Opposition by Stoddart Technology Pty Ltd to registration of trade mark application 2047024 (37) – S (Device) – in the name of Stoddart Electrical Pty Ltd

[2021] ATMO 138

TRADE MARKS ACT 1995

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

Re:Opposition by Stoddart Technology Pty Ltd to registration of trade mark application 2047024 (37) – S (Device) – in the name of Stoddart Electrical Pty Ltd

Delegate:	Nicholas Smith
Representation:	Opponent: HWL Ebsworth Lawyers Applicant: Self-represented
Decision:	2021 ATMO 138 Trade Marks Act 1995 (Cth) - Section 52 opposition: ss 42(b), 44 and 60 considered – none established – trade mark to proceed to registration

Background

1. This decision concerns an opposition brought by Stoddart Technology Pty Ltd (‘Opponent’) to the registration of the trade mark which is the subject of the application detailed below in the name of Stoddart Electrical Pty Ltd (‘Applicant’): 

Application Number:

2047024

Filing Date:

29 Oct 2019

Services:

Class 37: Installation, maintenance, modification and repair services of electrical items, equipment and solutions, including solar energy and solar powered apparatus, parts, fittings and systems

(‘Applicant’s Services’)

Trade Mark:

(‘Trade Mark’)

1. Unless otherwise indicated, any references to sections or regulations in this decision are references to sections or regulations of the Trade Marks Act 1995 (Cth) (‘Act’) or the Trade Marks Regulations 1995 (Cth) (‘Regulations’), respectively.

2. Following the advertisement of the application’s acceptance for possible registration in the Australian Official Journal of Trade Marks, the Opponent filed a Notice of Intention to Oppose the registration followed by a Statement of Grounds and Particulars on 29 June 2020 (‘SGP’).  The SGP raised grounds of opposition under ss 42(b), 44 and 60.  The Applicant filed a Notice of Intention to Defend on 7 August 2020. 

   Evidence

3. The Opponent filed the following evidence in support of its opposition:

   ·Declaration made on 9 November 2020 by Jonathan Blair Stoddart, director of the Opponent and Stoddart Group Pty Ltd ACN 010 744 751 (‘Stoddart Group’), with Exhibits JS-1 to JS-20 (‘Jonathan declaration’).

4. The Applicant filed the following evidence in answer:

   ·Declaration made on 11 February 2021 by Debbie Leanne Stoddart, director of the Applicant, with Exhibits DS-1 to DS-9 (‘Debbie declaration’).  Much of the Debbie declaration consists of submissions and will be treated as such.  

5. The Opponent did not file evidence in reply.

6. The entirety of the evidence filed by both sides, including publicly available information such as the public use of the Trade Mark or the contents of national trade mark registries, is claimed to be confidential.  I adopt the approach of the delegate in Source Homeloans Pty Ltd v Coles Group Ltd, who when in receipt of a similar claim (albeit in respect of the opponent in that case) stated:

   The confidentiality claim obviously extends to the whole of the evidence led in support of the opposition. It is not clear to me how I could decide this matter without discussing the evidence the opponent has served and filed in support of its opposition. The onus in these proceedings is on the opponent to establish its grounds of opposition, at least to my satisfaction. Seemingly barred from any discussion of the opponent’s statements and exhibits and the weight that I attach to them if I were to lend credence to the claim, my hands would appear to have been effectively tied. Prima facie, the easiest way out of the dilemma would be to accede to the opponent’s wishes and find that it has not established its opposition. Thus, if I were to take Mr Peter’s request (made within several declarations) at face value, that would be the end of these matters.

   This position, obviously, is extreme, since the opponent has filed this evidence in support of its opposition and must expect the evidence to be discussed and weighed. It will be sufficient for me to say, in setting out my reasons for my decision, that there are arguably commercially sensitive matters in the evidence that I do not need to discuss in detail (and, if I do, my consolation lies in the fact that the opponent in not being specific in its request has brought the problem upon itself). None the less, the evidence of the parties as a whole satisfies me of various things, which I will set out under the appropriate headings below.[1]

   [1] Source Homeloans Pty Ltd v Coles Group Ltd [2008] ATMO 17, [5]-[6] (Hearing Officer Thompson).

7. I note that, if a party considers a piece of information to be commercially sensitive it must identify that information with specificity.  If in my summary of the evidence, I have disclosed information that is sensitive, then this is an issue that has arisen by that party not specifically identifying that information as sensitive.

