are not substantially identical.
23. Turning to the question of deceptive similarity, s 10 of the Act provides:
Definition of deceptively similar
For the purposes of this Act, 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.
24. The assessment of deceptive similarity was considered in Shell by Windeyer J who stated:
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].[15]
[15] Shell (n 10) [13].
25. The Opponent claims that the overall impression conveyed by each trade mark is ‘so similar that deception or confusion is highly likely’.[16] Specifically, the essential features of each trade mark are the first three letters ‘VOG’ and the last letter ‘E’. It further alleges that the trade marks have identical first syllables and ‘highly similar’ second syllables. Differences such as the ‘EL’ in the Trade Mark instead of the ‘U’ in the Opponent’s Mark and the presence of the diacritical element are, in the Opponent’s view, unlikely to be recalled by ordinary consumers with an imperfect recollection.
[16] Opponent’s Submissions, [35].
26. Conversely, the Holder submits that the mere commonality of the letters ‘V’, ‘G’ and ‘E’ do not render the trade marks deceptively similar. In its view, the Trade Mark would be perceived as a foreign word.[17] The depiction of the umlaut on the letter ‘O’ creates visual differences and results in the letter ‘V’ being the only shared element in the prefix of each trade mark. The Holder submits that the suffix of each trade mark, being ‘-GUE’ and ‘-GELE’, is a further distinguishing factor when they are compared visually and aurally.
[17] Holder’s Submissions, [21].
27. In my view, the Trade Mark is not deceptively similar to the Opponent’s Mark. A degree of visual similarity naturally arises between the Trade Mark and the Opponent’s Mark given the former commences with ‘VÖG’ and the latter commences with ‘VOG’. However, the inclusion of the umlaut on the letter ‘O’ in the Trade Mark notably distinguishes the trade marks. Its presence is likely to strike the Australian consumer’s eye and be recalled, given ‘Ö’ is an unfamiliar character that is not contained in the standard Latin alphabet. Meanwhile, the termination of each trade mark, being ‘-GELE’ and ‘-GUE’, are visually dissimilar. This visual variance further differentiates the trade marks when considered as wholes.
28. The Opponent contends that the trade marks are aurally similar because each are comprised of two syllables. It submits that the Trade Mark and the Opponent’s Mark would be pronounced as ‘vo-gel’ and ‘vo-ge’, respectively. The Holder concedes that consumers are unlikely to be aware of the Trade Mark’s correct pronunciation.[18] Nevertheless, it asserts that the Trade Mark would be pronounced as a three syllable word with ‘GELE’ being enunciated as two syllables in a similar fashion to English words terminating in ‘ele’ (e.g. ‘ukulele’). No evidence was led regarding the ordinary pronunciation of either trade mark. Ultimately, such evidence is unnecessary given the Opponent’s Mark is a monosyllabic word and the Trade Mark is, at a minimum, a two syllable word. Even if I were to accept that ‘VOGUE’ is comprised of two syllables, applying a comparable reading to the Trade Mark necessarily means it is comprised of three syllables. Additionally, the presence of the diacritical element in the Trade Mark is likely to alter its pronunciation. For example, ordinary consumers may interpret the ‘Ö’ in the Trade Mark as having a long vowel sound and place additional stress on the first syllable (i.e. similar to ‘voo’ in ‘voodoo’). The Opponent’s Mark plainly does not lend itself to such an interpretation. Consequently, any potential aural similarity shared by the trade marks is diminished in this context.
[18] Ibid [25]. It is stated that the correct German pronunciation would be ‘foo-gel-uh’.
29. The trade marks also diverge conceptually. The Holder states that the Trade Mark is a foreign word – namely, ‘the diminutive of the German word for “bird”’.[19] While ordinary consumers are unlikely to be aware of this precise meaning, I accept that the Trade Mark is likely to be perceived as a foreign word. In contrast, the Opponent’s Mark is a familiar and well understood English word used to denote something that is fashionable or popular. As such, the trade marks are conceptually distinct.
[19] Ibid [26].
30. Finally, the Holder emphasises that the conflicting goods are relevant in considering whether there is a likelihood of deception or confusion. I agree and note that a greater degree of attention will likely be exercised by consumers when purchasing expensive goods.[20] Here, the goods are motor vehicles. Evidently, such goods are not an impulse purchase given the research and large outlay typically associated with purchasing a motor vehicle. The corollary is that the trade marks are likely to be scrutinised by prospective consumers and this further diminishes the potential for deception or confusion between the trade marks.
[20] See, eg, Re Application by Pianotist Company Ltd (1906) 23 RPC 774, 777–8 (Parker J); Lancer Trade Mark Application [1987] RPC 303, 318 (Falconer J).
31. For the above reasons, I am satisfied that there is no real and tangible danger of confusion between the Trade Mark and the Opponent’s Mark. Sufficient visual, aural and conceptual differences exist between the trade marks such that, even allowing for imperfect recollection, the trade marks are readily distinguished when considered in their entirety.
32. The s 44 ground of opposition has not been established.
Section 59
33. Section 59 of the Act provides:
Applicant not intending to use trade mark
The registration of a trade mark may be opposed on the ground that the applicant does not intend:
(a) to use, or authorise the use of, the trade mark in Australia; or
(b) to assign the trade mark to a body corporate for use by the body corporate in Australia;
in relation to the goods and/or services specified in the application.
34. The date for assessing the Holder’s intention to use the Trade Mark in Australia is the IRDA’s filing date, being 19 August 2016 (‘Relevant Date’). The nature of the intention was considered in Health World Limited v Shin-Sun Australia Pty Ltd (‘Health World’) by Jacobson J who observed:
In my view, the intention, or lack thereof, to which s 59 is directed, is a "real and definite intention" of the applicant for registration, to use the mark publicly as a trade mark, although it is not necessary that the intention be immediate or within a limited time …
The subjective nature of the intention, the presumption of intention flowing from the application for registration and the onus on an opponent usually make it difficult for an opposition, or an application for rectification, to succeed on this ground.[21]
[21] Health World Limited v Shin-Sun Australia Pty Ltd [2008] FCA 100, [160]–[161] (citations omitted) (‘Health World’).
