Opposition by Signtronic Pty Ltd to registration of trade mark application number 2090359 (Class 9) – SIGNTRONICS LEADING THE WAY IN ELECTRONIC COMMUNICATION with device - in the names of Jo-Anne Puggioni and...

[2022] ATMO 34

TRADE MARKS ACT 1995

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

Re:Opposition by Signtronic Pty Ltd to registration of trade mark application number 2090359 (Class 9) – SIGNTRONICS LEADING THE WAY IN ELECTRONIC COMMUNICATION with device - in the names of Jo-Anne Puggioni and Manning Puggioni as trustees for Signtronics Trust.

Delegate:	Blake Knowles
Representation:	Opponent: Mark Secivanovic. Applicants: Self-represented.
Decision:	2022 ATMO 34 Trade Marks Act 1995 (Cth) – opposition under section 52 – grounds of opposition pressed under ss 42(b), 44, 58, 58A, and 60 – ground under s 44 established – registration refused.

Background

1. This is a decision in the opposition by Signtronic Pty Ltd (‘Opponent’) to registration of trade mark number 2090359 (‘Application’) filed by Jo-Anne Puggioni and Manning Puggioni as trustees for Signtronics Trust (‘Applicants’).

2. The Application was filed on 26 May 2020 (‘Relevant Date’) for the following trade mark and goods:

   (‘Trade Mark’)

   Class 9: Directional signage (luminous or mechanical); Light emitting diode (LED) displays; Light emitting diodes (LED); Light emitting diodes (LED) for use in display boards; Light emitting diodes (LED) with plugs

   (‘Applicants’ Goods’)

3. The Trade Mark was examined and initially subject to grounds for rejection under s 44(1).[1] The Applicants overcame this objection by filing evidence of prior and continuous use under s 44(4). The Trade Mark was subsequently accepted and advertised for opposition on 18 November 2020.  The Opponent filed notice of its intention to oppose registration on 12 January 2021 and a statement of grounds and particulars (‘SGP’) on 12 February 2021. The Applicants subsequently filed a notice of intention to defend the Trade Mark from opposition on 6 May 2021.

   [1] Unless otherwise stated, each reference to a section or regulation in these reasons is a reference to the Trade Marks Act 1995 (Cth) (‘Act’) or the Trade Marks Regulations 1995 (Cth) (‘Regulations’).

4. The parties had the opportunity to file evidence in accordance with the timetable set out in reg 5.14. The Opponent filed Evidence in Support (‘EIS’) on 12 August 2021. The Applicants filed Evidence in Answer (‘EIA’) on 27 September 2021. The Opponent filed Evidence in Reply (‘EIR’) on 26 November 2021.   

5. The parties were given an opportunity to request an oral hearing or file written submissions. Neither party requested a hearing or elected to file submissions. The Applicants requested to have the matter decided based on the materials filed and paid the relevant fee. I have decided the matter based on the particulars detailed in the SGP and the evidence of the parties.

   Grounds and onus

6. The SGP nominated grounds of opposition under ss 42(b), 44, 58, 58A, and 60.

7. The Opponent carries the burden of establishing at least one ground of opposition on the balance of probabilities.[2] The rights of the parties are assessed as at the Relevant Date.[3]

   [2] Pfizer Products Inc v Karam [2006] FCA 1663, 22 (Gyles J); Telstra Corporation Limited v Phone Directories Company Pty Ltd [2015] FCAFC 156, 133 (Besanko, Jagot and Edelman JJ).

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

   Evidence

8. The following evidence was filed:

   EIS

   Declaration of Boulos Melki, director of Opponent, made on 12 August 2021, with Annexures BM-1 to BM-15.

   EIA

   Declaration of Manning Puggioni, co-Applicant, made on 27 September 2021, with annexures.

   EIR

   Declaration of Mark Secivanovic, solicitor acting on behalf of the Opponent, made on 26 November 2021, with annexures A to C.

