Opposition by The Dow Chemical Company to registration of trade mark application number 1859190 (17,19) – SLABMATE – in the name of Foilboard Australia Pty Ltd

[2019] ATMO 151

TRADE MARKS ACT 1995

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

Re:Opposition by The Dow Chemical Company to registration of trade mark application number 1859190 (17,19) – SLABMATE – in the name of Foilboard Australia Pty Ltd

Delegate:	Debrett Lyons
Representation:	Opponent: Roseanne Mannion of Spruson & Ferguson, Patent and Trade Mark Attorneys Applicant: John Gibbs, Notary Public
Decision:	2019 ATMO 151 Trade Marks Act 1995 (Cth) - section 52 opposition: ss 42(b), 44, 60 and 62A of the Trade Marks Act 1995 considered – none established and opposition unsuccessful – trade mark may proceed to registration

Background

1. This matter concerns an opposition brought by The Dow Chemical Company (‘the Opponent’) pursuant to s 52 of the Trade Marks Act 1995 (‘the Act’) to registration of SLABMATE (‘the Trade Mark’), the subject of application 1859190 made by Foilboard Australia Pty Ltd (‘the Applicant’).

2. The application was made on 14 July 2017 (‘the filing date’, or as the context requires, ‘the priority date’, those dates being the same in this case) and was examined by this Office as mandated by s 31 of the Act. Following examination, the application was advertised in the Australian Official Journal of Trade Marks as accepted for possible registration for the following goods:

   Class 17: Insulating material in this class, including foam sheets; thermal insulation; insulation for concrete

   Class 19: Building materials comprising insulating layers; pre-formed concrete with integral insulating layer   

   (‘the Goods’).

3. Thereafter, the Opponent filed a Notice of Intention to Oppose the registration and later filed a Statement of Grounds and Particulars (‘the SGP’).  The Applicant then filed a Notice of Intention to Defend.

4. The parties each filed evidence after which they requested to be heard and the hearing took place in Canberra on 2 September 2019.  I was delegated by the Registrar to take the hearing and so sent directions to the parties to ensure the orderly conduct of the hearing.  In compliance with those directions the Opponent, represented by Roseanne Mannion of Spruson & Ferguson, Patent and Trade Mark Attorneys, provided written submissions and advised that she would attend the hearing by video-conference. The Applicant provided a written outline of its submissions and advised that it would attend the hearing in person, represented by John Gibbs, Notary Public.

   Grounds of Opposition, Onus and Standard of Proof

5. The onus of proof to establish at least one of the grounds listed in the SGP rests upon the Opponent.  The grounds pressed at the hearing were summarized by the Opponent as follows:

   • • the Trade Mark is substantially identical with or deceptively similar to the Opponent’s Registered Trade Marks and cover the same or similar goods: ss 44(1);

   • • the Opponent’s MATE suffix trade marks had, before the priority date of the Trade Mark, acquired a reputation in Australia and because of that reputation, the use of the Opposed Mark by the Applicant would be likely to deceive or cause confusion: s 60;

   • • the use of the Trade Mark by the Applicant would be contrary to law, and in particular, would amount to misleading and deceptive conduct in contravention of s 18 and/or ss 29(g) and (h) of Sch 2 to the Competition and Consumer Act 2010 (Cth) (“the ACL”) and/or would constitute passing off: s 42(b); and

   • • the application was filed in bad faith since the Applicant would have been aware of the Opponent’s MATE suffix trade marks and the Opponent’s reputation in those marks at the time of filing its application for the Trade Mark: s 62A.

6. The relevant standard of proof is the ordinary civil standard based on the balance of probabilities.  The date at which grounds are to be determined is 14 July 2017, being the filing (and priority) date of the application.

   Evidence

7. The parties filed evidence in accordance with the Trade Mark Regulations 1995 (‘the Regulations’). The Opponent’s Evidence in Support of its opposition comprises a declaration by Jeremy Unsworth, Sales Manager for Dow Building Solutions with Exhibits 1 to 8 (‘Unsworth’).

8. The Applicant’s Evidence in Answer comprises the declarations of a declaration by Michael Moylan, General Manager of Foilboard Australian Pty Ltd with Exhibits MM1 and MM2 (‘Moylan’), and additional declarations by the Applicant’s State Managers (referred to hereinafter by the surnames): Ben Mitchell, Craig Bennett, John Biljuh, John Rousetty, Myles Law; Nick Gerring and Robert Ferns.