35. It is well established that the act of filing an application, or in this case an IRDA, gives rise to a presumption that the Holder intends to use the Trade Mark in respect of all of the Goods and Services.[22] As Burley J explained in Bauer Consumer Media Ltd v Evergreen Television Pty Ltd:
Nothing in the [Trade Marks] Act or the Trade Marks Regulations 1995 (Cth) requires an applicant to state its intention, and the making of the application itself has long been regarded as prima facie evidence of intention to use … The burden falls upon an opponent to registration (or an applicant under s 92(4)(a)) to establish a relevant lack of intention on the part of the trade mark applicant a[t] the filing date … The scope of the inquiry may be broad, but commences from the prima facie position set out in [Aston v Harlee Manufacturing Co [1960] HCA 47].[23]
[22] Aston v Harlee Manufacturing Co [1960] HCA 47, [21] (Fullagar J).
[23] [2019] FCAFC 71, [247].
36. As such, simply nominating the s 59 ground of opposition in the SGP does not displace the presumption. Rather, to discharge its onus, the Opponent must establish a prima facie case that the Holder lacked the requisite intention to use the Trade Mark in Australia at the Relevant Date.[24] In this regard, Jacobson J in Health World noted that:
there is authority for the proposition that where an applicant for registration has been put on notice that its intention to use the mark was in issue, and has not responded to the opponent’s evidence, a finding of lack of intention may be made …
The principle which underlies these authorities seems to me to be that the evidentiary onus shifts to the applicant for registration where an opponent makes a prima facie case of lack of intention to use the mark.[25]
[24] Food Channel (n 1) [72].
[25] Health World (n 21) [162]–[163] (emphasis in original).
37. Circumstances in which a prima facie lack of intention have been established include ‘where the applicant company was not operating and failed to provide evidence, had no capacity to trade in the relevant goods or services or was subject to a relevant contractual restraint’.[26] Likewise, oppositions under s 59 of the Act have also been successful where ‘the evidence established the existence of only illegitimate purposes, including the use of registration defensively, speculatively, to gain competitive advantage or to sell the trade mark’.[27] However, mere non-use of the Trade Mark does not, by itself, provide a basis to infer a lack of intention to use.[28] Additionally, while the focus of the current inquiry is the Holder’s intention at the Relevant Date, any subsequent use, or lack thereof, may assist in assessing whether the requisite intention existed.[29]
[26] Suyen Corporation v Americana International Limited [2010] FCA 638, [212] (Dodds-Streeton J).
[27] Ibid.
[28] Ibid [207].
[29] Food Channel (n 1) [74].
38. If the Opponent establishes a prima facie case that the Holder lacked the requisite intention on the Relevant Date, the evidentiary onus shifts to the Holder.[30] It is then incumbent on the Holder to establish that it had an intention to use the Trade Mark at the Relevant Date.
[30] Health World (n 21) [163].
39. This ground of opposition was particularised in the SGP as follows:
The specification of goods and services in respect of which registration is sought are very broadly worded so as to extend beyond expected areas of the [Holder’s] business interests and consequently, the Opponent does not consider that the [Holder] has the intention to use the Opposed Trade Mark in relation to all of the Goods and Services for which registration has been sought
The [Holder] is a company which specialises in the manufacture and sale of asphalt pavers and has no business in, or any intention to use, the Opposed Trade Mark in relation to any goods or services beyond those relating to road construction.
40. Consistent with its SGP, the Opponent’s Submissions concede that the Holder has an intention to use the Trade Mark in respect of the following:
Class 7: Asphalt finishers; asphalt paving machines; feeders; concrete construction machines; machines for treatment, application, finishing, manufacturing, post-treatment, structuring, fastening and/or distribution of road surfaces; road repairing machines; road making machines; road finishers; feeding machines and devices; screeds.
Class 12: Land vehicles specially adapted for use in the building, repair or resurfacing of roads.
Class 35: Wholesaling, retailing and international trade, including by means of mail order catalogues or with the aid of electronic media, namely of the following goods; asphalt pavers, asphalting machines, feeders, feed vehicles, concrete construction machines, smoothing machines, machines for treatment, application, finishing, manufacturing, post-treatment, structuring, fastening and/or distribution of road surfaces, road repairing machines, road making machines, road pavers, feeding machines and devices, paving screeds.
Class 37: Installation, cleaning, repair and maintenance of asphalt pavers, asphalting machines, feeders, concrete construction machines, machines for treatment, application, finishing, manufacturing, post-treatment, structuring, fastening and/or distribution of road surfaces, road repairing machines, road making machines, road pavers, feeding machines and devices, paving screeds
41. Consequently, it is the balance of the Goods and Services which are at issue. For convenience, the residual goods and services will be referred to as the ‘Disputed GS’ for the remainder of this decision.
42. The Opponent’s position is that the Holder had no intention to use the Trade Mark in Australia in respect the Disputed GS at the Relevant Date. In its view, the following factors establish a prima facie case:
(i)The IRDA ‘covers such a huge array of goods and services’[31] unrelated to what the Opponent believes is the Holder’s core business – namely, being an international manufacturing and paving company. Reliance was placed on the diversified nature of the items comprising the Disputed GS and the improbability that a single trader would provide same;
The evidence annexed to the Chambers Declaration demonstrates a ‘great consistency across all of the publicly available material’ that the Holder has been exclusively involved in road paving equipment and services. Mr Chambers was not able to locate any statements by the Holder which evince its intention to expand its offerings beyond such goods and services; and
There is no evidence of the Holder having provided any of the Disputed GS since the IRDA was filed. Indeed, the Opponent highlights that the Holder’s evidence fails to demonstrate that it has taken any steps to obtain the necessary permissions or means to provide the Disputed GS.
[31] Opponent’s Submissions, [79].
43. Accordingly, the Opponent contends that the Chambers Declaration in combination with the broad nature of the Disputed GS is sufficient to discharge its onus of establishing a prima facie case.[32] Further, the Opponent submits that the BA Declaration confirms that the Holder has not used the Trade Mark in relation to the Disputed GS and may have filed the IRDA for defensive reasons.
[32] Ibid.
44. The Holder rejects the Opponent’s position pointing out that it is under no obligation to adduce evidence of an intention to use the Trade Mark unless a prima facie case has been established. In its view, no such case has been made. The Holder’s Submissions reiterate that a favourable presumption arises from filing and the Opponent bears the onus of displacing it. To this end, attention was drawn to the BA Declaration which expressly confirms that the Holder had the intention to use the Trade Mark in relation to all the Goods and Services at the Relevant Date.
