Opposition by SawStop, LLC to extension of protection under regulation 17A.33 of the Trade Marks Regulations 1995 (Cth) of trade mark number 2009777 (International Registration Number 1466799) (class 7) - PCS - in...

[2022] ATMO 12

TRADE MARKS ACT 1995

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

Re:Opposition by SawStop, LLC to extension of protection under regulation 17A.33 of the Trade Marks Regulations 1995 (Cth) of trade mark number 2009777 (International Registration Number 1466799) (class 7) - PCS - in the name of FELDER KG

Delegate:	Timothy Brown
Representation:	Opponent: Phillips Ormonde Fitzpatrick Holder: HWL Ebsworth Lawyers
Decision:	2022 ATMO 12 Trade Marks Regulations 1995 (Cth) – opposition to extension of protection under regulation 17A.33 – sections 42(b), 58 and 60 – no grounds established – extension of protection allowed

Background

1. This is an opposition brought by SawStop, LLC (‘Opponent’) to the extension of protection in Australia for the following International Registration Designating Australia:

   Trade Mark:   PCS (‘IRDA’)

   Trade Mark Number:         2009777

   IR Number:   1466799

   Holder:   FELDER KG (‘Holder’)

   Priority Date:   13 December 2018

   Specification:  Class 7: Woodworking machines; metalworking machines; machines for plastics working; machine tools (‘Holder’s Goods’).

2. The decision to accept the IRDA was notified in the Australian Official Journal of Trade Marks on 16 September 2019.

3. A Notice of Intention to Oppose was filed by the Opponent on 12 November 2019, followed by a Statement of Grounds and Particulars on 28 November 2019. The Holder subsequently filed a Notice of Intention to Defend on 5 February 2020. Evidence in Support was filed by the Opponent on 20 May 2020. No evidence was filed by the Holder.

4. Both parties requested a hearing by way of written submissions. The Opponent’s written submissions were filed on 17 September 2021. No submissions were made by the Holder.

5. As a delegate of the Registrar of Trade Marks, I have decided this matter with reference to the material filed during these proceedings.

   Grounds of Opposition, Onus and Relevant Date

6. Regulation 17A.34 of the Trade Marks Regulations 1995 (Cth) (‘Regulations’) provides that an extension of protection may be opposed on any of the grounds on which an International Registration Designating Australia may be rejected and also on the grounds set out in sections 58 to 61 and 62A of the Trade Marks Act 1995 (Cth) (‘Act’).

7. The nominated grounds of opposition are sections 42(b), 58 and 60 of the Act. The Opponent bears the onus of establishing one or more of the grounds of opposition.[1] The required standard of proof is on the balance of probabilities.[2]

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

   [2] Pfizer Products Inc v Karam (2006) FCA 1663, [6]-[26] (Gyles J); Telstra Corporation Limited v Phone Directories Company Pty Ltd [2015] FCAFC 156, [133] (Besanko, Jagot and Edelman JJ).

8. The date at which the rights of the parties will be determined is the priority date of the IRDA,[3] 13 December 2018 (‘Relevant Date’).

   Evidence

   [3] Southern Cross Refrigerating v Toowoomba Foundry Pty Ltd (1954) 91 CLR 592, 595 (Kitto J).

   The Opponent

9. The Opponent’s evidence consists of a declaration made by David Fanning on the 19 May 2020 (‘Fanning Declaration’) and Exhibits DF-1 to DF-8.

10. Mr Fanning, the Vice President of the Opponent, declares that PCS (‘Opponent’s Alleged Mark’) was adopted by the Opponent as an acronym for ‘Professional Cabinet Saw’ in 2008 in the United States of America, and that first use of the Opponent’s Alleged Mark occurred the same year via a copy of a flyer distributed at the International Woodworking Fair in Atlanta, Georgia.

11. Mr Fanning declares that goods bearing the Opponent’s Alleged Mark were first sold in Australia by the Opponent on 16 August 2013. The Fanning Declaration contains the following evidence of use of the Opponent’s Alleged Mark:

    ·Invoices showing use of the Opponent’s Alleged Mark on orders for goods dated 2 October 2013 and 21 May 2014.

    ·Training material featuring the Opponent’s Alleged Mark in the form of PowerPoint presentations presented to Australian dealers dated 2013.

    ·Photographs of packaging and labels featuring the Opponent’s Alleged Mark.

    ·Registration forms and products lists provided to Australian dealers.

    ·A ‘Dealer Bulletin’ promoting accessories for the Opponent’s products, including ‘[f]or PCS’.

    ·A distribution agreement referencing products labelled with the Opponent’s Alleged Mark.

    ·Sales information for products sold bearing the Opponent’s Alleged Mark from 2015 to 2019.