9. The Opponent’s Evidence in Reply comprises a declaration by Aarthi Singaravelu with Annexure A.

   Consideration

   Section 44

10. Section 44 of the Act provides, inter alia:

    44Identical etc. trade marks

    (1)  Subject to subsections (3) and (4), an application for the registration of a trade mark (applicant’s trade mark) in respect of goods (applicant’s goods) must be rejected if:

    (a)  the applicant’s trade mark is substantially identical with, or deceptively similar to:

    (i)  a trade mark registered by another person in respect of similar goods or closely related services; or

    (ii)  a trade mark whose registration in respect of similar goods or closely related services is being sought by another person; and

    (b)  the priority date for the registration of the applicant’s trade mark in respect of the applicant’s goods is not earlier than the priority date for the registration of the other trade mark in respect of the similar goods or closely related services.

11. The Opponent’s submissions are that it is the registered owner in Australia of the trade marks, ROOFMATE, FLOORMATE, DECKMATE, CLADMATE and WEATHERMATE, all of which have an earlier filing date than that of the Trade Mark.  Further, that the goods for which registration is sought are the same as or similar to the goods covered by the Opponent’s registrations (essentially, building materials).

12. The Applicant takes no issue with those points other than to note that the WEATHERMATE mark covers different goods, something on which it submits nothing turns. However, the Applicant contests the Opponent’s further claim that the Trade Mark is, in its submission, “deceptively similar to each of the Opponent’s Registered Trade Marks” and this is the only issue on which the outcome of the s 44 ground turns.

13. Suitably redacted, the Opponent’s submission is that:

    … it is clear that the Opposed Mark is visually and aurally similar to the Opponent’s Registered Trade Marks.  The Opposed mark is comprised of the conjoined words “SLAB” and “MATE” forming the mark SLABMATE. The Opponent’s Registered Trade Marks are also comprised of two conjoined words with the second word being “MATE” namely ROOFMATE, FLOORMATE, DECKMATE, CLADMATE and WEATHERMATE. The SLABMATE mark is therefore visually constructed in the same way as the Opponent’s Registered trade marks. The Opposed mark has aural similarities with the Opponent’s Registered Trade Marks. The Opposed mark is made up of two verbal syllables – SLAB and MATE. The Opponent’s Registered Trade Marks are also made up of two or three verbal syllables e.g. ROOF-MATE and WEATHERMATE. The aural similarities between the Opposed Mark and the Opponent’s Registered Trade Marks are reinforcing given that all the marks contain the distinctive suffix MATE. This is the common feature between all of the marks and is a memorable and aural feature of each of the marks. This common feature will be recalled and relied upon by consumers to identify the commercial origin of the goods. This is particularly so as the other element included in the Opposed Mark and the Opponent’s Registered Trade Marks is descriptive i.e. SLAB and ROOF. The element MATE is in no way descriptive of the relevant goods. The Opposed Mark is conceptually similar to the Opponent’s Registered Trade Marks. The first element of the Opposed Mark is a descriptive element. Each of the first elements of the Opponent’s Registered Trade Marks is also an arguably descriptive element e.g. ROOF, DECK, FLOOR, CLAD and WEATHER. The conceptual construction of the Opposed Mark and the Opponent’s Registered Trade Marks is therefore the same – the combination of a descriptive element with the word “MATE”. Given the distinctive nature of the element “MATE”, this enhances the conceptual similarity between the marks.

14. I cannot agree.  The element “MATE” is extremely common on the register of trade marks and I find it to be entirely generic within the context of the compared building materials.  What remains of each of the registered marks is, as said, descriptive of different building applications and distinguishable on all levels from the element “SLAB”.  Imperfectly recollected (as the Opponent would have me exercise my consideration) or not, I do not find that the Trade Mark would be confused, individually, with any of the Opponent’s registered marks.  Nevertheless, what hangs in the submissions and what was also present in oral argument is the suggestion that confusion would arise having regard to, using the Opponent’s language at [13], “the common feature between all of the marks”, being “a memorable and aural feature of each”.

15. It is therefore convenient to step back to the legislative framework and the relevant case law. Section 10 of the Act provides:

    10Definition 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.

16. In Shell Co of Australia Ltd v Esso Standard Oil (Australia) Ltd, Windeyer J stated:

    The deceptiveness that is contemplated must result from similarity; but the likelihood of deception must be judged not by the degree of similarity alone, but by the effect of that similarity in all the circumstances.

17. Jacobson J in Millennium & Copthorne International Limited v Kingsgate Hotel Group Pty Ltd referred to earlier authorities and identified nine guiding principles to be applied in the assessment of deceptive similarity, the more pertinent of which are extracted below:

    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 at [49]; 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 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.

    …

    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].

18. In this case, those authorities are sufficient to guide me. The single “surrounding circumstance” that conditions my comparison is the Opponent’s assertion of a reputation in Australia of a stable of known trade marks all including the element “MATE”. I have already characterized that word as generic and rather than treating it as an “essential feature”, I find that it is no more than a common, shared feature. Further, my findings soon to follow under s 60 fail to show any reputation in a family of similar “-MATE” suffixed marks in Australia and I do not consider this to be a surrounding circumstance I need take into account under s 44.