45. The Holder’s Submissions further highlight that mere non-use of the Trade Mark in respect of the Disputed GS does not provide a sufficient basis to infer a lack of intention. This is because there are legitimate commercial reasons to delay use of a Trade Mark pending the outcome of the IRDA. Moreover, the Holder emphasises that the intention must be assessed at the Relevant Date. Thus, it believes that the Opponent’s evidence dated after the Relevant Date is of limited, if any, relevance. Finally, the Holder notes that the IRDA still falls within the non-use grace period provided for under the Act.[33]
[33] See Act s 93(2) as it stood prior to amendments to that section brought about by the Intellectual Property Laws Amendment (Productivity Commission Response Part 1 and Other Measures) Act 2018 (Schedule 1, Part 3).
46. In my assessment, the Opponent has not established a prima facie case that the Holder lacked an intention to use the Trade Mark in relation to the Disputed GS for the reasons that follow.
47. First, simply designating a diverse range of goods and services in the IRDA cannot, in isolation, be interpreted as indicating the Holder has no intention to use the Trade Mark in respect of same. The Holder points out, correctly in my view, that the Act allows for broad and diverse claims to be made within each class. There is no limit on the number of classes or items within each class that may be claimed in the specification. The only non-discretionary prohibition imposed on a specification is that it must not use the expression ‘all goods’, ‘all services’, ‘all other goods’ or ‘all other services’.[34] The Holder is therefore entitled to claim disparate items across different classes provided each item is sufficiently particularised and it possesses the requisite intention to use the Trade Mark in relation to same. As mentioned at [35] of this decision, the latter arises by virtue of the IRDA being filed. As such, the mere fact that the Disputed GS consists of a diverse range of goods and services does not provide a cogent basis to infer that the Holder lacks the requisite intention use same.
[34] See Regulations regs 4.4(2) and 17A.14(1).
48. Second, the searches undertaken by the Opponent have not been sufficiently particularised. Only two sources have been identified and filed as evidence – namely, a Wikipedia page and the Holder’s website. Information derived from either source is not overly compelling given the former is reliant on user generated content that has minimal oversight whereas the latter may deliberately conceal the Holder’s intentions for commercial reasons until its intellectual property rights are secured. I acknowledge that ‘several searches for the product offerings of the [Holder] (both in overseas markets and in Australia) using internet sources’[35] did not uncover any statements that the Holder is intending to expand. However, the ‘internet sources’ relied upon by the Opponent have not been disclosed nor have any results been annexed to the Chambers Declaration. It is therefore impossible to discern the nature and parameters of the ‘several searches’ conducted. In this context, the Opponent’s evidence rises no higher than indicating that the Holder has not used the Trade Mark in relation to the Disputed GS.
[35] Chambers Declaration, [9].
49. Third, the Opponent’s Submissions fail to expand on why the IRDA has allegedly been filed for defensive reasons. My attention has not been directed to any ‘sinister motive’[36] or prior history between the parties that could impugn the Holder’s intention. Instead, reliance is placed solely on the broad nature of the goods and services that comprise the Disputed GS. As discussed at [47] of this decision, it is entirely permissible under the Act to claim disparate items and doing so is not irreconcilable with an intention to use the Trade Mark in respect of same. In the absence of any further information or evidence, this submission has no foundation.
[36] See, eg, Republic Consulting Pty Ltd v Nhan Chiem [2008] ATMO 20, [48].
50. Finally, the Opponent is critical of the Holder’s evidence because it fails to demonstrate use of the Trade Mark in respect of the Disputed GS, does not expand on its intention to diversify and has been provided by declarants who seemingly were not directly involved with the IRDA’s filing. While there may be some merit in the criticism levelled at the Holder’s evidence, closer consideration of same is only required if the Opponent establishes a prima facie case of lack of intention. For the reasons discussed, I do not consider it has. As such, closer scrutiny of the Holder’s evidence is not warranted in the circumstances.
51. Ultimately, the Opponent’s prospects of establishing a prima facie case rests on the cumulative nature of the factors detailed at [42] of this decision. Considered as a whole, the Opponent’s position primarily relies on the Holder’s non-use of the Trade Mark in relation to the Disputed GS. Irrespective of the disparate nature of the items that fall within the Disputed GS, the Holder enjoys the presumption which arises from the act of filing the IRDA. The Opponent has not pointed to any illegitimate purposes or questionable filing tactics by which the presumption may be displaced. Nor were there any admissions or instances in evidence where the Holder has expressed a contrary intention with respect to the Disputed GS.[37] The Holder has retained an address for service in Australia and through its representation has participated in every stage of the current opposition.[38] To this end, the evidence indicates that the Holder is part of a sizeable and well-resourced multinational which itself was acquired by an even larger conglomerate shortly after the Relevant Date.[39] Put simply, the Opponent’s evidence does not extend beyond demonstrating non-use of the Trade Mark in relation to the Disputed GS. As such, I am not satisfied that the Opponent has established a prima facie case sufficient to shift the onus.
[37] Cf Red Hat Inc v Mary-Ann Martinek [2002] ATMO 33 wherein the applicant admitted in written correspondence with the opponent that she had no intention to use the trade mark in respect of ‘computer operating systems or training people in the use of operating systems’.
[38] Cf Greenfield Products Pty Ltd v Yellowstrom Verwaltungsgesell mbH [2007] ATMO 27, [11].
[39] See Annexure GMC-5 to the Chambers Declaration. This material states that the Holder belongs to the Wirtgen Group which has an annual turnover of approximately €3 billion. It also states that in 2017, Wirtgen entered into an agreement with John Deere to be purchased for $5.2 billion. The latter is consistent with the material in Annexure 3 to the BA Declaration which states John Deere acquired Wirtgen with a ‘multi-billion deal’.
52. The s 59 ground of opposition has not been established.
Decision
53. Regulation 17A.34N(1) of the Regulations provides:
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 the grounds on which the IRDA was opposed have been established.
54. The Opponent has not established a ground of opposition. Accordingly, protection of the Trade Mark may be extended to Australia one month from the date of this decision. If the Registrar is served with a notice of appeal before that time, I direct that the extension of protection shall not occur until the appeal has been decided or discontinued and that the disposition of the IRDA be in accordance with the court’s order or direction.
Costs
55. Both parties sought an award of costs. Costs usually follow the event. Accordingly, I award costs against the Opponent per s 221 of the Act in the amounts set out in Schedule 8 of the Regulations.
