Patriot Campers Pty Ltd v Sunland RV Pty Ltd

[2018] ATMO 59

TRADE MARKS ACT 1995

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

ReOppositions by Patriot Campers Pty Ltd to registration of trade mark application nos. 1684150 (12) – PATRIOT – and 1763715 (12) – PATRIOT Logo – in the name of Sunland RV Pty Ltd

Delegate:                 Debrett G. Lyons

Representation:       Opponent: Andrew Musgrave of Counsel, instructed by Blake Knowles of Cullens, Patent & Trade Mark Attorneys

Applicant: Edwina Whitby of Counsel, instructed by IP Service International Pty Ltd

Decision:                   2018 ATMO 59

Trade Marks Act 1995 (Cth) – s.52 oppositions: ss. 44, 58, 58A and 60 pressed; no ground established; oppositions unsuccessful and registrations allowed

Background

1. This matter concerns oppositions brought under section 52 of the Trade Marks Act 1995 (“the Act”) by Patriot Campers Pty Ltd (“the Opponent”) to the registration of two trade marks filed in the name of Sunland Australia RV Pty Ltd (“the Applicant”).

2.     The Applicant sells caravans and mobile homes.  It has sought to register the trade mark PATRIOT (“the Word Mark”) and a logo-style trade mark shown below (“the Logo Mark”).

3.     The application for the Word Mark was made on 27 March 2015 and the application for the Logo Mark was made on 8 April 2016.  These are the relevant dates for the purposes of assessment of the Opponent’s grounds of opposition.[1]  The trade marks were examined and accepted for possible registration in respect of the following class 12 goods (“the Goods”):

Caravans; Mobile homes (caravans); Supports for trailers and caravans (legs and dolly wheels); Camping cars; Camping trailers; Caravan spoilers; Caravan storage assemblies; Canopies for trailers; Cast ferrous wheels for use on trailers; Drawbars for trailers; Fifth wheel connectors for road trailers; Load carrying trailers; Non-electric couplings for towing trailers; Suspension apparatus for trailers; Tow bars for trailers; Sleeping berths for vehicles.[2]

[1] Southern Cross Refrigerating Co v Toowoomba Foundry Pty Ltd [1954] HCA 82, [2].

[2] The Word Mark and the Logo Mark were advertised as accepted on the Australian Official Journal of Trade Marks on 26 May 2016 and 1 September 2016 respectively.

4. For the purposes of later discussion it is noted here that the Word Mark was accepted subject to the entry of an endorsement: “Provisions of paragraph s44(3)(a) and/or Reg 4.15A(3)(a) applied”; the Logo Mark was accepted subject to the entry of an endorsement: “Provisions of paragraph s44(3)(a) and/or Reg 4.15A(3)(a) applied. Provisions of subsection s44(4) and/or Reg 4.15A(5) applied.”

5.     The Opponent makes camper trailers.  On 16 September 2015 it had applied to register the trade mark PATRIOT CAMPERS (“the Opponent’s Word Mark”)[3] and the logo-style trade mark appearing below (“the Opponent’s Logo Mark”)[4]:

[3] Trade Mark Application No. 1721972 in classes 12, 20, 22, 25, 35, 39, presently with a status of “Under examination – deferred”.

[4] Trade Mark Application No. 1721977 in classes 12, 20, 22, 25, 35, 39, presently with a status of

6.     Whilst the scope and characterization of the Goods is a matter of contention between the parties, in broad terms the Applicant has used its trade marks on caravans and the Opponent has used its trade marks on camper trailers and load bearing trailers.

7.     The Opponent filed Notices of Intention to Oppose the registration of the Word Mark and the Logo Mark on 19 July 2016 and on 11 October 2016 respectively and Statements of Grounds and Particulars (‘the SGP/SGPs’) on 16 August 2016 and 10 November 2016 respectively.   The Applicant filed Notices of Intention to Defend on 30 August 2016 and 25 November 2016 respectively.

8.     Evidence in Support, Answer and Reply also followed a staggered timetable of submission and comprised:

·     Evidence in Support of the opposition being a declaration by Justin Montesalvo, a director of the Opponent, made 6 December 2016 (“Montesalvo”);

·     Evidence in Answer being declarations (in essentially identical terms; one per application) by Daniel Knecht, registered foreign lawyer for the Applicant, made 10 March 2017 (taken together, “Knecht”); and

·     Evidence in Reply being a declaration by Blake Knowles, attorney with the Opponent’s representatives, made on 30 May 2017.