   EIS

9. Mr Melki declares that the Opponent’s business was established in 1992 under the name ‘Signtronic’ (‘Opponent’s Mark’). Mr Melki states that the Opponent’s business uses the Opponent’s Mark in relation to the design, manufacture, and installation of signage. Mr Melki declares that the Opponent was incorporated in 2008 and subsequently acquired all goodwill and intellectual property rights of the Opponent’s business.

10. Mr Melki declares that the Opponent is the owner of a registered trade mark for the Opponent’s Mark, being registration number 2022833 (‘Opponent’s Registration’). The Opponent’s Registration has a priority date of 12 July 2019 and is registered for the following goods:

    Class 6: Non-luminous metal signs; Signs of metal (non-luminous and non-mechanical); Signs plates of metal; Advertising signs of metal (non-mechanical, not luminous); Display signs of metal (non-luminous, non-mechanical); Aluminium products for signs; Modular sign panels of metal (non-luminous, non-mechanical); Metal display stands; parts, accessories and fittings for the aforementioned goods; Support posts of metal for signs

    Class 9: Luminous advertising signs and signage including electrical and electronic signage; LED advertising screens; curtain advertising screens; LED price boards; interactive advertising displays; advertising display signs (electric or luminous); directional signage (electric or luminous); illuminated advertising signs; illuminated signs used for advertising; luminous signs for roads; safety signs (luminous); safety signs (mechanical); parts, accessories and fittings for the aforementioned goods

    Class 19: Signs of non-metallic materials (non-mechanical, not luminous); Signs made of plastics (non-luminous and non-mechanical); Non-metallic skylights for buildings; ceilings, not of metal; parts, accessories and fittings for the aforementioned goods

    (‘Opponent’s Goods’)

11. Mr Melki goes on to provide further details regarding use of the Opponent’s Mark in Australia. This information is mostly relevant to grounds of opposition under ss 42(b), 58, 58A, and 60. However, given my finding in relation to s 44, it is not necessary to consider the other grounds, and it is also not necessary to provide a detailed summary of Mr Melki’s declaration.

    EIA

12. Mr Puggioni declares that the Applicants’ business has been operating under his ownership since 2007 “as previously stated” [referring to his evidence filed during examination of the Application]. Mr Puggioni also states:

    “With this declaration I do not intend to provide any further evidence of our business unless requested by IP Australia. Financial documents, customer lists, photo’s, website extracts over the years etc etc were already provided with our TM Application and I don’t wish to share these un-redacted documents with our opposition. Please review these as needed.”

13. Mr Puggioni annexes an invoice bearing the Trade Mark dated 30 April 2009, and another invoice bearing a similar trade mark dated 16 June 2008.   

    EIR

14. Mr Secivanovic declares in the EIR that the Opponent made an application under the Freedom of Information Act 1982 (Cth) (‘FOI Act’) for all documents supplied by the Applicants or any third party with respect to the Application. Mr Secivanovic was subsequently provided with declarations made by Mr Puggioni on 15 September 2020 and 24 October 2010 (‘Examination Declarations’). The Examination Declarations and their annexures are heavily redacted.

15. Mr Puggioni states in the first of the redacted Examination Declarations that the Signtronics name and logo have been used under his control for thirteen years and dating back to the 1980’s under previous ownership. Mr Puggioni explains that the goods sold under the Trade Mark are programmable LED signs. Mr Puggioni declares in the second of the redacted Examination Declarations that there has been continuous use of the Trade Mark under his ownership of the business since 2007.

16. The annexures to the two Examination Declarations which have not been redacted are:

    (i)An invoice from Yellow Pages dated 11 July 2008 which includes an image of a Yellow Pages advertisement for inclusion in the 2009 Yellow Pages Directory. The advertisement includes in its header a mark that is very similar to the Trade Mark.

    (ii)An undated Google search printout for ‘electronic led signs’ which includes an advertisement for the Applicants’ business (but not the Trade Mark).