Nicholas Barbey
Hearing Officer
Delegate of the Registrar of Trade Marks
3 September 2021
Annexure 1
Class 1: Chemicals for purifying exhaust gases in chemical processes; chemicals for reducing emissions of harmful substances in exhaust gases from internal combustion engines; chemical additives for fuels, lubricants and industrial oils; filtering materials made from chemical and non-chemical substances; urea (organic compound); fluids for hydraulic circuits; urea (organic compound) and urease (enzyme) in the form of additives in connection with the aforesaid goods, included in this class
Class 4: Filling and lubricating accessories; gearbox oil; hydraulic oil; engine oil; lubricants; lubricants; industrial oils and greases; additives in connection with the aforesaid goods, included in this class
Class 6: Joining pieces; joists; hinges; fixing materials; containers; sheets and plates of metal; bolts; expansion sleeves; wall plugs; grilles; handles; straps; hooks; non-electric cables and wires of common metal; caps; wedges; chains; ball bearings; ducts; structures of metal; goods of metal, in particular construction elements, building materials, receptacles, containers, storage articles, ducts, pipes, hoses, silos, tanks, transport articles, packaging articles, cylinders; model vehicles and machines; nuts; rivets; pallets; slabs; bolts; rings; reels; hinges; discs; neck rings; metal rails; signals and signalling panels; ironmongery, small items of metal hardware; locks, keys, key-rings; screws; screw connections; protective screens, roofs and strips; circlips; security pins; bungs; stoppers; stays, not of metal; telescopic pipes; connectors; fastening devices; walls; tool chests, empty; parts, replacement parts and accessories for the aforesaid goods; all of the aforesaid goods consisting of metal, not for electric purposes
Class 7: Mechanically operated construction apparatus; construction machines; dispensing machines; asphalt finishers; asphalt paving machines; loaders; feeders; feed vehicles; concrete construction machines; earth-moving machinery; conveyors and conveying installations; abrading machines; loading ramps; machines for treatment, application, finishing, manufacturing, post-treatment, structuring, fastening and/or distribution of road surfaces; landfill construction machines; machines for manufacturing and processing polymers, bitumen, concrete and asphalt; road repairing machines; machines for treatment of materials and for manufacturing; mixing installations and machines; levellers; levelling systems; oscillating and vibrating drives and systems; shakers; spraying and atomisation machines; tamping rams; road making machines; road finishers; spreading machines; compacting apparatus and machines; vibrators; jacks; feeding machines and devices; rubber covering and sealing strips; copings; impression rollers; separators; shoring; axles; starters for motors and engines; drive aids, chains, wheels, rollers and/or shafts; exhausts; belt coverings; controls; dustpans; floor panels; beams, extending screeds, screeds; beam attachment parts; bolts; brakes; brake segments; brake linings; brake callipers; brushes; gaskets; pressure intensifiers; pressure converters; pressure transformers; nozzles; emulsion spray installations; driver cabs; travelling gears; crawler tracks; spring steel strips; springs; spring assemblies; wheel rims; filters (oil filters, fuel filters, air filters, pneumatic filters, hydraulic filters and/or water filters); filter housings; pulleys; belts for conveyors, conveying apparatus and conveyor chains; guide rails and rollers; joints; generators; gears; screed plates; sliding blocks; girths; hand-held tools, other than hand-operated; hydraulic pumps; hydraulic engines and motors; hydraulic hoses; hydraulic valves; oil hydraulic cylinders; hydro installations; hydro valves; hydro hoses; hydro cylinders; limiting plates; body parts; v-belts; grooved pulleys; chains; cam sprockets; clack valves; pistons [parts of machines or engines]; piston rods; compressors; power bands; scraper belt coverings; scraper belt chains; scraper belt controllers; scraper chains; scraper bars; cooling radiators; closure caps for radiators; clutches; bearings; bearing blocks; track chains and/or rollers; rubbers for material hoppers; flow dividers; motors and engines (except for land vehicles); oil mist apparatus; fitted awnings for machines; discs; pressure bars; pumps [machines]; gear pump distributors; wheels; wheelworks; regulators; tyres; belting; belt pulleys; guttering; pipes; rollers; roller chains; gratings; rotors; exhaust silencers; slide valves; installations for lubricating purposes; snails; auger blades; worm gears; auger controllers; screw shafts; fly wheels; sensors; sifters; clamping sleeves; tensioners; mirrors (looking glass); spraying booms; control stands; control blocks; hydraulic, mechanical or pneumatic control devices; shock absorber; bumpers; tampers; tamper bearings; tamper bars; tanks; telescopic pipes; heat sealers; load-bearing rollers; hoppers; tumblers; idling pulleys; casings for parts of machines; cooling fans; valves (in particular directional valves), stop valves, pressure valves, pressure reducer valves; flow control valves, servo-valves; compacting assemblies; distributors; spreading augers; vibrators; transmission components; walls; heat-exchangers; shafts; tools; wheelwork; sparking-plugs; cyclone separators; cylinders; power operated tools; generators; hydraulic tools; pistons [parts of machines or engines]; piston rods; hydraulic motors; bearings; pumps (in particular lubricant and hydro pumps); alternators; direct current generators; pressure sprayers, grease guns and funnel tubes (machines); parts, replacement parts and accessories for the aforesaid goods
Class 8: Hand-operated apparatus, pumps and tools; pocket knives; cases for tools; parts, replacement parts and fittings for all of the aforesaid goods
Class 9: Scientific, surveying, photographic, cinematographic, optical, weighing, measuring, signalling, checking (supervision), control and regulating apparatus and instruments; apparatus, equipment and instruments for the conducting, switching, converting, storage, regulating and controlling of electricity; apparatus and instruments for capturing, recording, transmission, reception or reproduction of sound, images and data; impression rollers; push beams; analysis and diagnostic apparatus; connection units; antennas; aerial installations; indication panels; audio devices and radio receivers; suspension apparatus; batteries; battery chargers; command panels; control apparatus; control desks; frame sensors; can modules; computers; peripherals adapted for use with computers; data carriers for recording images, sound and data; detectors; displays; metering installations; dosimeters; wires; pressure switches; pressure sensors; electric and electronic apparatus, devices and equipment for telematics, telecommunications and/or data processing purposes; electric and electronic apparatus, devices and equipment for operation and error analysis; electric switchboxes, switch cabinets and distribution boards; electrical circuits and circuit boards; electric and electronic equipment for lifting or lowering machines or parts of machines; electrical amplifiers; electronic modules; electrostatic precipitators; detection instruments, apparatus, regulators and devices; electric tools; receiving apparatus; remote control apparatus; fire-extinguishing apparatus; films for educational purposes; filters; filter components; radiocommunication apparatus; generators; graphic equalizers; hardware; height sensors; horns; hydraulic tools; hydraulic motors; hydro