Opposition by Newzone Nominees Pty Ltd to registration of trade mark application number 1880059 (class 7) – TURBODRUM – in the name of IP Machinery Pty Ltd
[2021] ATMO 81
•6 August 2021
TRADE MARKS ACT 1995
DECISION OF A DELEGATE OF THE REGISTRAR OF TRADE MARKS WITH REASONS
Re:Opposition by Newzone Nominees Pty Ltd to registration of trade mark application number 1880059 (class 7) – TURBODRUM – in the name of IP Machinery Pty Ltd
| Delegate: | Nicholas Barbey |
| Representation: | Opponent: Not represented at hearing Applicant: Nico de Jong of TheLoft.Legal Pty Ltd |
| Decision: | 2021 ATMO 81 Trade Marks Act 1995 (Cth) – opposition under section 52 – ss 43, 58, 60 and 62A pursued – none established – trade mark to proceed to registration |
Background
This decision concerns an opposition brought by Newzone Nominees Pty Ltd (‘Opponent’) pursuant to s 52 of the Trade Marks Act 1995 (Cth) (‘Act’) to registration of the following trade mark:
Trade Mark: (‘Trade Mark’)
Application Number: 1880059
Applicant: IP Machinery Pty Ltd (‘Applicant’)
Filing Date: 13 October 2017
Specification: Class 7: fittings for agricultural harvesting machines, namely feeder drums for combine harvesters
Endorsement: Evidence and/or other circumstances provided under subsection 41(4)
The acceptance of the Trade Mark was advertised in the Australian Official Journal of Trade Marks on 26 August 2019. The Opponent filed a notice of intention to oppose on 26 September 2019 followed by a Statement of Grounds and Particulars (‘SGP’) on 25 October 2019. The SGP was found to be partially inadequate and the Opponent subsequently rectified the SGP on 6 December 2019. The Applicant filed a notice of intention to defend on 17 January 2020.
Neither party filed evidence in this matter. The Applicant requested to be heard and filed submissions on 28 May 2021. The Opponent did not file submissions and was not represented at the hearing. As a delegate of the Registrar of Trade Marks, I heard this matter by telephone conference on 4 June 2021. The Applicant was represented at the hearing by Nico de Jong of TheLoft.Legal Pty Ltd.
Grounds of opposition, onus and standard of proof
The rectified SGP nominated grounds of opposition under ss 43, 58, 60 and 62A of the Act. 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).
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 13 October 2017, being both the filing and priority date of the Trade Mark.
Discussion
[2] Telstra Corporation Limited v Phone Directories Company Pty Ltd [2015] FCAFC 156, [133] (Besanko, Jagot and Edelman JJ).
Sections 60 & 62A
It is convenient to first address the grounds of opposition raised under s 60 and s 62A of the Act. In the present matter, the Opponent has filed no evidence in support of its opposition nor provided submissions. As such, its prospects of successfully opposing the Trade Mark are wholly reliant on the information contained in the rectified SGP.
It is well established that the mere filing of a notice of opposition[3] will not discharge the Opponent’s onus of proof under s 60 or s 62A of the Act.[4] This is because these grounds of opposition require evidence to support the claims made in the rectified SGP. Here, no evidence or submissions have been filed to corroborate that a reputation existed in another trade mark or that the application for the Trade Mark was made in bad faith.
[3] Trade Mark Regulations 1995 (Cth) reg 5.5(1) provides that the components of a notice of opposition are the notice of intention to oppose and the statement of grounds and particulars.
[4] See, eg, Sugarlean Pty Ltd v Joseph Seccas [2020] ATMO 90, [21]; MBIP Nominees Pty Ltd as trustee for the Mecca Brands IP Unit Trust v Meeka Pty Ltd [2020] ATMO 13, [12]; ALDI Foods Pty Ltd v Alda Communication Training Company LLC [2019] ATMO 18, [9]; Murrays Craft Brewing Co Pty Ltd v Artemis IP Limited [2018] ATMO 72, [10]; Andando Pty Ltd v DDT Liners (Australia) Pty Ltd [2017] ATMO 124, [12]–[13]; Medley Distilling Co v Croakers Gully Australia Pty Ltd [2000] ATMO 133.
Accordingly, the s 60 and s 62A grounds of opposition are not established.
Section 43
Section 43 of the Act provides:
Trade mark likely to deceive or cause confusion
An application for the registration of a trade mark in respect of particular goods or services must be rejected if, because of some connotation that the trade mark or a sign contained in the trade mark has, the use of the trade mark in relation to those goods or services would be likely to deceive or cause confusion.
10. To establish this ground, the Opponent must show that there is a connotation within the Trade Mark itself and, because of this connotation, the use of the Trade Mark would be likely to deceive or cause confusion.
11. The ground of opposition was particularised in the rectified SGP as follows:
The Applicant is a company set up by Mr Michael Fels. Mr Fels has provided the Opponent marketing and sales services in relation to the sale by the Opponent of the ''TURBODRUM", being an adapted feed drum used with harvesting machinery.