    (iii)Internet Archive Wayback Machine extracts from 2011, 2012, 2013, and 2014 which display the Trade Mark and state that ‘Signtronics Australia is a leading manufacturer and supplier of electronic (LED) variable message signs (VMS) and systems.’

    (iv)Further Internet Archive Wayback Machine extracts from 2014, 2016, 2017, 2018, 2019, and 2020 which do not display the Trade Mark but include reference to the words ‘Signtronics’ and ‘Signtronics Australia’.

17. With regard to the Internet Archive Wayback Machine extracts referred to in paragraph (iv) above, Mr Puggioni states: “Please note that with the 2014 revision of our website (same as current site) the Signtronics logo is being covered by the webarchiver header in the pdfs. If you need to see the logo for yourself, please use the link above and navigate to the correct date to see the signtronics logo visible on the snapshot”.  

    Discussion

    Section 44

18. To establish a ground of opposition under s 44(1), the Opponent must rely on at least one pending or registered trade mark that has a priority date earlier than the Application, and which is in the name of a person other than the Applicants. The earlier mark must be substantially identical or deceptively similar to the Trade Mark. Further, the earlier mark must be filed or registered in respect of either goods that are similar to the Applicants’ Goods or services that are closely related to the Applicants’ Goods.

19. The Opponent relies on the Opponent’s Registration for the as the basis for the ground under s 44.  The Opponent’s Registration has a priority date of 12 July 2019, which is earlier than the priority date of the Application (26 May 2020). As such, I must now determine whether the Trade Mark is either substantially identical or deceptively similar to the Opponent’s Mark.

20. The test for whether two marks are substantially identical requires that they 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.[4]

    [4] The Shell Co of Australia Ltd v Esso Standard Oil (Australia) Ltd (1963) 109 CLR 407, 414 (Windeyer J).

21. I am satisfied that the Trade Mark is not substantially identical to the Opponent’s Mark. While the respective trade marks share an essential feature that is very similar (SIGNTRONICS v SIGNTRONIC), the Trade Mark has other words and devices, including a device consisting of three small lights arranged as a triangle, another light device forming the letter ‘O’, and the words LEADING THE WAY IN ELECTRONIC COMMUNICATION. As such, a total impression of resemblance does not emerge from the comparison between the Trade Mark and the Opponent’s Mark.

22. The test for whether trade marks are deceptively similar requires that one trade mark so nearly resemble another that it is likely to deceive or cause confusion.[5] In determining deceptive similarity, the following must be taken into account:

    -There must be a real, tangible danger of confusion, not just a mere possibility.5F[6] Likelihood of confusion can be established if a number of consumers would be caused to wonder whether the applicant’s goods or services come from some other source. It is enough if the ordinary person entertains a reasonable doubt.6F[7]

    -The impression of the respective marks as a whole must be considered, including the size and prominence of word and device elements and their relationship to each other.7F[8] However, deceptive similarity can also be found where one mark uses an essential feature of the other.8F[9]

    -Consumers may retain an imperfect recollection of a mark or its essential features.9F[10]

    -It may be relevant that an element of the trade marks under consideration is descriptive. However, descriptiveness does not preclude a finding of deceptive similarity.10F[11]

    -The impression of the mark on ordinary consumers is relevant, not the impression on those who are particularly perceptive or cautious, or those who are exceptionally careless or stupid.11F[12]

    -It must be considered how the goods or services are ordinarily sold or provided.12F[13]

    [5] Trade Marks Act 1995 (Cth) s 10.

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

    [7] Coca‑Cola Co v All‑Fect Distributors Ltd [1999] FCA 1721, [39] (Black CJ, Sundberg and Finkelstein JJ); Southern Cross Refrigerating Co v Toowoomba Foundry Pty Ltd (1954) 91 CLR 592, 595 (Kitto J).

    [8] Optical 88 Ltd v Optical 88 Pty Ltd (No 2) [2010] FCA 1380, [100] (Yates J); Crazy Ron's Communications Pty Ltd v Mobileworld Communications Pty Ltd [2004] FCAFC 196, [91]-[103] (Moore, Sackville, and Emmett JJ).