cylinders; pulse generators; information technology and audiovisual apparatus; joy sticks; cables; cable harnesses; cable contacts; cable loops; clips; pistons; piston rods; communications equipment; bearings; lasers; laser, infrared and ultrasound apparatus, devices and instruments; loudspeakers; light diodes; luminous signs; magnets; magnetising and demagnetising apparatus; rubbers for material hoppers; navigation, orientation, positioning, location tracking, target tracking and mapping apparatus and instruments; gradient sensors; levelling apparatus, devices and instruments; levelling systems; oil level indicators; boards; proportional amplifiers; testing and quality control apparatus and instruments; pumps (in particular lubricant and hydro pumps); calculators; reflectors; regulators; relay; image scanning apparatus; commutators; keys; keycards; protective apparatus and equipment; transmitters; sensors, in particular level sensors and overfill sensors; safety apparatus and equipment; safety apparatus and equipment; fuses; signals and signalling panels; instrumentation simulators; ski sensors; software; mirrors; steel cores; control apparatus, instruments, regulators and devices; control units, apparatus and systems; components for electric circuits; buzzers; tanks; keyboards; ultrasound sensors; monitoring instruments, apparatus, regulators and devices; USB flash drives; valves; scales; gear pumps; central processing units; parts, spare parts and fittings for the aforesaid goods
Class 11: Lighting apparatus and installations; alternators; DC generators; electric screed heaters; gas filters; power generators; heating components; heating apparatus and installations; heating rods; insulating material; refrigerating apparatus and installations; luminaires; light reflectors; air filters; air, gas and water purifying apparatus and installations; ventilation apparatus and installations; pumps; radiators; vehicle headlamps; pocket searchlights; ventilating and air conditioning apparatus and installations; water filters; water supply apparatus and installations; parts, replacement parts and fittings for all of the aforesaid goods
Class 12: Vehicles; transport means; towing trucks; parts, replacement parts and fittings for the aforesaid goods, in particular strippers, drive units, floor boards, braking installations, brakes, brake segments, brake linings, brake calipers, rims, couplings, wheels, tyres, crawler tracks, chains, drives, motors and engines, windscreen wipers, mirrors, machine transmission components
Class 16: Pencils; color pencils; fountain pens; ball pens; office requisites (except furniture); printed matter; disposable paper products; cases for business cards and for storing stationery; graphic representations; calendars; cards; instructional and teaching material (except apparatus); note pad boxes; writing sets; stationery; bags, pouches and goods for packaging, wrapping and storage purposes; plastic materials for packaging (not included in other classes); parts, replacement parts and fittings for all of the aforesaid goods
Class 17: Packing, stopping and insulating materials; ducts, pipes, connectors and connections; hoses, hosepipes and hose connections, not of metal; cables; finished or semi-finished products designed for a specific use, included in this class, namely coverings and sleeves, clutch linings and brake linings; seals; parts, replacement parts and fittings for all of the aforesaid goods
Class 20: Tags; containers, and closures and holders therefor; containers (not of metal); displays, stands and signage; overhead rail systems; pots; crates and pallets, non-metallic; stairs and escalators; model vehicles and machines, not of metal; lubricant and hydraulic reservoirs of plastic; seats; tension reel; statues, figures, works of art; tanks, not made of metal nor of masonry; telescopic tubes of plastic; goods, not of metal, namely support devices, armrests, fasteners, bolts, staves, dowels, shelves, joints, handles, hooks, holders, chain links, clack valves, clips, masts, nuts, nails, rivets, poles, protectors, bolts, rings, suction cups, clamps, rails, locks, keys, key rings, screws, spiral springs, coils, bungs, rods, stackable adapters, washers, valves, stiffening materials, pennant holders; connectors and connections; non-metallic tool chests [empty]; tent parts; parts, replacement parts and accessories for the aforesaid goods
Class 21: Household or kitchen utensils and containers; glass ware, porcelain and earthenware; model vehicles and machines (ornaments) of stone, glass or porcelain; statues, figurines, signs and works of art, included in this class; plates; containers; bottles; loudspeakers; cups; tins; pots; funnels; parts, replacement parts and accessories for the aforesaid goods
Class 28: Model vehicles and machines (miniatures); model vehicles and machines (playthings); toys; games; playthings and curiosities; sporting articles and equipment; parts, accessories and spare parts for all the aforesaid goods
Class 35: Wholesaling, retailing and international trade, including by means of mail order catalogues or with the aid of electronic media, namely of the following goods; chemicals for purifying exhaust gases in chemical processes, chemicals for reducing emissions of harmful substances in exhaust gases from internal combustion engines, chemical additives for fuels, lubricants and industrial oils, filtering materials consisting of chemical and non-chemical substances, urea (organic compound), fluids for hydraulic circuits, filling and lubricating accessories, gearbox oil, hydraulic oil, motor oil, lubricants, pressure sprayers (lubricant requisites), grease guns (lubricant requisites), filling cans (lubricant requisites), funnel tubes (lubricant requisites), lubricants, industrial oils and greases, connectors, beams, bands, fasteners, containers, sheets and plates of metal, bolts, expansion sleeves, dowels, grilles, handles, belts, hook, non-electric cables and wires of metal, caps, wedges, chains, ball-bearings, ducts, structures of metal, goods of metal, in particular construction elements, building materials, receptacles, containers, storage articles, ducts, pipes, hoses, silos, tanks, transport articles, packaging articles, cylinders, model vehicles and machines, nuts, rivets, pallets, panels, bolts, rings, rollers, hinges, washers, clamps, rails, signals and signalling panels, ironmongery, and small items of metal hardware, locks, keys, key rings, screws, screw connections, protective screens, roofs and strips, circlips, locking pins, bungs, stoppers, props, telescopic tubes, couplings, closures, walls, tool chests, mechanically operated building equipment, construction equipment, dispensing machines, asphalt pavers, asphalting machines, loaders, feeders, feed vehicles, concrete construction machines, earth-moving machines, conveyors and conveying installations, smoothing machines, loading ramps, machines for treatment, application, finishing, manufacturing, post-treatment, structuring, fastening and/or distribution of road surfaces, landfill construction machines, machines for processing and manufacturing asphalt, concrete, bitumen and polymers, road repairing machines, machines for treatment of materials and production, mixing installations and machines, levellers, levelling systems, oscillating and vibrating drives and systems, shakers, spraying and atomisation machines, crushing machines, road making machines, road pavers, spreading machines, compacting apparatus and machines, vibrators, lifting jacks, feeding machines and devices, rubber covering and sealing strips, coverings, impression rollers, separators, supports, axles, starters, drive