8. Once the time allowed for filing evidence had ended the parties were given an opportunity to request a hearing in this matter or a decision without hearing.  The Applicant requested that the matter proceed to a decision without hearing and paid the appropriate fee.  As a result the matter has been allocated to a delegate of the Registrar for a decision based on the written record.

9. I am a delegate of the Registrar of Trade Marks and I am to decide the opposition as required by s 55 which provides that, unless the proceedings are discontinued, dismissed, or have lapsed under s 54A 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. 

10. In doing so I take account of the written record comprised of the materials mentioned in the preceding paragraphs.

    The Opponent

11. The Opponent is an Australian company that is the intellectual property asset holding company of Stoddart Group, which is a supplier and installer in the residential building industry.  

12. The Opponent is the owner of the trade marks listed below (‘Opponent’s Trade Marks’).  The goods and services for which the Opponent’s Trade Marks are registered are collectively referred to as the ‘Opponent’s Goods and Services’.

Number	Trade Mark	Priority Date	Goods or Services
984162	8 Jan 2004	Class 6: Common metals and their alloys; metal building materials and products including roofing products, fascia, guttering, downpipes and roofing battens; transportable buildings of metal; materials of metal for railway tracks; non-electric cables and wires of common metal; ironmongery, small items of metal hardware; pipes and tubes of metal; safes; goods of common metal not included in other classes; ores; building structures in this class including verandahs, patios, verandah and patio covers and bullnose systems; copper and brass extrusion products; extruded and drawn copper and brass products including busbars, rods, sections and profiles for switchboard, switchgear and busbar applications and solids, rods and sections for hot forging and free cutting on high speed auto lathes Class 37: Construction, repair, maintenance and installation services in this class; roofing services; rustproofing; interior and exterior painting; plumbing; rental of construction equipment; providing information and advice in relation to the foregoing
1790694	18 Aug 2016	Class 9: Solar energy apparatus, equipment and systems in this class; solar-powered apparatus, equipment and systems in this class; solar cells, panels and collectors for electricity generation and the production of electricity; solar energy operating apparatus, equipment and systems; solar batteries; apparatus and instruments for conducting, switching, transforming, accumulating, regulating or controlling electricity, including electricity generated from solar energy; parts, fittings and accessories in this class for all of the foregoing Class 11: Solar energy apparatus, installations, equipment and systems in this class; solar-powered apparatus, installations, equipment and systems in this class; solar collectors for heating, lighting and/or ventilation; solar energy powered apparatus, installations, equipment and systems for heating, lighting and/or ventilation; solar heating apparatus, installations, equipment and systems; thermal storage apparatus (solar energy) for heating; apparatus for lighting, heating, steam generating, cooking, refrigerating, drying and ventilating; parts, fittings and accessories in this class for all of the foregoing Class 19: Non-metal cladding, cladding panels, cladding sheets and cladding board; AAC (autoclaved aerated concrete) panels and fibre cement materials for use in residential wall cladding; cladding devices, not of metal; non-metal frames for wall cladding; non-metallic mouldings for cladding buildings; non-metal supports for use in cladding; non-metallic tiles and slates for cladding; non-metallic building materials including such materials for use in cladding; non-metallic cladding materials; non-metal wall and roofing products (for buildings) including such products which incorporate solar cells; parts, fittings and accessories in this class for all of the foregoing Class 37: Construction, installation, repair, modification and maintenance services including in respect of solar energy apparatus, parts, fittings and systems; information and advisory services relating to construction, installation, repair, modification and maintenance

1. The Opponent, in its particulars for the s 44 grounds of opposition, refers to the following mark owned by a third party set out below (‘Third Party Mark’).  The goods for which the Third Party Mark is registered are collectively referred to as the ‘Third Party Goods’. 

Number	Trade Mark	Priority Date	Goods or Services
1121607	13 Jun 2006	Class 9: Non-metallic electrical and instrumentation enclosures in international class 9

1. The relevant claims/statements in the Jonathan Declaration can be summarised as follows:

   ·     The Opponent was incorporated in 2005 and the Stoddart Group was incorporated and has traded since 1987.  The business operated by the Stoddart Group was established in 1959.  The Stoddart Group has been involved in the supply and installation of metal fascia, steel framing, roofing, linings, lightweight cladding and garage doors.

   ·     The Opponent has used the device depicted on the Opponent’s Trade Marks (‘Opponent’s Logo’) since 1987, both by itself and in combination with the words Stoddart and Stoddart Group. It operates a business in 30 locations and has 560 employees.  

   ·     The Stoddart Group is the subject of significant media interest and engages in advertising, both through traditional media, and thorough its website and social media. 

