ParexGroup Pty Ltd v Mapei S.p.A

[2015] ATMO 3

TRADE MARKS ACT 1995

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

Re:Opposition by ParexGroup Pty Ltd to extension of protection of international registration designating Australia 1443287(1   ) (International Registration 1085698) – ULTRAFLEX – filed by Mapei S.P.A.

Delegate:	Debrett G. Lyons
Representation:	Opponent: Andrew Wiseman of Allens Holder: unrepresented; no submissions
Decision:	2015 ATMO 3 Regulation 17A.34 opposition: s. 58 considered – Holder not owner of trade mark – extension of protection to Australia refused. Costs awarded against the Holder.

Background

1. Trade mark application number 1443287 is the Australian designation of an application under the Madrid Protocol by an Italian company, Mapei S.P.A. (“the Holder”), to extend protection of the trade mark ULTRAFLEX (“the Trade Mark”), the subject of international registration 1085698 to Australia (“the IRDA”).

2. The IRDA was filed with this office on 1 April 2011 but has a priority date of 11 March 2011 (“the Priority Date”) by reason of a Convention claim based on its Italian home registration.

3. After examining the IRDA, IP Australia advertised its intention to extend protection to Australia in the Australian Journal of Trade Marks of 7 March 2013 in respect of the following goods (“the Goods”):

   Class 1: Industrial chemicals; chemicals for use in the building chemical industry; chemicals for scientific purposes; unprocessed artificial and synthetic resins; dispersions of plastics; unprocessed plastic materials (in powder, liquid or paste form); acrylic preparations in aqueous dispersion; hardening products; chemicals for soldering; adhesives for industrial purposes; adhesives for floors and coatings of ceramics or other materials; adhesives for building; adhesives for cement manufactured products; antifreeze; adhesives for the building industry; additives for cement and concrete; waterproof materials for puttying ceramic slabs

4. Thereafter, an Australian company, ParexGroup Pty Ltd (“the Opponent”), filed Notice of Opposition (“the Notice”) to the registration of the Trade Mark pursuant to regulation 17A.34 (?) of the Trade Marks Regulations 1995 (“the Regulations”).

5. While the Opponent has filed evidence in support of its opposition, the Holder has taken no active part in the ensuing procedural stages[1].  It did not file evidence and did not appear at the hearing or rely on written submissions.  It was the Opponent who requested to be heard and the matter came before me, acting as a delegate of the Registrar of Trade Marks, for a hearing in Sydney on 17 October 2014.

   [1] I note here that it did file a “Notice of Intention to Defend”.

6. At the hearing the Opponent was represented by Andrew Wiseman, solicitor and partner of the law firm Allens. In the days leading up to the hearing and in accordance with the timetable I set, Allens provided me with outline submissions of the Holder’s arguments from which it was clear that it rested its opposition on sections 42(b), 43, 58 and 60 of the Trade Marks Act 1995 (“the Act”).[2]

   [2] I treat the remaining grounds listed in the Notice but not pursued at the hearing to have been implicitly abandoned, albeit that the Opponent is free to rely on those grounds should my decision be appealed.

7. The Opponent bears the onus of establishing one or more grounds of opposition on the balance of probabilities.[3]

   [3] Pfizer Products Inc v Karam [2006] FCA 1663 at [6]-[26]

Evidence

1. The evidence in the opposition comprises:

Evidence in Support

§Andrew Edward Nunn made on 12 November 2013 and accompanying annexures AEN-1 to AEN-17.

Evidence in Answer

§None

Evidence in Reply

§None

Submissions and Reasoning

1. The Opponent’s submissions are that its predecessor in title, known at the time as Laporte Construction Chemicals Limited, adopted the Trade Mark for the Goods and goods of the same kind in 1995 and that significant use of the Trade Mark has continued until at least the Priority Date.

2. For reasons which follow I have decided this opposition under section 58 and, to the extent necessary, section 60.

3. The evidence shows use of the Trade Mark by the Opponent before the Priority Date.  That use is in respect of adhesives; in particular, a polymer modified, powdered cement based adhesive used for walls and tiles.  Australian sales of those goods before the Priority Date of the IRDA is shown by the evidence on a year by year basis and is very substantial.

4. Section 58 states that the registration of a trade mark may be opposed on the ground that the applicant is not the owner of the trade mark. I accept on the evidence that the Opponent (or its predecessor in title) is the first user of the Trade Mark in Australia. All of the Goods described by the IRDA as adhesives (adhesives for industrial purposes; adhesives for floors and coatings of ceramics or other materials; adhesives for building; adhesives for cement manufactured products; adhesives for the building industry) are the same as the goods upon which the Opponent has used the Trade Mark. I am also inclined to think that much of what is described by the IRDA as “industrial chemicals; chemicals for use in the building chemical industry; hardening products; additives for cement and concrete; and waterproof materials for puttying ceramic slabs” includes products likely on balance to be the same kind of thing[4] as the goods upon which the Opponent has used the Trade Mark.

   [4] Being the accepted test of proximity for the purposes of ownership under section 58. See Re Hicks’ Trade Mark (1897) 22 VLR 636.

5. For those reasons I find that the Opponent has established the section 58 ground of opposition for the bulk of the Goods. To the extent that there may be doubt as to whether or not the Goods nominated as “antifreeze; chemicals for scientific purposes; unprocessed artificial and synthetic resins; dispersions of plastics; unprocessed plastic materials (in powder, liquid or paste form); acrylic preparations in aqueous dispersion; and chemicals for soldering” (“the Residual Goods”) are the same kind of thing as the goods upon which the Opponent has used the Trade Mark, then my finding is that the Opponent has established the opposition in respect of the Residual Goods under section 60 of the Act.

6. Section 60 provides that

   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.

   Note:       For priority date see section 12.

7. The evidence shows that the Opponent has sold goods bearing the Trade Mark through various and often large hardware stores and tile businesses in Australia.  As I noted, the sales figures are impressive.  I am satisfied that the Opponent had a reputation in the Trade Mark before the Priority Date.  Were the Holder to use the Trade Mark on the Residual Goods then there is a real and tangible likelihood of confusion.

Decision

1. Regulation 17A.34N of the Regulations provides:

   (1) Unless the opposition proceedings are discontinued or dismissed, the Registrar must decide:

   (a)  to refuse protection in respect of all of the goods or services listed in the                  IRDA; or

   (b)  to  extend protection in respect of some or all of the goods or services   listed in the IRDA (with or without conditions or limitations);

   having regard to the extent (if any) to which the grounds on which the

   IRDA was opposed have been established.

   (2) The Registrar must notify the International Bureau of the Registrar's decision.

2. I have found the opposition to be successful.  Accordingly, I refuse to extend protection of the IRDA to Australia in respect of all of the Goods.  In accordance with regulation 17A.34N(2), the International Bureau will be notified of this decision as soon as practicable.

Costs

1. As the successful party, the Opponent is entitled to its costs which I award against the Holder as per Schedule 8 of the Regulations.

Debrett G. Lyons
Hearing Officer
Trade Marks Hearings
9 January 2015