aids, chains, wheels, rollers and/or shafts, exhaust systems, belt coverings, operating elements, base plates, floor boards, beams, extending screeds, paving screeds, beam attachment parts, bolts, brakes, brake segments, brake linings, brake calipers, brushes, gaskets, pressure intensifiers, pressure converters, pressure transducers, nozzles, emulsion spray installations, drivers' cabs, chassis, crawler tracks, spring steel strips, springs, spring assemblies, rims, filters (oil filters, fuel filters, air filters, pneumatic filters, hydro filters and/or water filters); filter housings; pulleys; belts for conveyors, conveying apparatus and conveyor chains, guide rails and rollers, joints, generators, gears, screed plates, sliding blocks, belts, hand-held tools, other than hand-operated, hydraulic pumps, hydraulic engines and motors, hydraulic hoses, hydraulic valves, hydraulic cylinders, hydro installations, hydro valves, hydro hoses, hydro cylinders, limiting plates, bodywork parts, V-belts, V-belt pulleys, chains, chain wheels, clack valves, pistons, piston rods, compressors, power belts, scraper belt coverings, scraper belt chains, scraper belt controllers, scraper chains, scraper bars, radiators, closure caps for radiators, couplings, bearings, bearing blocks, track chains and/or rollers, rubbers for material hoppers, flow dividers, engines, other than for land vehicles, oil mist apparatus, fitted covers for machines, panels, pressure bars, pumps, gear pump distributors, wheels, wheelworks, regulators, tyres, straps, pulleys, channels, pipes, rollers, roller chains, grids, rotors, mufflers, valves, lubricating installations, augers, auger blades, worm gears, auger controllers, screw shafts, fly-wheels, sensors, screens, adapter sleeves, tensioning devices, mirrors, spray bars, control stands, control blocks, hydraulic, mechanical or pneumatic control devices, shock absorbers, bumpers, tampers, tamper bearings, tamper bars, tanks, telescopic tubes, thermal elements, load-bearing rollers, funnels, tumblers, deflection rollers, casings for parts of machines, fans, valves (in particular directional valves, stop valves, pressure valves, pressure reducer valves, flow control valves, servo valves), compacting assemblies, distributors, spreading augers, vibrators, machine transmission components, walls, heat exchangers, shafts, tools, toothed wheels, spark plugs, cyclone separators, cylinders, electric tools, generators, hydraulic tools, pistons, piston rods, hydraulic motors, bearings, pumps (in particular lubricating and hydro pumps), alternators, direct current generators, hand-operated apparatus, pumps and tools, pocket knives, scientific, surveying, photographic, cinematographic, optical, weighing, measuring, signalling, checking (supervision), control and regulating apparatus and instruments, devices, apparatus and instruments for conducting, switching, transforming, accumulating, regulating or controlling electricity, apparatus and instruments for capturing, recording, transmission, receiving or reproduction of sound, images or data, impression rollers, push beams, analysis and diagnostic apparatus, connecting parts, aerials, aerial installations, notice boards, audio equipment and radio receivers, mounts, batteries, battery chargers, operating consoles, operating apparatus, control panels, frame sensors, CAN modules, computers, computer peripherals, data carriers for recording images, sound and data, detectors, gaskets, displays, dosing installations, dosing dispensers, wires, pressure switches, pressure sensors, electric and electronic apparatus, devices and equipment for telematics, telecommunications and/or data processing purposes, electric and electronic apparatus, devices and equipment for operation and error analysis, electric switchboxes, switch cabinets and distribution boards, electric circuits and circuit boards, electric and electronic apparatus for lifting or lowering machines and parts of machines, electric amplifiers, electronic modules, electrostatic precipitators, detection instruments, apparatus, regulators and devices, receivers, remote control devices, fire-extinguishing apparatus, films for educational purposes, filters, filter components, radio communications apparatus, graphic equalisers, hardware, height sensors, horns, hydro motors, hydro cylinders, pulse generators, information technology and audiovisual apparatus, joysticks, cables, cable harnesses, cable contacts, cable loops, clips, communications equipment, lasers, laser, infrared and ultrasound apparatus, devices and instruments, loudspeakers, light-emitting diodes, signalling lights, magnets, magnetisers and demagnetisers, rubbers for material hoppers, navigation, orientation, positioning, location tracking, target tracking and mapping apparatus and instruments, gradient sensors, levelling apparatus, devices and instruments, levelling systems, oil level indicators, circuit boards, proportional amplifiers, testing and quality control apparatus and instruments, calculating machines, reflectors, regulators, relays, scanners, switches, keys, key cards, protective apparatus and equipment, transmitters, sensors (in particular level sensors and overfill sensors), security apparatus and equipment, safety apparatus and equipment, fuses, signals and signalling panels, simulators, ski sensors, software, mirrors, steel cores, control apparatus, instruments, regulators and devices, control units, apparatus and systems, circuit elements, buzzers, keyboards, ultrasound sensors, monitoring instruments, apparatus, regulators and devices, USB flash drives, valves, scales, gear pumps, central processing units, lighting apparatus and installations, electric screed heaters, gas filters, heating elements, heating apparatus and installations, heating rods, refrigerating apparatus and installations, lights, light reflectors, air filters, air, gas and water purifying apparatus and installations; ventilating apparatus and installations, radiators, headlights, electric pocket torches, ventilating and air conditioning apparatus and installations, water filters, water supply apparatus and installations, vehicles, conveyances, tractors, strippers, drive units, floor boards, braking installations, brakes, brake segments, brake linings, brake calipers, rims, couplings, wheels, tyres, crawler tracks, chains, drives, motors and engines, windscreen wipers, mirrors, machine transmission components, pencils, coloured pencils, fountain pens, ball-point pens, office requisites (except furniture), printed matter, disposable paper articles, cases for business cards and for storing stationery, graphic representations,calendars, cards, instructional and teaching material (except apparatus), note pad boxes, stationery sets, stationery, bags, pouches and goods for packaging, wrapping and storage purposes, plastic materials for packaging, packing, stopping and insulating materials, ducts, pipes, connectors and connections, hoses, hosepipes and hose connections, not of metal, cables, finished or semi-finished products designed for a specific use, namely coverings and sleeves, clutch linings and brake linings, fitted tool chests, not of metal, trailers, containers, and closures and holders therefor; containers (not of metal), displays, stands and signage, overhead rail systems, cans, boxes and pallets (not of metal), ladders and mobile steps, model vehicles and machines, not of metal, lubricants and hydraulic containers of plastic, seats, tension rollers, statues, figurines, works of art, tanks, not of metal nor of masonry, telescopic tubes of plastic, goods, not of metal, namely support