2. The Annexes to the Jonathan Declaration include articles about the Stoddart Group and examples of its marketing material including its website.  I note that there is no documentary evidence to suggest that the Opponent’s Logo is used solus; all examples of use are the Opponent’s Trade Marks, either by themselves or with the addition of an additional word (such as ‘group’).  

3. The Jonathan Declaration also provides evidence of ‘annual revenue turnover’ which is highly significant.  The Stoddart Group’s advertising spend, conversely, appears to be minimal, though it does have some social media presence.

   The Applicant

4. The Applicant is an Australian company that was incorporated in 2001 but the business operated by the Applicant has traded since 1985.  

5. The relevant claims/statements in the Debbie Declaration can be summarised as follows, noting that I have not summarized the majority of the Debbie Declaration, which consists of submissions and opinions about the similarity of the respective marks:

   ·     The Applicant has existed in various forms since 1985 and in 2016 refreshed its brand through the use of an external design consultancy.  The Trade Mark symbolizes 3 things – electrical wires, S for Stoddart and E for Electrical.  The Applicant commenced use of the Trade Mark in 2016, prior to the priority date for trade mark no. 1790694.

6. The Annexes to the Debbie Declaration include testimonials about the Applicant, material showing the development of the Trade Mark in early 2016 and examples of use of the Trade Mark.   

   Grounds of Opposition, Onus and Standard of Proof

7. As indicated above in the SGP the Opponent nominated grounds of opposition under ss 42(b), 44 and 60.  To successfully oppose the application the Opponent needs to establish one of the nominated grounds.

8. The onus of proof in an opposition rests upon the Opponent.[2]  The relevant standard of proof is the ordinary civil standard based on the balance of probabilities.[3]  The date at which the rights of the parties are to be determined is the filing date 29 Oct 2019 (‘relevant date’), which is also the priority date for the purposes of ss 44 and 60.[4]

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

   [3] Following Pfizer Products Inc v Karam (2006) 70 IPR 599, [6]-[26] (Gyles J), and Telstra Corporation Limited v Phone Directories Company Pty Ltd [2015] FCAFC 156, [133] (Besanko, Jagot and Edelman JJ).

   [4] Southern Cross Refrigerating Co v Toowoomba Foundry Pty Ltd (1954) 91 CLR 592, 595 (Kitto J), see also s 29(1) Trade Marks Act 1995 (Cth).

   Discussion

   Section 44

9. The relevant provisions are reproduced below:

   Section 44 - Identical etc. trade marks

   (1)…

   (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.

   Note 1: For deceptively similar see section 10.
   Note 2: For similar services see subsection 14(2).
   Note 3: For priority date see section 12.

   Note 4: The regulations may provide that an application must also be rejected if the trade mark is substantially identical with, or deceptively similar to, a protected international trade mark or a trade mark for which there is a request to extend international registration to Australia: see Part 17A. …

   (3)If the Registrar in either case is satisfied:

   (a)that there has been honest concurrent use of the 2 trade marks; or

   (b)that, because of other circumstances, it is proper to do so;

   the Registrar may accept the application for the registration of the applicant's trade mark subject to any conditions or limitations that the Registrar thinks fit to impose. If the applicant's trade mark has been used only in a particular area, the limitations may include that the use of the trade mark is to be restricted to that particular area. 

   Note:  For limitations see section 6.

   (4)If the Registrar in either case is satisfied that the applicant, or the applicant and the predecessor in title of the applicant, have continuously used the applicant's trade mark for a period:

   (a)beginning before the priority date for the registration of the other trade mark in respect of:

   (i)            the similar goods or closely related services; or

   (ii)           the similar services or closely related goods; and

   (b)ending on the priority date for the registration of the applicant's trade mark;

   the Registrar may not reject the application because of the existence of the other trade mark.

   Note 1: An authorised use of the trade mark by a person is taken to be a use of the trade mark by the owner of the trade mark (see subsection 7(3)).
   Note 2: For predecessor in title see section 6.
   Note 3: For priority date see section 12.

   Section 10 - 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.

10. To successfully oppose the application pursuant to s 44 the Opponent must establish the requirements of s 44(2), i.e. that at least one of the trade marks upon which it relies, being a trade mark registered by a person other than the Applicant:

    ·     has a priority date which is earlier than that of the Trade Mark (‘the first requirement’);

    ·     is substantially identical with or deceptively similar to the Trade Mark (‘the second requirement’); and

    ·     is in respect of similar services, and/or goods which are closely related to, the Applicant’s Services (‘the third requirement’).