    Discussion and Reasons

    Section 58

12. Section 58 of the Act provides:

    The registration of a trade mark may be opposed on the ground that the applicant is not the owner of the trade mark.

13. Ownership of a trade mark can be established through authorship and use of a trade mark,[4] or, in the absence of use, a combination of authorship, the filing of an application or an intention to use the trade mark.[5]

    [4] Moorgate Tobacco Co Ltd v Philip Morris Ltd (no 2) 156 CLR 414 (Deane J); Food Channel Network Pty Ltd v Television Food Network GP [2010] FCAFC 58, [49], [55] (Keane CJ, Stone and Jagot JJ).

    [5] Pham Global Pty Ltd v Insight Clinical Imaging Pty Ltd [2017] FCAFC 83, [50] (Greenwood, Jagot and Beach JJ) (‘Pham’); Shell Co of Australia Ltd v Rohm and Haas Co (1948) 78 CLR 601, 627 (Dixon J).

14. To succeed in this ground of opposition, the Opponent must establish the following:

    ·     The IRDA is identical, or substantially identical, to an earlier trade mark;

    ·     The earlier trade mark has been used in respect of good or services that are ‘the same kind of thing’ as the Holder’s Goods; and

    ·     Another person has an earlier claim of ownership based on use of the earlier trade mark before the Relevant Date.[6]

    [6] Pham (n 5) [50].

15. The Opponent asserts that the Holder was not the owner of the IRDA at the Relevant Date because the Opponent was the first to use PCS in Australia in respect of the Holder’s Goods. The Opponent relies on its use of the Opponent’s Alleged Mark in the evidence outlined at [11].

16. As a preliminary observation, I note that the evidence provided by the Opponent is limited. It demonstrates that the Opponent’s Alleged Mark was first used by the Opponent in the course of trade in connection with cabinet saws in 2009 in the United States of America. Two invoices included in the evidence demonstrate the sale of professional cabinet saws in Australia by the Opponent in 2013 and 2014. PCS is presented on the invoices as part of a model number, ‘PCS31230-AU’, in close proximity to the words ‘Professional Cabinet Saws’ and a more prominent trade mark in SAWSTOP.

17. The Opponent contends that its use of the Opponent’s Alleged Mark in conjunction with other indicia, such as the numerals ‘31230’ is substantially identical to the IRDA. The Opponent refers to Austech Ltd v Silver Colloiod Pty Ltd, [7] a decision that concerned whether use of DENTAPURE 5000 constituted use of the trade mark DENTA-PURE 5K. The delegate in the matter determined the trade marks to be substantially identical, noting that the numeral 5000 and the sign 5K, in the context of the trade marks the relevant goods, were likely to be viewed as being model numbers or designators that added little to the identity of the trade marks.[8] The delegate also observed that ‘the letter 'K' is used to designate '1000' and that therefore is also likely that the sign 5K will be read by many as 5000’.[9] No such equivalent numerical indication is present in the IRDA.

    [7] [2003] ATMO 53 (Hearing Officer Thompson).

    [8] Ibid [14].

    [9] Ibid.

18. In my view, the central issue in this matter is not whether the Opponent’s Alleged Mark is substantially identical to the IRDA, but whether any example of the Opponent’s use of PCS constitutes use as a trade mark. It is not sufficient to merely show that the sign is used in the course of trade, the prior use asserted by the Opponent must be ‘use as a trade mark’.[10] Section 17 of the Act provides that a trade mark is ‘a sign used, or intended to be used, to distinguish goods or services dealt with or provided in the course of trade by a person from goods or services so dealt with or provided by any other person’. In Coca-Cola Co v All-Fect Distributors Ltd the Full Court explained:

    “Use ‘as a trade mark’ is use of the mark as a ‘badge of origin’ in the sense that it indicates a connection in the course of trade between goods and the person who applies the mark to the goods … That is the concept embodied in the definition of “trade mark” in s 17 – a sign used to distinguish goods dealt with in the course of trade by a person from goods so dealt with by someone else.”[11]

    [10] Moorgate Tobacco Co Ltd v Phillip Morris Ltd (1984) 156 CLR 414, 432 (Deane J).

    [11] Coca-Cola Co v All-Fect Distributors Ltd [1999] FCA 1721, [19] (Black CJ, Sundberg and Finkelstein JJ).