devices, armrests, fasteners, bolts, staves, dowels, shelves, joints, handles, hooks, holders, chain links, clack valves, clips, masts, nuts, nails, rivets, poles, protectors, bolts, rings, suction cups, clamps, rails, locks, keys, key rings, screws, spiral springs, coils, bungs, rods, stackable adapters, washers, valves, stiffening materials, pennant holders, connectors and connecting parts, empty tool chests, not of metal, tent parts, household or kitchen utensils and containers, glassware, porcelain and earthenware, model vehicles and machines (ornaments) of stone, glass or porcelain, statues, figurines, signboards and works of art, dishes, containers, bottles, boxes, cups, cases, cans, funnels, scale model vehicles and machines, model vehicles and machines (toys), toys, games, playthings and novelties, sporting articles and equipment, and parts, replacement parts and fittings therefor; agency business; procurement services, for others; ordering services; operation of a hotline for information, complaints and emergencies; professional business analysis, information and research; professional business consulting; data processing; electronic retrieval and storage of data; preparation of cost-benefit analyses, cost-price analyses and professional business workload studies; compilation of statistics; business management; import and export services; business information; commercial services; marketing and promotion services; arranging business contacts; organisational planning of operating times and locations for mechanical engineering and electrical engineering goods, structural engineering, civil engineering and mining goods, industrial installations, vehicles, equipment and machines; organizational project management; organisational management of vehicle and machine fleets and consultancy relating thereto; product demonstrations and product display services; quality management, namely process optimisation; business management and organisation consultancy; business administration; arranging and organising of trade fairs for trade and advertising purposes; negotiation and mediation services; advertising; compilation and systemisation of data and information into electronic databases
Class 37: Building construction; installation, cleaning, repair and maintenance of building equipment, construction equipment, dispensing machines, asphalt pavers, asphalting machines, loaders, feeders, feed vehicles, concrete construction machines, earth-moving machines, conveyors and conveying installations, smoothing machines, loading ramps, machines for treatment, application, finishing, manufacturing, post-treatment, structuring, fastening and/or distribution of road surfaces, landfill construction machines, machines for processing and manufacturing asphalt, concrete, bitumen and polymers, road repairing machines, machines for treatment of materials and production, mixing installations and machines, levellers, levelling systems, oscillating and vibrating drives and systems, shakers, spraying and atomisation machines, crushing machines, road making machines, road pavers, spreading machines, compacting apparatus and machines, vibrators, lifting jacks, feeding machines and devices, beams, rubber covering and sealing strips, coverings, impression rollers, separators, supports, axles, starters, drive aids, chains, wheels, rollers and/or shafts, exhaust systems, belt coverings, operating elements, base plates, floor boards, beams, extending screeds, paving screeds, beam attachment parts, bolts, brakes, brake segments, brake linings, brake calipers, brushes, gaskets, pressure intensifiers, pressure converters, pressure transducers, nozzles, emulsion spray installations, drivers' cabs, chassis, crawler tracks, spring steel strips, springs, spring assemblies, rims, filters (oil filters, fuel filters, air filters, pneumatic filters, hydro filters and/or water filters); filter housings; pulleys; belts for conveyors, conveying apparatus and conveyor chains, guide rails and rollers, joints, generators, gears, screed plates, sliding blocks, belts, hand-held tools, other than hand-operated, hydraulic pumps, hydraulic engines and motors, hydraulic hoses, hydraulic valves, hydraulic cylinders, hydro installations, hydro valves, hydro hoses, hydro cylinders, limiting plates, bodywork parts, V-belts, V-belt pulleys, chains, chain wheels, clack valves, pistons, piston rods, compressors, power belts, scraper belt coverings, scraper belt chains, scraper belt controllers, scraper chains, scraper bars, radiators, closure caps for radiators, couplings, bearings, bearing blocks, track chains and/or rollers, rubbers for material hoppers, flow dividers, engines, other than for land vehicles, oil mist apparatus, fitted covers for machines, panels, pressure bars, pumps, gear pump distributors, wheels, wheelworks, regulators, tyres, straps, pulleys, channels, pipes, rollers, roller chains, grids, rotors, mufflers, valves, lubricating installations, augers, auger blades, worm gears, auger controllers, screw shafts, fly-wheels, sensors, screens, adapter sleeves, tensioning devices, mirrors, spray bars, control stands, control blocks, hydraulic, mechanical or pneumatic control devices, shock absorbers, bumpers, tampers, tamper bearings, tamper bars, tanks, telescopic tubes, thermal elements, load-bearing rollers, funnels, tumblers, deflection rollers, casings for parts of machines, fans, valves (in particular directional valves, stop valves, pressure valves, pressure reducer valves, flow control valves, servo valves), compacting assemblies, distributors, spreading augers, vibrators, machine transmission components, walls, heat exchangers, shafts, tools, toothed wheels, spark plugs, cyclone separators, cylinders, electric tools, generators, hydraulic tools, pistons, piston rods, hydraulic motors, bearings, pumps (in particular lubricating and hydro pumps), alternators, direct current generators, hand-operated apparatus, pumps and tools, pocket knives, scientific, surveying, photographic, cinematographic, optical, weighing, measuring, signalling, checking (supervision), control and regulating apparatus and instruments, devices, apparatus and instruments for conducting, switching, transforming, accumulating, regulating or controlling electricity, apparatus and instruments for capturing, recording, transmission, receiving or reproduction of sound, images or data, impression rollers, push beams, analysis and diagnostic apparatus, connecting parts, aerials, aerial installations, notice boards, audio equipment and radio receivers, mounts, batteries, battery chargers, operating consoles, operating apparatus, control panels, frame sensors, CAN modules, computers, computer peripherals, data carriers for recording images, sound and data, detectors, gaskets, displays, dosing installations, dosing dispensers, wires, pressure switches, pressure sensors, electric and electronic apparatus, devices and equipment for telematics, telecommunications and/or data processing purposes, electric and electronic apparatus, devices and equipment for operation and error analysis, electric switchboxes, switch cabinets and distribution boards, electric circuits and circuit boards, electric and electronic apparatus for lifting or lowering machines and parts of machines, electric amplifiers, electronic modules, electrostatic precipitators, detection instruments, apparatus, regulators and devices, receivers, remote control devices, fire-extinguishing apparatus, films for educational purposes, filters, filter components, radio communications apparatus, graphic equalisers, hardware, height sensors, horns, hydro motors, hydro cylinders, pulse generators, information technology and audiovisual