11. In the event that each of these requirements is satisfied by the Opponent it may still be possible for the Registrar to accept the application (or allow it to proceed to registration) if the Registrar is satisfied, pursuant to ss 44(3) and 44(4), that there has been honest concurrent use of the Trade Mark, other circumstances which would make registration of the Trade Mark proper, or that the Applicant has continuously used the Trade Mark beginning before the priority date of the Opponent’s relied upon mark.

12. The Opponent has particularised the ground of opposition in the SGP by reference to the Opponent’s Trade Marks and Third Party Mark.  Each of these Marks has a priority date that is earlier than the priority date of the Trade Mark.  The Opponent’s Trade Marks, being registered for broadly, construction, installation and maintenance services are registered for similar services as the Applicant’s Services, which involve the installation, maintenance, modification and repair of electrical goods.   However further consideration needs to be given to whether the Third Party Goods are closely related to the Applicant’s Services.

    Closely related services

13. The case of Paypal, Inc v Braintree Communications Pty Ltd[5] summarises the legal principles applicable when determining if the goods for which the Third Party Mark are registered are closely related to the Applicant’s Services as follows:

    [5] [2017] ATMO 90.

    In Qantas Airways Ltd v Edwards[6] Yates J quoted from the judgment of French J in Registrar of Trade Marks v Woolworths Ltd[7]:

    ... The term “closely related” recognises that goods and services are different things. There will be classes of goods which are similar to each other. There will also be classes of services which are similar to each other. But the word “similar” does not apply as between goods and services. So there must be some other form of relationship between the services covered by one mark and the goods covered by another to enable the goods or services in question to be described as “closely related”. ...

    Yates J continued:

    His Honour also said in this connection that “closely related” was of wider import than “similar”.

    Woolworths was a case arising under s 44(2) of the Act. Thus, the question was whether, in the case of a mark for services, there was conflict with a previously registered mark for “closely related goods”. His Honour gave (at [38]) the following illustrations where goods and services might be “closely related”:

    Services which provide for the installation, operation, maintenance or repair of goods are likely to be treated as closely related to them. Television repair services in this sense are closely related to television sets as a class of goods. A trade mark used by a television repair service which resembles (to use the language of s 10) the trade mark used on a prominent brand of television sets could be deceptively similar for suggesting an association between the provider of the service and the manufacturer of the sets. ...

    [6] [2016] FCA 729, [111] (Yates J).

    [7] (1999) 93 FCR 365; [1999] FCA 1020, [37] (French J).

1. I do not consider that the Third Party Goods, which consist of non-metallic electrical and instrumentation enclosures, are closely related to the Applicant’s Services.  While it may be possible that the Applicant, in the course of providing its services, installs instrumentation enclosures, that is a relatively minor part of the Applicant’s Services.  Moreover it would not be expected that a manufacturer of non-metallic electrical and instrumentation enclosures and services would perform the installation (or conversely that a business installing electrical products would also be involved in the manufacture of the very specialised products for which the Third Party Mark is registered).  Unlike in the case of television repair services, the use of the Trade Mark on the Applicant’s general electrical installation services would not suggest an association between it and the supplier of the Third Party Goods. The Third Party Goods are sold through completely different channels, to different purchasers than the Applicant’s Services. 

   Substantially identical and/or deceptively similar

2. I will now consider whether the Trade Mark is substantially identical to the Opponent’s Trade Marks.  When considering ‘substantial identity’ in Shell Co of Australia Ltd v Esso Standard Oil (Australia) Ltd Windeyer J said:

   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.[8]

   [8] (1963) 109 CLR 407, 414.

3. The Trade Mark and the Opponent’s Trade Marks are set out below:

4. On a side by side comparison there are clear differences between the respective marks which mean that a total impression of dissimilarity emerges from a comparison between the marks.  While the respective marks contain/consist of devices that may evoke the letter ‘s’ they are clearly different devices.  Furthermore the presence of the ‘Stoddart’ word in the Opponent’s Trade Marks clearly distinguishes the respective marks.  I move then to consider whether the Trade Mark and Opponent’s Trade Marks are deceptively similar.

5. The principal authority for guidance in determining whether trade marks are deceptively similar also comes from the judgment of Windeyer J in Shell Co (Aust) Ltd v Esso Standard Oil (Aust) Ltd:

   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 [trade mark].[9]

   [9] Ibid [13].