The mark the subject of the Opposed Application has been used in the marketplace in relation to the Opponent's ''TURBODRUM business" since about October 2016.
Given that the mark the subject of the Opposed Application is identical to the mark that the Opponent has been using in relation to its TURBODRUM products, registration of the Opposed Application in relation to agricultural machinery and the associated goods claimed in the class 7 specification, would be likely to deceive or cause confusion. This is because people will mistakenly think that the Applicant is or is associated with the Opponent and/or its TURBODRUM products, especially given that specialised nature of the relevant market.
The mark the subject of the Opposed Application is therefore likely to deceive or cause confusion in the marketplace.
12. Leaving to one side the absence of any evidence to substantiate these particulars, there is an underlying fallacy in the Opponent’s position. Section 43 of the Act is concerned with a connotation arising from the Trade Mark itself, not from a likelihood of deception or confusion arising as a result of similarities between the Trade Mark and another trade mark.[5] As such, the existence of the Opponent’s ‘TURBODRUM’ trade mark is immaterial to this ground.
[5] Pfizer Products Inc v Karam [2006] FCA 1663, [53] (Gyles J); Winton Shire Council v Lomas [2002] FCA 288, [19] (Spender J); T.G.I. Friday's Australia Pty Ltd v TGI Friday's Inc [2000] FCA 720, [43] (Wilcox, Kiefel & Emmett JJ).
13. There is no evidence before me to establish that the Trade Mark contains any connotation that is likely to deceive or cause confusion. Consequently, the s 43 ground of opposition is not established.
Section 58
14. Section 58 of the Act relevantly provides:
Applicant not owner of trade mark
The registration of a trade mark may be opposed on the ground that the applicant is not the owner of the trade mark.
15. The ground of opposition was particularised in the rectified SGP as follows:
The mark the subject of the Opposed Application has been used since about October 2016 by the Opponent in respect of agricultural machinery and in particular a part of such agricultural machinery being a replacement feeder device for use in certain models of combine harvester fronts, including models manufactured by MacDon, John Deere, Honeybee, Midwest and CNH.
The replacement feeder device comprises of a rotatable barrel-shaft shape which has a central axis and is mountable to the harvester front. Photographs of the agricultural machinery manufactured by the Opponent and advertised using the mark the subject of the Opposed Application are shown below.
16. The particulars provided under this ground of opposition fail to establish that the Applicant is not the owner of the Trade Mark. No evidence has been filed in support of the particulars other than three images of what is purportedly a ‘replacement feeder device’ (‘Opponent’s Product’). The images marked ‘Photo 2’ and ‘Photo 3’ are undated and do not demonstrate use of a sign that is at least substantially identical to the Trade Mark in relation to the Opponent’s Product. As such, these images do not assist the Opponent’s claim to ownership.
17. Meanwhile, the image marked ‘Photo 1’ seemingly shows the Opponent’s Product in a different environment to the location disclosed in ‘Photo 2’ and ‘Photo 3’. The Opponent’s Product in ‘Photo 1’ displays a sticker featuring the word ‘TURBODRUM’, however, the image is undated and insufficiently contextualised. Specifically, the trophy with the inscription ‘2017 AGRIBUSINESS INNOVATION OF THE YEAR’ that appears in the foreground of ‘Photo 1’ does not provide a cogent basis to conclude that the Opponent’s Product was created or provided in the course of trade prior to 2017. This is because a trophy can be inscribed with any word or image element, at any point of time. For example, a trophy could bear an inscription of ‘2017’ despite being manufactured and awarded in 2018. No explanation has been provided as to what this trophy relates to or, more generally, how this image is connected to the Opponent (or any other entity). Thus, no firm conclusions may be drawn from the inclusion of the trophy in ‘Photo 1’. As Mr de Jong submitted at the hearing, correctly in my view, the content of ‘Photo 1’ rises no higher than simply showing a photograph of something at some point in time.
18. Accordingly, the s 58 ground of opposition is not established.
Decision
19. Section 55 of the Act relevantly provides:
Decision
(1) Unless subsection (3) applies to the proceedings, the Registrar must, at the end, decide:
(a) to refuse to register the trade mark; or
(b) to register the trade mark (with or without conditions or limitations) in respect of the goods and/or services then specified in the application;
having regard to the extent (if any) to which any ground on which the application was opposed has been established.
20. The Opponent has not established a ground of opposition. It follows that trade mark application number 1880059 may proceed to registration one month from the date of this decision. If the Registrar is served with a notice of appeal before that time, I direct that registration shall not occur until the appeal has been decided or discontinued and the disposition of the application should be in accordance with the court’s order or direction.
Costs
21. The Applicant 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 Trade Mark Regulations 1995 (Cth).
Nicholas Barbey
Hearing Officer
Delegate of the Registrar of Trade Marks
6 August 2021
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