apparatus, joysticks, cables, cable harnesses, cable contacts, cable loops, clips, communications equipment, lasers, laser, infrared and ultrasound apparatus, devices and instruments, loudspeakers, light-emitting diodes, signalling lights, magnets, magnetisers and demagnetisers, rubbers for material hoppers, navigation, orientation, positioning, location tracking, target tracking and mapping apparatus and instruments, gradient sensors, levelling apparatus, devices and instruments, levelling systems, oil level indicators, circuit boards, proportional amplifiers, testing and quality control apparatus and instruments, calculating machines, reflectors, regulators, relays, scanners, switches, keys, key cards, protective apparatus and equipment, transmitters, sensors (in particular level sensors and overfill sensors), security apparatus and equipment, safety apparatus and equipment, fuses, signals and signalling panels, simulators, ski sensors, software, mirrors, steel cores, control apparatus, instruments, regulators and devices, control units, apparatus and systems, circuit elements, buzzers, keyboards, ultrasound sensors, monitoring instruments, apparatus, regulators and devices, USB flash drives, valves, scales, gear pumps, central processing units, lighting apparatus and installations, electric screed heaters, gas filters, heating elements, heating apparatus and installations, heating rods, refrigerating apparatus and installations, lights, light reflectors, air filters, air, gas and water purifying apparatus and installations; ventilating apparatus and installations, radiators, headlights, electric pocket torches, ventilating and air conditioning apparatus and installations, water filters, water supply apparatus and installations, vehicles, conveyances, tractors, strippers, drive units, floor boards, braking installations, brakes, brake segments, brake linings, brake calipers, rims, couplings, wheels, tyres, crawler tracks, chains, drives, motors and engines, windscreen wipers, mirrors, machine transmission components, packing, stopping and insulating materials, ducts, pipes, connectors and connections, hoses, hosepipes and hose connections, not of metal, cables, finished or semi-finished products designed for a specific use, namely coverings and sleeves, clutch linings and brake linings, fitted tool chests, not of metal, trailers, containers, and closures and holders therefor; containers (not of metal), displays, stands and signage, overhead rail systems, cans, boxes and pallets (not of metal), ladders and mobile steps, model vehicles and machines, not of metal, lubricants and hydraulic containers of plastic, seats, tension rollers, statues, figurines, works of art, tanks, not of metal nor of masonry, telescopic tubes of plastic, goods, not of metal, namely support devices, armrests, fasteners, bolts, staves, dowels, shelves, joints, handles, hooks, holders, chain links, clack valves, clips, masts, nuts, nails, rivets, poles, protectors, bolts, rings, suction cups, clamps, rails, locks, keys, key rings, screws, spiral springs, coils, bungs, rods, stackable adapters, washers, valves, stiffening materials, pennant holders, connectors and connecting parts, empty tool chests, not of metal, tent parts, and parts, replacement parts and fittings therefor; application of surface coatings; building consultancy; construction management; building, construction and demolition; construction of tips; frost-proofing; manufacturing, installation, cleaning, repair and maintenance of structures of metal; construction and civil engineering; installation, cleaning, repair and maintenance in relation to structures and roads, computer hardware, mechanical and electrical engineering products, structural and civil engineering and mining products, industrial installations, vehicles, machines and apparatus, and parts therefor; sewer construction; street construction; rental, hiring and leasing of construction equipment; rental and leasing of objects in connection with providing the aforesaid services; advisory, consultancy and information services relating to all the aforesaid services
Class 38: Providing of access to electronic databases and communications networks; services in the field of telematics, included in class 38; communications services for the exchange of data in electronic form; communications by means of radio, computer, the Internet, satellite, telematics, cables and digital transmission; telecommunication services; rental of access time to electronic databases and communications networks; rental and leasing of objects in connection with providing the aforesaid services; rental of access times for enabling the use of non-downloadable online software; advisory, consultancy and information services relating to the aforesaid services
Class 41: Providing of training; education; education; organisation, arranging and conducting of courses, workshops and seminars; courses, in particular relating to occupational safety and the operation, use, repair and maintenance of vehicles, equipment and machines, and parts therefor; driving instruction; rental and leasing of objects in connection with providing the aforesaid services; advisory, information and consultancy services relating to any of the aforesaid services
Class 42: Application technology consultancy and technical support; building design services; consultancy relating to the operation of vehicles, equipment and machines, and parts therefor; design services; design and development of computer hardware and software; product research and development; development of industrial processes, new products and technologies, mechanical and electrical engineering products, structural and civil engineering and mining products, industrial installations, vehicles, apparatus and machines, and parts therefor; surveying; troubleshooting and fault diagnosis relating to computer hardware, computer software, mechanical engineering and electrical engineering products, structural engineering, civil engineering and mining products, industrial installations, vehicles, equipment and machines, and parts therefor; remote control, remote monitoring, remote maintenance, electronic location tracking; research in the fields of mechanical engineering, electrical engineering and construction; industrial analysis and research services; engineering services; IT services; construction drafting and design; measurement services; testing, safety testing, technical testing, authentication and quality control; technical consultancy in the field of telematics; engineering design and consultancy; technical development of models and concepts to be implemented for the operation, production and logistics of commercial enterprises; technical development of usage concepts; engineering project management services; technical testing services; technological services, namely obtaining and analysing data in relation to construction processes; technical evaluation of data in relation to construction processes; weather forecasting; scientific and technological services and research and design relating thereto; rental and leasing of objects in connection with providing the aforesaid services; consultancy and information relating to the aforesaid services
Key Legal Topics
Areas of Law
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Intellectual Property
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Administrative Law
Legal Concepts
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Statutory Construction
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Judicial Review
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Standing
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