6. Jacobson J in Millennium & Copthorne International Limited v Kingsgate Hotel Group Pty Ltd summarised the principles of deceptive similarity with reference to the authorities as follows:

   Without seeking to reformulate the various statements of principle stated in the Full Court authorities, it is sufficient for present purposes to identify the critical elements which seem to me to inform the issue of deceptive similarity in the present case. There are nine elements.

   First, the judgment of likelihood of deception is a practical one. It requires an assessment of the effect of the challenged mark on the minds of potential customers: Woolworths[10] at [49]; Australian Woollen Mills[11] at 658.

   Second, the question of deceptive similarity is not to be decided by a side-by-side comparison. It is to be determined by a comparison of the impression based on recollection of the opponent’s mark that persons of ordinary intelligence and memory would have, and the impression that those persons would get from the opposed trade mark: Crazy Ron’s[12] at [73]; Shell Company of Australia Ltd v Esso Standard Oil (Australia) Ltd [1963] HCA 66; (1963) 109 CLR 407 at 415 per Windeyer J.

   Third, allowance must be made for imperfect recollection: Crazy Ron’s at [74].

   Fourth, the effect of the spoken description must be considered: Woolworths at [49]; Crazy Ron’s at [75]; Australian Woollen Mills at 658.

   Fifth, it is necessary to show a real tangible danger of deception or confusion: Woolworths at [43] and [50]; Crazy Ron’s at [76]; Southern Cross Refrigerating[13] at 594 – 595.

   Sixth, a trade mark is likely to ‘cause confusion’ if the result of its use will be that a number of persons are ‘caused to wonder’ whether the two products come from the same source: Woolworths at [50]; Southern Cross Refrigerating Co at 595. This test sets a lower threshold than that which is required to establish that conduct is likely to mislead or deceive under s 18 of Schedule 2 of the Competition and Consumer Act 2010 (Cth): see McWilliam's Wines Pty Ltd v McDonald's System of Australia Pty Ltd [1980] FCA 159; (1980) 33 ALR 394 at 398 per Smithers J.

   Seventh, all surrounding circumstances must be taken into consideration. The circumstances include those in which the marks will be used, and in which the goods or services will be bought and sold, as well as the character of the probable acquirers of the goods and services: Woolworths at [50]; Crazy Ron’s at [86] – [89]; Southern Cross Refrigerating at 595.

   Eighth, the question of whether there is a likelihood of confusion is not to be answered by reference to the manner in which a party has used the mark, but by reference to what an applicant can do. That is to say, the use to which it can properly put the mark if registration is obtained: Woolworths at [50]; Berlei Hestia Industries Ltd v The Bali Company Inc [1973] HCA 43; (1973) 129 CLR 353 at 362 per Mason J.

   Ninth, if a registered trade mark includes words which can be regarded as an ‘essential feature’ of the mark, another mark that incorporates those words may cause a tangible danger of deception or confusion by reason of consumers retaining an imperfect recollection of those words: Crazy Ron’s at [79]. However, care must be taken to not too readily characterise words in a composite trade mark as an ‘essential feature’ because to do so may effectively convert a composite mark into something different: Crazy Ron’s at [100].[14]

   [10] Registrar of Trade Marks v Woolworths Ltd [1999] FCAFC 1020.

   [11] Australian Woollen Mills Ltd v FS Walton & Co Ltd [1937] HCA 51; (1937) 58 CLR 641.

   [12] Crazy Ron’s Communications Pty Ltd v Mobileworld Pty Ltd [2004] FCAFC 196; (2004) 209 ALR 1.

   [13] Southern Cross Refrigerating Co v Toowoomba Foundry Pty Ltd (1954) 91 CLR 592.

   [14] [2012] FCA 1022, [37]-[46].

7. The trade marks are not deceptively similar.  The presence of the word ‘stoddart’ and the difference between the respective devices mean that there is not a real tangible danger of deceptive or confusion; in short the marks are quite dissimilar.    

8. I find that the Opponent has failed to establish the ground of opposition under s 44.

   Section 60

9. Section 60 is reproduced below:

   Section 60 - Trade mark similar to trade mark that has acquired a reputation in Australia

   The registration of a trade mark in respect of particular goods or services may be opposed on the ground that:

   (a)another trade mark had, before the priority date for the registration of the first‑mentioned trade mark in respect of those goods or services, acquired a reputation in Australia; and

   (b)because of the reputation of that other trade mark, the use of the first‑mentioned trade mark would be likely to deceive or cause confusion.