    [9] Saville Perfumery Ltd v June Perfect Ltd (1941) 58 RPC 147, 174-5 (Viscount Maugham); De Cordova v Vick Chemical Co (1951) 68 RPC 103, 105-6 (Lord Radcliffe).

    [10] Crazy Ron’s Communications Pty Ltd v Mobileworld Communications Pty Ltd [2004] FCAFC 196, [79] (Moore, Sackville, and Emmett JJ).

    [11] Lift Shop P/L v Easy Living Home Elevators P/L [2014] FCAFC 75, [64] (Besanko, Yates, and Mortimer JJ).

    [12] Australian Woollen Mills Ltd v FS Walton & Co Ltd (1937) 58 CLR 641, 658 (Dixon and McTiernan J).

    [13] Ibid.

23. I consider that the Trade Mark is deceptively similar to the Opponent’s Mark. The essential feature of the Trade Mark is the word SIGNTRONICS, which is the plural of the Opponent’s Mark. The device elements, and the words LEADING THE WAY IN ELECTRONIC COMMUNICATIONS, are not particularly distinctive and are clearly secondary to the word SIGNTRONICS in the Trade Mark. The Opponent’s Mark also contains no other elements by which to distinguish it from the Trade Mark. I consider there is a significant risk that a consumer relying on imperfect recollection who was aware of the Opponent’s Mark would be caused to wonder whether goods bearing the Trade Mark originated from the Opponent, or were connected with the Opponent in some way.  

24. As I have found that the Trade Mark is deceptively similar to the Opponent’s Mark, I must now consider whether the Applicants’ Goods are similar to the Opponent’s Goods. The goods of two parties will be considered similar if they are either the same or if they are of the same description.[14] The test for determining whether goods are of the same description is a practical judgement formed by looking at a number of factors, falling within the categories of the nature of the goods, their respective purposes, and the trade channels through which they are commonly provided, with no single factor being determinative. [15]

    [14] Trade Marks Act 1995 (Cth), s 14.

    [15] Re Jellinek’s Application (1946) 63 RPC 59, 70.

25. The Applicants’ Goods are directional signage, light emitting diode displays, and light emitting diodes. The Opponent’s Goods in Class 9 include directional signage (electric or luminous), advertising display signs (electric or luminous), and parts and fittings for the aforementioned goods. The parts and fittings claim I consider would include light emitting diodes, as they are a key component of electric or electronic signage. I consider that the scope of the Opponent’s Goods would include all of the Applicants’ Goods. As such, the respective goods are the same, or at the very least ‘of the same description’.  

26. As the Opponent has established that its earlier registered trade mark is deceptively similar to the Trade Mark, and covers the same goods, the Opponent has met the requirements of s 44(1). Therefore, a ground for rejection will be established unless the Applicants’ evidence establishes either that (i) there has been sufficient honest concurrent use of the Trade Mark by the Applicants to justify registration (s 44(3)(a)), (ii) there are other relevant circumstances justifying registration (s 44(3)(b)), or (iii) the Applicants have used the Trade Mark continuously since before the priority date of the Opponent’s Registration up to the Relevant Date.  

27. The Applicants were initially successful in overcoming a ground for rejection against the Trade Mark based on the Opponent’s Registration raised during examination by relying on evidence of prior and continuous use under s 44(4). However, the Applicants have consciously chosen not to file that same evidence during these proceedings. If a party wishes to rely on evidence in an opposition, it must be filed during the opposition and provided to the other party. It would not be fair to the Opponent if the Applicants were able to rely on evidence to which the Opponent does not have access. As such, I am not able to consider the evidence of use of the Trade Mark filed by the Applicants during examination, except insofar as the heavily redacted version of that evidence obtained by the Opponent under the FOI Act has been filed in the EIR.

28. Overall, I consider that the evidence of the use of the Trade Mark contained in the EIA and EIR is deficient for two reasons.