19. Applying these principles and taking into account the character of the probable acquirers of the goods, I find that some few might have cause to wonder about the provenance of goods bearing the Trade Mark, but I do not find that the Opponent has met the evidenciary burden to prove a real tangible danger of deception or confusion.

20. I find that the marks are not deceptively similar and so it follows that the Opponent has not established its ground under s 44 of the Act.

    Section 60

21. Section 60 of the Act provides:

    60Trade 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.

    Note:For priority date see section 12.

22. Accordingly, the Opponent needs to establish to the satisfaction of the Registrar that:

    •     •    the trade mark(s) upon which it relies had a reputation in Australia at the priority date; and

    •     •    because of that reputation the use of the Trade Mark would deceive or cause confusion.

23. In McCormick & Co Inc v McCormick (‘McCormick’) Kenny J asked:

    What is intended by the word “reputation” in s 60? The word is defined in The Macquarie Dictionary as follows:

    reputation ... 1. the estimation in which a person or thing is held, esp. by the community or the public generally; repute ... 2. favourable repute; good name ... 3. A favourable and publicly recognised name or standing for merit, achievement, etc. ... 4. The estimation or name of being, having done, etc, something specified.

    Cf. The Oxford English Dictionary. In s 60, the word is, I think, apt to refer to “the recognition of the McCormick & Co marks by the public generally”.

24. In Le Cordon Bleu B.V. v Cordon Bleu International Ltee Heerey J said that the reputation required to be demonstrated (albeit in relation to section 28(a) of the repealed Trade Marks Act 1955) was to be:

    ... one of which a significant number of persons were aware...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.

    (Implicitly approved by the Full Federal Court (Moore, Tamberlin and Goldberg JJ) on appeal in Renaud Cointreau & Cie v Cordon Bleu International Ltee).

25. Regarding the measurement of reputation, in McCormick Her Honour went on to state:

    In practice, it is commonplace to infer reputation from a high volume of sales, together with substantial advertising expenditures and other promotions, without any direct evidence of consumer appreciation of the mark, as opposed to the product: see, e.g., Isuzu-General Motors Australia Ltd v Jackeroo World Pty Ltd (1999) 47 IPR 198; Marks & Spencer plc v Effem Foods Pty Ltd (2000) AIPC 91-560; Photo Disc Inc v Gibson (1998) 42 IPR 473; and RS Components Ltd v Holophane Corp (1999) 46 IPR 451. This Court has followed this approach as well, acknowledging that public awareness of and regard for a mark tends to correlate with appreciation of the products with which that mark is associated, as evidenced by sales volume, amongst other things. Thus, in Toddler Kindy Gymbaroo Pty Ltd v Gymboree Pty Ltd [2000] FCA 618 (“Gymboree”), Moore J accepted at [94] that the applicant had established a reputation for the purposes of s 60 solely on the basis of use and promotion of the relevant mark. Another example of this approach is Nettlefold Advertising Pty Ltd v Nettlefold Signs Pty Ltd (1997) 38 IPR 495 (“Nettlefold”), in which Heerey J relied upon the public visibility of the applicant’s marks over approximately two decades as well as a $100,000 promotional campaign in finding that a reputation for the purposes of s 28 of the 1955 Act existed.

26. In Pottle Productions Inc v Rute Ithalat Ve Ihracat Anonim Sirketi (‘Pottle’) the Registrar’s delegate observed:

    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.

27. In its written submissions, the Opponent states that for the purposes of s 60 the requisite reputation is proved by Unsworth, in particular, that the Opponent has continuously offered, promoted and sold insulating and building goods under or by reference to its MATE suffix trade marks in Australia since 1981 and worldwide since 1958.

28. The Opponent submits that “it is beyond dispute that the Opponent’s Registered Trade Marks are well known in Australia and internationally. The Applicant should concede that this is so.”  Further, that “there is no question that a consumer would be likely to be caused to wonder, particularly in view of the Opponent’s reputation in its family of MATE suffix marks.” 

29. The Applicant’s position is that the Opponent has not met the evidenciary onus to prove reputation in Australia.  It reasons that unsupported statements in Unsworth and the defective physical evidence accompanying it do not establish reputation in this country.  Further, that the declarations of the Applicant’s general manager and seven other declarants, located in various States of Australia, each of whom states that he is familiar with the trade marks used by competitors in the industry, and each of whom states that he has not heard of any or most of the trade marks in which the opponent claims a reputation, is not addressed by evidence in reply.