10. To establish a ground of opposition under s 60 an opponent must demonstrate that as at the relevant date there was another trade mark which had acquired a reputation in Australia amongst a significant or substantial number of persons in the relevant market such that use of the trade mark would be likely to deceive or cause confusion.[15]

    [15] The present paragraph and the following paragraphs summarizing the requirements under s 60 of the Act are paraphrased from the decision of the Registrar’s Delegate in Australian Boutique Markets Pty Ltd v Rachael Zelensky and Jeffrey Zelensky [2013] ATMO 97.

11. In McCormick & Co Inc v McCormick, Kenny J considered what is intended by the word ‘reputation’ as used in s 60. Her Honour consulted the Macquarie Dictionary and on the basis of the definition provided concluded that it was ‘the recognition of the [trade mark] by the public generally’.[16]  Her Honour quoted with approval the following words of Lockhart J in Re ConAgra Inc v McCain Foods (Aust) Pty Ltd:

    [R]eputation within the jurisdiction may be proved by a variety of means including advertisements on television or radio, or in magazines and newspapers within the forum. It may be established by showing constant travel of people between other countries and the forum and that people within the forum, (whether residents there or persons simply visiting there from other countries) are exposed to the goods of the overseas owner …[17]

    [16] [2000] FCA 1335, [81].

    [17] (1992) 33 FCR 302, 343.

12. On the subject of reputation Kenny J also referred to the Hugo Boss decision, where the Registrar’s delegate observed:

    [I]t is true that the assessment of the reputation of a trade mark goes far beyond mere examination of sales or turnover of goods sold under that trade mark and contemplation of the advertising and promotional figures.

    As regards a trade mark, its reputation derives both from the quantum of sales under that mark and also its esteem, or image, projected by that trade mark. The quantum of sales, advertising and promotion contributes to the ‘recognition’ component of the trade mark’s reputation. The credit, image and values projected by a trade mark attaches to the ‘esteem’ component of the reputation as do the public events and other trader’s marks with which [the] owner of the trade marks in question chooses to associate the trade marks via sponsorships, cross-promotions, ‘contra deals’ and so forth.

    It follows that a trade mark used in relation to goods with comparatively low sales may have a high and strong reputation by virtue of the high credit or esteem in which it is held, or, conversely, that a trade mark which has very high sales may have a strong reputation notwithstanding the lack of esteem that attaches to it. The particular popular images, or sets of values, that attach to the trade mark are also, therefore, important parts of the reputation of the trade mark and may be as strong an associative force in the minds of the public as the association of the trade marks with the goods or services themselves.[18]

    [18] Hugo Boss AG v Jackson International Trading Co Kurt D Bruhl Gesellschaft MbH & Co KG (1999) 47 IPR 423, 426.

13. As stated above, in assessing reputation under s 60, what constitutes a significant or substantial number of persons in the relevant market must be considered. The case of Le Cordon Bleu BV v Cordon Bleu International Ltee[19] was decided under s 28(a) of the (now repealed) Trade Marks Act 1955.  That provision did not refer to ‘reputation’ at all, only that use of the impugned trade mark would be ‘likely to deceive or cause confusion’.  Nevertheless the words of Heerey J provide some guidance:

    What is ‘significant’ or ‘substantial’ will depend on the nature of the goods or services in question. For some highly specialised products, awareness among a few thousand persons, or even less, might be sufficient … We are here concerned with foodstuffs sold in supermarkets, delicatessens, milk bars and other retail outlets. The relevant market is virtually the entire Australian population from early teenage years onwards.[20]

    [19] (2000) 50 IPR 1.

    [20] Ibid 20. Heerey J’s decision was overturned on appeal to the Full Federal Court, although not on the point quoted. Indeed the court specifically noted that his approach contained no error; see Renaud Cointreau v Cordon Bleu International Ltee [2001] FCA 1170, [75] (Moore, Tamberlin and Goldberg JJ).

14. The Opponent has particularised the ground of opposition in the SGP in the manner set out below: 

    As at the priority date of the Opposed Application, the Opponent had acquired a significant reputation in Australia in the Opponent Marks, and other trade marks used by the Opponent, in respect of the Opponent's activities as a supplier of building products and services, including the installation services claimed by the Application. Such reputation exists not only in respect of the Opponent Marks, but all aspects of the Opponent's branding, including the device shown below:

    [Opponent’s Logo]

    The Opponent's business was established in 1959 and, since that time, the Opponent has grown to become a market leader in the supply of building products and services in Australia. The Opponent's products and services are currently sold from over 30 branches across Queensland, New South Wales, Victoria and South Australia.