19. Accordingly, the Opponent must establish that its use of PCS was for the purpose of distinguishing the Opponent’s goods from those of other traders. In the Fanning Declaration, Mr Fanning states that PCS ‘was adopted by my company in 2008 as an acronym for “Professional Cabinet Saw”’. Use of PCS in this manner appears in the flyers distributed at the International Woodworking Fair in Atlanta in 2009. These refer to ‘The SawStop Professional Cabinet Saw (PCS)’. The Opponent’s product packaging and invoices also feature PCS alongside or in proximity to the words ‘Professional Cabinet Saw’. The immediate problem with relying on PCS in conjunction with the words ‘Professional Cabinet Saw’ is that it appears to the reader to do no more than abbreviate the apparently descriptive material that comes before it with the sum effect of the letters PCS merely indicating to consumers that the Opponent’s goods are professional grade cabinet saws, or cabinet saws targeted towards professionals.

20. The Fanning Declaration exhibits training material comprised of two PowerPoint presentations entitled SawStop Dealer Service Training and SawStop Dealer Training. Both presentations show PCS as the name of a model of cabinet saw sold by the Opponent. The Fanning Declaration explains that the PowerPoint presentations were made to Australian dealers. While the first PowerPoint presentation is not dated, the SawStop Dealer Training presentation has a reference date of 2013. I do not consider the use of the Opponent’s Alleged Mark in these presentations to be use of a trade mark in the course of trade. Whilst the presentation itself may be indicative of preparatory steps to sell cabinet saws in Australia, PCS is not used in a fashion that indicates that it is for the purposes of distinguishing the Opponent’s goods from those of other traders. Rather, it is utilised to refer to a model of saw in proximity, and contrast, to the trade mark SAWSTOP, which is prominently represented in the header of the presentation. While trade marks may be used alongside one another, the issue facing the Opponent is that consumers are, in my view, likely to see PCS as referring to a type of saw rather than the trade origin of the goods provided.

21. The Opponent also emphasises that the Opponent’s Alleged Mark was used alone without reference to a model number or the words ‘professional cabinet saws’ in several of its exhibits, namely a Dealer Bulletin, the Australia and New Zealand distribution agreement with the company Carbatec, dealer registration forms, and the Opponent’s website.

22. In respect to the Dealer Bulletin, while it does include the PCS without reference to ‘Professional Cabinet Saws’, it is dated June 2010. This is several years before the Opponent claims it began using PCS in Australia. The use of the US Dollar in the brochure also suggests that this brochure was used in the United States of America rather than Australia.

23. The exhibits featuring the Opponent’s website show PCS in respect to the cabinet saws but are not dated or otherwise provided by means that would indicate the screenshot of the website was from before the Relevant Date. The Fanning Declaration states that the website identifies Australian distributors of goods bearing the term PCS. While this is the case, it does not assist the Opponent in demonstrating use of the Opponent’s Alleged Mark in Australia before the Relevant Date.

24. The sample distribution agreement provided by the Opponent shows the sales goals and marketing plans for the Opponent’s products, including PCS. Although the agreement is for a period prior to the Relevant Date, it is not signed by either the Opponent or the other contracting party, nor has the Opponent provided any evidence of authorised use of the Opponent’s Alleged Mark by the distributor. I acknowledge that the distribution agreement demonstrates the Opponent’s intention to sell and promote goods in Australia at a date prior to the Relevant Date. However, as with the Opponent’s training materials I am not satisfied that this evidence demonstrates use of the Opponent’s Alleged Mark as a trade mark. This is because PCS is referenced in the document as a model of saw, a manner of use consistent with the product packaging, invoices and training presentations provided by the Opponent.

25. Similarly, the dealer registration form relied on by the Opponent refers to the Opponent’s Alleged Mark as a ‘SawStop Model Number’. As with the other exhibits, I do not consider this to be use as a trade mark.

26. Having regard to the deficiencies in the evidence outlined above, I am not satisfied that the Opponent, or any other party, has an earlier claim of ownership to the IRDA. The ground for opposition under section 58 has not been established.

    Section 60

27. Section 60 provides:

    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.

28. The Opponent submits that the Opponent’s Alleged Mark had acquired a reputation in Australia in respect to the Holder’s Goods before the Relevant Date, and that use of the IRDA would be likely to deceive or cause confusion. The Opponent relies on its evidence that I have described in some detail above, which it says shows use of the Opponent’s Alleged Mark in Australia since 2013. It also provides sales information for 2015 to 2019.

29. Reputation, in the context of section 60, refers to ‘recognition of [the mark] by the public generally’[12].  It is not a factor that is assumed and must be established by the Opponent as a matter of fact.[13]

    [12] McCormick & Co Inc v McCormick [2000] FCA 1335, [81] (Kenny J).

    [13] Conagra Inc v McCain Foods (Australia) Pty Ltd [1992] FCA 176, [118] (Lockhart J).

30. The reputation of a trade mark may be demonstrated in a variety of ways. For example, it may be established by demonstrating a significant number of people are exposed to a trade mark, or inferred from a high volume of sales, advertising expenditure or other promotions.