30. Unsworth does contain bare assertions of an extensive reputation in the Opponent’s trade marks in Australia.   A confidential exhibit shows annual wholesale figures which end several years before the priority date and which do not account for more than sporadic use of the     “-MATE” suffixed marks noted in [13] above.  There is no use of many of the marks since 2009.

31. Unsworth claims that the Opponent’s goods bearing its various “-MATE” marks are  promoted and advertised by a range of methods including brochures, catalogues, pricelists and on a website.  The website appears to be the Opponent’s US website.   An exhibited brochure is said to have “been available in Australia”.  It promotes polystyrene foam products and the “-MATE” suffixed marks which appear in the brochure are used in conjunction with the trade mark STYROFOAM, such as STYROFOAM ROOFMATE, STYROFOAM DECKMATE, STYROFOAM WALLMATE, STYROFOAM FLOORMATE, and STYROFOAM PERIMATE.  The price lists appear by the use of notations to be for internal circulation within the Opponent company and principally reference a mark, ROOFMATE SL-X.

1. Of the remaining evidence in Unsworth, all that I consider to be noteworthy is the claim that in 2000, FLOORMATE goods were used in the building of the Federation Square in Melbourne.

2. The Applicant, with the aid of information provided in Moylan, uses the sales information provided by the Opponent to make its own calculations in support of the submission that actual sales of ROOFMATE marked products made up an insignificant part of the Australian market for house ceiling insulation.  The reasoning is feasible and uncontradicted.

3. Further, Moylan states that no one has suggested to him or to any employee of his company that they have noticed a similarity between the Trade Mark and any trade marks belonging to the Opponent or another company.

4. The remaining evidence on behalf of the Applicant comes from Gerring, the Applicant’s  National and Victorian Sales Manager, or from its various State Managers.  They make similar statements.  Fern, Bennett, Roussety and Law state that they are not aware of any insulation products sold in Australia by the Opponent. Biljuh says that he is aware that the Opponent sells “PIR board” and “XPS panels”.  Mitchell makes essentially the same statement and goes on to state that the Opponent is not a significant competitor in the building insulation product market in Australia, but attests to awareness that they sell an “XPS board” under the name, STYROFOAM. 

5. Given the status of those declarants I have given this evidence the weight it deserves but, that said, I note the Applicant’s submission that the evidence was uncontradicted by evidence in reply. 

6. Taking the evidence as a whole, I am unable to discover that the Opponent had a reputation in Australia in a stable of “-MATE” suffixed marks as has been claimed.  What I do find is that the Opponent may have once had a very modest reputation in respect of the ROOFMATE trade mark, but at the priority date there was a question as to whether that reputation was subsisting.  In any event, having regard to the dissimilarity of the Trade Mark and ROOFMATE and the other factors laid out in the case law cited above, I find that there is no likelihood of confusion or deception.

7. Those findings are determinative of the s 60 ground which I find has not been established.

   Section 42

8. Subparagraph 42(b) of the Act relevantly provides:

   42Trade mark scandalous or its use contrary to law

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

   […]

   (b)its use would be contrary to law.

9. The onus is on the Opponent to establish on the balance of probabilities that use of the Trade Mark would, rather than could, be contrary to law. The Opponent has failed to establish the ground of opposition under s 60 of the Act and it is well recognised that the test for “misleading or deceptive conduct” under s 18 of the Australian Consumer Law (‘the ACL’) is a more stringent test than that for “deception or confusion” under s 60. Accordingly, I find that the Opponent has also failed to establish that use of the Trade Mark would be contrary to s 18 of the ACL.

10. For the same reason, lack of reputation, there is nothing to support the assertion of passing off.

11. I find that the Opponent has not established the ground of opposition under s 42 of the Act.

    Section 62A

12. Section 62A of the Act states that the registration of a trade mark may be opposed on the ground that the application was made in bad faith.

13. There are no detailed submissions from the Opponent in relation to this ground.  On the other hand, Moylan gives an account of how the Trade Mark was chosen and of searches made prior to application.  There is no evidence that awareness of the Opponent or its trade marks played any part in the Applicant’s decision to apply for the Trade Mark.

14. In my assessment of the evidence as a whole there is nothing showing conduct on the part of the Applicant falling short of the standards of acceptable commercial behaviour observed by reasonable and experienced persons. 

15. I find that the s 62A ground of opposition has not been established.

    Decision

16. Section 55 of the Act relevantly provides:

    55Decision

    (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.

    Note:For limitations see section 6.

17. The Opponent has not established a ground of opposition.

18. The Trade Mark may proceed to registration one month from the date of this decision.  If the Registrar has been 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

19. The Applicant sought its costs in the event it was successful in this matter and I accordingly award costs against the Opponent at the official scale set out in Schedule 8 to the Regulations.

    Debrett Lyons
    Hearing Officer
    Hearings and Oppositions
    21 October 2019