    The Opponent, its services and its branding are well known throughout Australia and the Opponent relies heavily on its reputation and resultant goodwill in its activities. The Opponent considers there is significant public awareness and consumer appreciation for the Opponent Marks and the Opponent's other trade marks. The existence of this reputation means it is impermissible for parties such as the Applicant to use marks such as the Applied-For-Mark without infringing the Opponent's intellectual property rights.

15. As a general note, it is not acceptable to particularise a ground of opposition by referring to “other trade marks” or “other trade marks used by the Opponent”.  Such phrasing defeats the purpose of the particulars which are aimed at putting the Applicant on notice of the case it has to meet. As such I consider that this ground has been properly particularised in respect of the Opponent’s Trade Marks and the Opponent’s Logo but not in respect of any other mark used by the Opponent.

16. Given the length of time the marks have been used and the extensive turnover, I am satisfied that the Opponent’s Trade Marks have acquired a reputation in Australia for a broad variety of construction services.  As there is no documentary evidence of any use of the Opponent’s Logo solus I do not reach the same conclusion with respect to the Opponent’s Logo.

17. It is not sufficient that the Opponent merely establishes that its trade marks have a reputation; the Registrar must also be satisfied that because of that reputation the use of the Trade Mark would be likely to deceive or cause confusion. Discussions and decisions on the subjects of deception and confusion are legion and a good number provide relevant comments in relation to a consideration of deception and confusion for the purposes of s 60. In a case concerning infringement and passing off, Australian Woollen Mills Limited v F S Walton and Company Limited, Dixon and McTiernan JJ said the following:

    An attempt should be made to estimate the effect or impression produced on the mind of potential customers by the mark or device for which the protection of an injunction is sought. … The usual manner in which ordinary people behave must be the test of what confusion or deception may be expected.  Potential buyers of goods are not to be credited with any high perception or habitual caution.  On the other hand, exceptional carelessness or stupidity may be disregarded.  The course of business and the way in which the particular class of goods are sold gives, it may be said, the setting, and the habits and observations of men considered in the mass affords the standard.[21]

    [21] (1937) 58 CLR 641, 658.

18. In Registrar of Trade Marks vWoolworths Ltd French J highlighted the following further matters concerning confusion:

    A trade mark is likely to cause confusion if the result of its use will be that a number of persons are caused to wonder whether it might not be the case that the two products or closely related products and services come from the same source. It is enough if the ordinary person entertains a reasonable doubt. It may be interpolated that this is another way of expressing the proposition that the trade mark is likely to cause confusion if there is a real likelihood that some people will wonder or be left in doubt about whether the two sets of products or the products and services in question come from the same source.

    In considering whether there is a likelihood of deception or confusion all surrounding circumstances have to be taken into consideration. These include the circumstances in which the marks will be used, the circumstances in which the goods or services will be bought and sold and the character of the probable acquirers of the goods and services.[22]

    [22] (1999) 45 IPR 411, 428. These considerations by French J are based on principles set out by Kitto J in Southern Cross Refrigerating Co v Toowoomba Foundry Pty Ltd (1954) 91 CLR 592, 594-5.

19. In Pottle Productions Inc v Rute Ithalat Ve Ihracat Anonim Sirketi the delegate observed that:

    The assessment of the likelihood of deception or confusion under section 60 is informed by the strength of the reputation of the Opponent’s trade mark(s), the inherent distinctiveness thereof, the degree of similarity between the trade marks under consideration and the nexus or connection between the goods and/or services of the parties. Each of these is a variable and it is possible that a trade mark’s reputation might be sufficiently strong and the degree of similarity to an opposed trade mark be so great (particularly where the trade marks are inherently distinctive) that confusion or deception will be a likelihood where very little, if any, nexus or connection exists between the goods and/or services under consideration.[23]

    [23] [2012] ATMO 124, [40] (Hearing Officer Thompson).

20. While it is not necessary to show that the marks are deceptively similar for the purposes of an opposition under s 60, as stated in Qantas Airways Limited v Edwards, ‘the degree of similarity between the allegedly conflicting marks will be a relevant consideration to be taken into account when considering the likelihood of confusion resulting from use of the opposed mark.’[24]

    [24] [2016] FCA 729, [142] (Yates J).

21. In the present case, as outlined under the s 44 ground of the opposition I consider the Trade Mark and the Opponent’s Trade Marks to be quite dissimilar, particularly due to the presence of the additional word ‘stoddart’ in the Opponent’s Trade Marks.  As a result of the significant differences I am not satisfied that, due to the reputation of the Opponent’s Trade Marks, the use of the Trade Mark would deceive or cause confusion.