29. First, the evidence is not sufficient to establish continuity of use of the Trade Mark up until the Relevant Date. The evidence indicates that the Trade Mark was used on an invoice and Yellow Pages advertisement in 2009, and that it appeared on the Applicants’ website up until 2014. However, the Internet Archive Wayback Machine extracts from 2014 onward do not display the Trade Mark. Mr Puggioni states that this is because the Trade Mark is covered by the webarchiver header, and that “if you need to see the logo for yourself, please use the link above and navigate to the correct date to see the signtronics logo visible on the snapshot”. However, it is not appropriate during an opposition for the Registrar to obtain evidence from weblinks. Weblinks can break and the information on them can change over time. Any evidence on which the Applicants wish to rely should be printed or scanned to PDF and filed as evidence. If that is not possible due to technical issues, some other evidence substantiating the Applicants’ claim should be filed, such as dated invoices bearing the Trade Mark.  

30. Second, in both the EIA and the Examination Declarations contained in the EIR, Mr Puggioni refers to the Applicants’ business as running under his ownership. The extract for the business name SIGNTRONICS AUSTRALIA included in the EIR also indicates that the holder of the business name is Mr Puggioni. However, the Application is filed in the name of joint applicants, Mr Puggioni and Ms Puggioni.[16] It logically follows that for the Applicants to establish prior and continuous use, any use of the Trade Mark relied on must be use by or under the authorisation of both joint Applicants, and not be use by a business solely under the ownership or control of Mr Puggioni. Alternatively, if the Applicants cannot show joint use of the Trade Mark, the second joint Applicant, Ms Puggioni, might file evidence that demonstrates she has at some point prior to the Relevant Date acquired joint ownership of the Trade Mark, such that she is able to rely on prior use of it solely by Mr Puggioni in his capacity as a predecessor in title. The situation as it currently stands is unclear, and merely indicates that both Mr and Ms Puggioni are joint applicants for the Trade Mark in their capacity as trustees for a trust. This in itself is not sufficient to attribute use of the Trade Mark by Mr Puggioni as being use jointly by Mr and Ms Puggioni. While it is possible that additional evidence would have clarified the situation, the Applicants did not meet their evidentiary obligation to provide clear information regarding which person or persons used the Trade Mark prior to the Relevant Date and/or to provide a sufficiently detailed explanation regarding the relationship between the two joint Applicants with respect to the use of the Trade Mark prior to the Relevant Date.

    [16] Section 28 of the Act permits an application by joint owners if relations between two or more persons interested in a trade mark are such that none of them is entitled to use the trade mark except on behalf of all of them, or in relation to goods and/or services with which all of them are connected in the course of trade.

1. On balance, while it appears that the Trade Mark was first used at least as early as 2009, the evidence is insufficient for me to conclude that use of the Trade Mark has been continuous since that time, or that use is attributable to both of the Applicants (as opposed to merely being use by one of the Applicants, Mr Puggioni).  

2. Given the deficiencies with the evidence, I cannot be satisfied that the Trade Mark should be accepted on the basis of evidence of honest concurrent use (s 44(3)(a)), other relevant circumstances (s 44(3)(b)), or prior and continuous use (s 44(4)).    

3. I am satisfied that the Opponent has established a ground of opposition under s 44. As such, there is no need for me to consider the other grounds of opposition relied on.

   Decision and costs

4. The Opponent has established a ground of opposition under s 44. As such, I have decided to refuse registration of the Trade Mark. Noting the appeal period, this refusal will be recorded one month from the date of this decision unless the Registrar of Trade Marks is served with a notice of appeal. If an appeal is filed, the disposition of this opposition will be for the court.

5. The Opponent in the SGP requested an award of costs in its favour. Costs usually follow the event. There being no reason to make an exception here, I award costs against the Applicants.

   Blake Knowles
   Hearing Officer
   Delegate of the Registrar of Trade Marks
   11 March 2022