9.     The parties asked to be heard and the matter was set down for a hearing in Canberra on 6 February 2018.   At the hearing Andrew Musgrave of Counsel, instructed by Blake Knowles of Cullens, Patent & Trade Mark Attorneys, represented the Opponent and Edwina Whitby of Counsel, instructed by IP Service International Pty Ltd, represented the Applicant.  Both parties provided me with written outline submissions prior to the hearing in accordance with directions I had given and those submissions are referred to as required in the decision which follows.

Grounds of Opposition, Onus and Standard of Proof

10. In the SGP for the Word Mark the Opponent nominated grounds of opposition under sections 58, 60 and 62 of the Act. The SGP for the Logo Mark nominated grounds under sections 44, 58, 58A and 60 of the Act. All grounds were pressed but for that based on section 62.

11.     The Opponent bears the onus[5] of establishing one or more grounds of opposition on the balance of probabilities.[6] As mentioned, the relevant dates at which the grounds under section 52 of the Act must be considered are the filing dates of the opposed applications (whilst sections 44 and 60 mention the “priority date”, those dates are here the same as the filing dates).

[5] Food Channel Network Pty Ltd v Television Food Network GP [2010] FCAFC 58, [32].

[6] Telstra Corporation Limited v Phone Directories Company Ltd [2015] FCAFC 156, [132]-[133].

Preliminary findings

12.     To facilitate and inform the discussion of those different grounds I have first drawn out certain elementary questions of importance.

(i)        Use of the trade marks by the parties: the Opponent’s evidence

13.     Mr Montesalvo is a director of the Opponent.  He declares that in January 2013 he developed the concept for a camper trailer and that a concept drawing was produced on 4 February 2013[7] which included the words “Patriot Campers”[8].   However I note that he also declares that the Opponent was incorporated on 15 July 2013.  He declares that the Opponent’s Word Mark was used in connection with commissioning the design of that camper trailer (“the X1 Trailer”) and that since 2013 the X1 Trailer was advertised, promoted and marketed by reference to the Opponent’s Word Mark.

[7]           Montesalvo [3]; exhibit JM-1.

[8]           Montesalvo [14]; exhibit JM-2.

14.     Mr Montesalvo provides evidence that the X1 Trailer was the winner of the “Camper Trailer of the Year” award in 2014, 2015, 2016 and 2017.[9]  He declares to and provides evidence of the advertising and promotion of the X1 Trailer over this period.  The evidence includes public exhibition of the X1 Trailer in July 2013, certain confidential promotional material and archived internet data pointing to sales of the trailer under the Opponent’s Word Mark from October 2013.  Scattered through this evidence I note use of the Opponent’s Logo Mark.

[9]           Montesalvo [9]; exhibit JM-4

15.     Based on the evidence I find that the Opponent has used both its trade marks in relation to camper trailers from a period in mid to late 2013.

(ii)      Use of the trade marks by the parties: the Applicant’s evidence

16.     Daniel Knecht, a lawyer with the Applicant’s representatives, declares on behalf of Mr Wyss, director of the Applicant, that the Applicant has marketed a range of caravans under the trade mark SUNLAND.  Various names are given to the caravans in its range including “Longreach”, “Blue Heeler”, “Winton” and (since 2010) “Patriot”.[10]   The “Patriot” named caravan is the flagship of the range and the evidence is that it has been promoted and marketed broadly.  Sales figures since 2010 are impressive and in my assessment the evidence shows use, not only of the Word Mark and the Logo Mark, but use of those marks in a trade mark sense separate from the use of the house brand.

[10]         Knecht [11]; exhibits 6a – 9

17.     Based on the evidence I find that the Applicant has used both its trade marks in relation to caravans since 2010. 

(iii)      The nature of the goods

18.     The Opponent states that a camper (or camping) trailer is not a caravan or mobile home.  The Applicant relies on the Oxford Dictionary for the definition of a “trailer” as “an unpowered vehicle towed by another”.  It follows, says the Applicant, that a camper or camping trailer is an unpowered vehicle towed by another used for camping.  Further, the Oxford Dictionary defines a “caravan” as “a vehicle equipped for living in, typically towed by a car and used for holidays”.  The Applicant submits that:

“when comparing the above definitions, it appears that the main characteristic of a caravan is that it is equipped for living in, and that it is typically but not necessarily unpowered and towed by a car. A camping/ camper trailer appears to be defined by the fact that it is unpowered and, therefore, necessarily towed by a car, irrespective of whether it is equipped for living in or not. Accordingly, a brief search on Google’s image search for “camping trailer” and “camper trailer” reveals that camping/ camper trailer can be both equipped for living in or not but are always unpowered”.