31. There are both quantitative and qualitative aspects to establishing a reputation for a trade mark.[14] In my view, the Opponent faces issues in both respects. The sales information provided by the Opponent shows only limited sales of products bearing the Opponent’s Alleged Mark prior to the Relevant Date. The Opponent acknowledges that ‘the level of sales may not appear particularly high’, and emphasises the professional and sophisticated nature of the goods, noting that the goods sell for several thousand dollars each. I recognise the distinction between the machinery evidenced in the Fanning Declaration and woodworking saws or equipment available in a typical hardware store. However, no information was provided by the Opponent in respect to the individual costs of the Opponent’s cabinet saws, nor was any information exhibited that might further contextualise the Opponent’s sales in a different light.

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

32. As already explored above, the examples of use of the Opponent’s Alleged Mark in Australia are also limited. The Opponent’s evidence contains no promotional or marketing material targeted towards Australian consumers, nor has any information been provided regarding expenditure on marketing and advertising activities, or that otherwise demonstrates an awareness of the Opponent’s Alleged Mark amongst the relevant Australian consumers.

33. Finally, the quality and nature of the use of the Opponent’s Alleged Mark discussed in Australia in relation to the section 58, is no less relevant to section 60. If the Opponent’s Alleged Mark has not been used as a trade mark in Australia, then axiomatically, it is incapable of having acquired a reputation.

34. Based on the evidence provided by the Opponent and the reasoning outlined above, I am not satisfied the Opponent’s Alleged Mark had acquired a reputation in Australia prior to the Relevant Date.

35. The ground of opposition under section 60 has not been established.

    Section 42(b)

36. Section 42(b) of the Act provides:

    An application for the registration of a trade mark must be rejected if:

    …

    (b)    its use would be contrary to law.

37. The Opponent relies on sections 18 of the Australian Consumer Law (‘ACL’)[15] and the tort of passing off as the basis for the ground of opposition under section 42(b) of the Act.

    [15] Schedule 2 of the Competition and Consumer Act 2010 (Cth).

38. The onus is on the Opponent to establish on the balance of probabilities that use of the IRDA by the Holder would be, rather than could be, contrary to law.[16]

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

39. In respect to section 18 of the ACL, the Opponent relies on the same reasons submitted in relation to section 60. Section 18 of the ACL relates to misleading and deceptive conduct. This involves a stricter test than deception or confusion under section 60 of the Act.[17]In discussing section 60 of the Act, I have explained that the Opponent’s Alleged Mark lacks the requisite reputation such that use of the IRDA would not be likely to cause deception or confusion. It follows that use of the IRDA is also unlikely to be misleading or deceptive under the ACL.

    [17] Parkdale Custom Built Furniture Pty Ltd v Puxu Pty Ltd [1982] HCA 44, [8] (Gibbs CJ); Monster Energy Company v Mixi Inc [2020] FCA 1398, [32]-[33] (Stewart J).

40. Generally, where a trade mark does not contravene sections 18 of the ACL, it is also unlikely to amount to passing off.[18] In referring to the now repealed provision of section 52 of the Trade Practices Act 1974 (Cth) (the predecessor to section 18 of the ACL), Hill J noted in Re Equity Access Pty Ltd v WestpacBanking Corporation [1989] FCA 771 that:

    The scope for the operation of s.52 will thus be broader than that involved in the tort of passing off so that in a case such as the present where the claim is for the protection of the reputation in a name against the use of that name by another, failure to succeed under s.52 or s.53 will invariably mean that proceedings for passing off would likewise fail[19]

    [18] Monster Energy v USA Nutraceuticals Inc [2017] ATMO 22, [58] (Hearing Officer Wilson).

    [19] Re Equity Access Pty Ltd v WestpacBanking Corporation (1989) 16 IPR 431, 440 (citations omitted).

41. Given my findings in relation sections 18 of the ACL, it follows that use of the IRDA will not amount to passing off.

    Decision

42. Regulation 17A.34N(1) provides:

    (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.

1. The Opponent has failed to establish any of the nominated grounds of opposition. Accordingly, extension of protection to trade mark number 2009777 (IR Number 1466799) may proceed one month from the date of this decision.

2. Should the Registrar be served with notice of an appeal before the extension of protection to the IRDA, I direct that extension of protection will not occur until the appeal has been decided or discontinued, and that any disposition of the application be in accordance with the Court’s order or direction.

   Costs

3. The Opponent sought costs. As the Opponent was not successful in their opposition to the extension of protection of the IRDA, I award costs against the Opponent under section 221 of the Act in accordance with the amounts set out in Schedule 8 of the Regulations.

   Timothy Brown
   Hearing Officer
   Oppositions and Hearings
   Trade Marks and Designs
   31 January 2022