22. I find that the Opponent has failed to establish the ground of opposition pursuant to s 60.

    Section 42

23. Section 42 is reproduced below:

    42 - Trade mark scandalous or its use contrary to law

    An application for the registration of a trade mark must be rejected if:
    (a) the trade mark contains or consists of scandalous matter; or
    (b) its use would be contrary to law.

24. The Opponent pressed this ground of opposition solely on the basis that the use of the Trade Mark would be contrary to law (s 42(b)).  The onus is on the Opponent to establish that use of the Trade Mark by the Applicant would be, rather than could be, contrary to law on the balance of probabilities.[25]  The relevant time for assessing whether an application is contrary to law is at the relevant date but ‘looking forward to prospective conduct after registration’.[26]

    [25] Advantage Rent-a-Car Inc v Advantage Car Rental Pty Ltd [2001] FCA 683.

    [26] Time Warner Entertainment Co LP v Stepsam Investments Pty Ltd [2004] 59 IPR 343, 353 (Wilcox J).

25. The Opponent has particularised the ground of opposition in the SGP as follows: 

    The Opponent submits that the use of the Applied-For-Mark would:

    (a) amount to a breach of the prohibition against misleading or deceptive conduct found in section 18 of the Australian Consumer Law, as contained in Schedule 2 to the Competition and Consumer Act 2010 (Cth); and/or

    (b) give rise to an action in the common law tort of passing off.

    The above submission is invariably supported by the established goodwill and brand recognition in not only the Opponent Marks, but also the reputation the Opponent has established in other aspects of its branding.

    In particular, the use of a similar device in combination with identical colouring, used in respect of the same installation services, is likely to lead consumers to be confused as to whether the Applicant's activities are in some way connected to the Opponent. A side-by-side comparison of the Applicant's branding and the Opponent's branding is shown below.

Applicant's branding Opponent's branding

For completeness, the Opponent notes that establishing the requisite reputation for passing off and a breach of the Australian Consumer Law involves consideration of not just a trade mark, but a range of external factors including colour scheme and 'get up'.

1. The Opponent’s particulars on this ground suffer from the same flaw as its s 60 particulars in that they refer to, but do not particularise unnamed other aspects of the Opponent’s branding. In considering this ground I will limit my consideration to the Opponent’s Trade Marks and Opponent’s Logo and not any aspects of the Opponent’s branding not particularised.

2. The table included in the particulars is misleading and incorrect.  If the Opponent wishes the Applicant cease use of its branding as displayed in the table (which displays the wording Stoddart Electrical), then it should bring proceedings in a court of law.  In the present process my role is to consider if the use of the Trade Mark (not the Applicant’s branding) would be contrary to law.

3. As previously stated the Opponent has failed to establish a ground of opposition under s 60. The test for misleading or deceptive conduct under s 18 of the Australian Consumer Law (‘ACL’) is a more stringent one than that for deception or confusion under s 60,[27] and consequently I find that the Opponent has also failed to establish that the Applicant’s use of the Trade Mark would be contrary to s 18 of the ACL.

   [27] See, e.g.: Ownit Homes Pty Ltd v Ownit Conveyancing Pty Ltd [2005] ATMO 47, [36] (Hearing Officer Williams); Parkdale Custom Built Furniture Pty Ltd v Puxu Pty Ltd (1982) 149 CLR 191, 198 (Gibbs CJ).

4. Justice Hill  in Re Equity Access Pty Ltd v Westpac Banking Corporation also addressed the relationship between s 52 of the TPA and passing off. His Honour considered 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.[28]

   [28] [1989] FCA 506, [40] (citations omitted).

5. For these reasons I am not satisfied that use of the Trade Mark by the Applicant would be contrary to law.  Therefore, the Opponent has failed to establish the ground of opposition under s 42(b).

   Decision and Costs

6. The Opponent has failed to establish any of the grounds of opposition it nominated in the SGP.  Trade mark application number 2047024 may proceed to registration not less than one month from the date of this decision.  If the Registrar isserved with a notice of appeal before that time, I direct that registration shall not occur until either the appeal is withdrawn or discontinued.  Otherwise the disposition of the application should be in accordance with the Court’s order or direction.

7. The Applicant has sought an award of costs in its favour. I see no reason to depart from the general rule that costs follow the event. I accordingly award costs against the Opponent under s 221 in the relevant amounts under Schedule 8 of the Regulations.

   Nicholas Smith
   Hearing Officer
   Delegate of the Registrar of Trade Marks
   16 November 2021