19.     A Google search produced the following examples which are taken from the Applicant’s written submissions:

Example 1

Link:

Example 2

Link:

Example 3

Link:

Example 4

Link:

Example 5

Link:

20.     The Applicant notes that Example 5 shows the model “Autumn Ridge” made by Starcraft RV which is listed as being a “travel trailer camper”.[11]  The Applicant submits that “against this background, it seems apparent that the Opponent’s products would indeed most likely not be described by the average consumer as ‘caravans’, given that they are not equipped for living in”.  It then reproduces in its submissions an image of the Opponent’s X1 Trailer, as shown hereunder:

Link:

[11] see

21.     The Applicant goes on to state that “according to the above definitions, it cannot be said that the Applicant’s ‘Patriot’ model cannot be described as ‘camping/ camper trailer’, given that it is an unpowered recreational vehicle towed by a car (=trailer)”.

22.     From what is before me, there is no discreet dictionary definition of a “camper/camping trailer”.  I do not find the deconstructive approach to that expression taken by the Applicant helpful in this case.  Instead, I think that the similarities and differences of a camper trailer and a caravan can be evaluated as a matter of common sense.  Whether or not the X1 Trailer is equipped for living or sleeping in is to my mind subsidiary to the question whether a camper trailer might include those accommodations.  On the evidence I do not think there is a clear distinction between these goods.  I can see evidence of the advantages and disadvantages of one style of drawn recreational vehicle over another[12] and I can see that the X1 Trailer in its current incarnation sits towards one end of a spectrum of vehicles that might more suitably carry the appellation of camper trailers.  But in other forms and with other comforts there is only a shadow separating what might be described as a camping trailer from what comes within the description of a caravan.

[12] Knowles exhibits generally.

23.     In my assessment and for the purposes of upcoming discussion of the legislative provisions and the grounds of opposition I find that a camper trailer and a caravan are not identical goods, but are “the same sort of thing”. 

(iv)      Identity/similarity of the compared trade marks

24.     There are four marks at issue, set out together below for ease of reference:

Opponent’s trade marks

(a)       PATRIOT CAMPERS

(b)       

Applicant’s trade marks

(a)       PATRIOT

(b)       

25.     I have found that all four marks have been used.  For reasons which follow an issue is whether or not either (or both) of the Opponent’s trade marks is substantially identical to the Applicant’s trade marks.  Turning first to the comparison of the two word marks, I am in agreement with the Opponent’s submission that “the distinctive component of the PATRIOT CAMPERS trade mark … is the word PATRIOT”, although for the purposes of conformity with case law I prefer to make the finding that the word PATRIOT is the essential feature of the expression PATRIOT CAMPERS.[13]  This is the language used by Windeyer J in The Shell Company of Australia Ltd v Esso Standard Oil (Australia) Ltd (1963) 109 CLR 407 (“Shell”) at 414:

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 feature of the registered mark and the total impression of resemblance or dissimilarity that emerges from the comparison. [added stress]

[13] In spite of certain readings that have been made of the recent Federal Court cases of Pham Global Pty Ltd v Insight Clinical Imaging Pty Ltd [2017] FCAFC 83 and Accor Australia & New Zealand Hospitality Pty Ltd v Liv Pty Ltd [2017] FCAFC 56, the determination of the “essential feature” of a trade mark remains the touchstone for the purposes of substantial identity as that expression is understood in the Act. A fulsome consideration of this issue can be found in Re:Opposition by Juno Pharmaceuticals Inc to registration of trade mark application 1646293 (5, 35 & 42) (IR 1215648) JUNO THERAPEUTICS in the name of Juno Therapeutics, Inc., 2017 ATMO 160.

26.     As was observed by Dixon J in Howard Auto-Cultivators Ltd v Webb Industries Pty Ltd[14] in considering the meaning of a trade mark:

… I think that the question depends upon the use to which it is intended to put the word-mark. Doubtless a word is no less invented because, when it comes to be affixed to an article, its meaning is determined and perhaps explained. But the meaning of all words is governed by their context and how words are understood depends upon the universe of discourse. Here the scope of the use of the word is settled by the application for registration, which is in respect of cultivating implements. 

[14] [1946] HCA 15; (1946) 72 CLR 175.

27.     When the trade mark PATRIOT CAMPERS is so analysed, the word “campers” is wholly non-distinctive and the word “patriot” is the essential feature of the mark.

28.     The comparison of the Opponent’s Word Mark with Applicant’s Logo Mark is less easy.  I have already found the word “patriot” to be the essential feature of PATRIOT CAMPERS.  What then can be said of the Applicant’s Logo Mark?  In the first place I find that the colouration of the mark is inconsequential.  I note that the word “patriot” is presented in upper case and is the physically dominant part of the composite mark.  I also find that the font of the upper case letters is commonplace and might by many be considered as no more than an ordinary presentation of a word mark in upper case.  In a similar way, I find that the device component of the mark is essentially a literal map, rather than a figurative, map of Australia and that the cross-hatching of the device is also inconsequential.  Further, were someone asked what the device represented, the answer would be, “Australia”, or perhaps “a map of Australia”.   The semiotic of the mark is “PATRIOT Australia”.  In the context of the Goods, the map shows both the place of manufacture and the site of the patriotism.  In terms of the essential features of the Logo Mark, the map can be ‘read down’ – in other words, if the map occurred on its own, it would not function as an indication of trade origin and would have no trade mark value.

29.     The assessment of substantial identity has occupied the Federal Court’s attention in recent decisions[15] well explained by Hearing Officer Kirov in Juno Pharmaceuticals Inc v Juno Therapeutics, Inc., 2017 ATMO 160 (“Juno”).   In Juno the question arose as to whether or not the trade marks JUNO PHARMACEUTICALS and JUNO THERAPEUTICS were substantially identical.  Hearing Officer Kirov found that in the context of the parties’ goods and services of interest the words “therapeutics” and “pharmaceuticals” were descriptive and had overlapping meanings.  He did not accept that the Federal Court had advanced any kind of “new test” for the assessment of substantial identity and underscored that the Court had endorsed Windeyer J’s formulation from Shell.  In support he quoted Accor at [280] and Pham at [51], those passages set out in turn below:

As to the test to be applied in determining whether a respondent has used, as a trade mark, a sign that is substantially identical with the registered trade mark, each mark is to be compared side by side.  The point of the comparison is to identify similarities in the marks and the differences between them for the purpose of enabling an assessment to be made of the importance of those things having regard to the “essential features” of the registered trade mark and the “total impression of resemblance or dissimilarity that emerges from the comparison”: Shell, Windeyer J at 414.

There is no doubt in our view that the Full Court in Accor in using the phrase “dominant cognitive cues” was making analogical reference to the “essential features” of the mark for the purposes of a side by side comparison in determining whether marks are substantially identical consistent with the observations of Windeyer J in Shell at 414 as earlier recognised by the court in the reasons. The dominant cognitive cues are the essential features striking the eye in a side by side comparison so as to determine whether marks are substantially identical.

[15] Refer to f.n. 15 above.

30.     Hearing Officer Kirov went on to state that the “traditional view” of substantial identity put to him in submissions was, in his assessment:

… seemingly based upon a selective understanding of Gummow J’s often-quoted obiter dicta from Carnival.  It takes no account of the context of his Honour’s words, where the Court was comparing trade marks fundamentally different from JUNO PHARMACEUTICALS and JUNO THERAPEUTICS, being FUN SHIP (or FUN SHIPS) on the one hand and SITMAR’S FUNSHIP and FAIRSTAR THE FUNSHIP on the other.

31.     Further, he footnoted that passage with a reference to PB Foods Ltd v Malanda Dairy Foods Ltd (1999) 47 IPR 47 (“Malanda”) and the observation that at [33]-[39] Carr J approves Carnival but differentiates it from the position where the sole difference between the marks under comparison is that one or both of them contains an additional descriptive word.

32.     Malanda is of relevance to the issues before me as can be seen from Carr J’s reasoning at [38]:

The question to be decided in each case is largely one of fact, provided that the test is properly applied.  Comparing CHOC CHILL, or COFFEE CHILL, or VANILLA CHILL or STRAWBERRY CHILL with CHILL, I note the differences comprising an extra word of varying length the function of which is to describe flavour, but I note the similarity of the constant use of the word CHILL. I have already mentioned the importance of CHILL and the degree to which it is essential to the mark.  Bearing in mind the relative importance of CHILL I give very little weight to the descriptors CHOC, COFFEE, VANILLA or STRAWBERRY.

…

In the end, I found myself in agreement with the delegate’s reasoning and conclusion which is set out at p10 of her reasons as follows:

When the side by side comparison is made between the mark CHILL, used by Malanda, and the application trade mark it is not a simple one to one comparison.  P B Foods’ mark is not simply CHOC CHILL.  PB Foods has chosen to file its mark as one which will be varied in use and in doing so has made it clear that the essential feature of its trade mark is the word CHILL which is used with a purely descriptive variable feature.  In selecting the goods, a prospective purchaser will therefore recognise the word CHILL as the badge of origin and will see the word CHOC or COFFEE or STRAWBERRY or VANILLA as nominating nothing more than the flavour of the product.  When considered in this light, it seems to me that the comparison between CHILL and CHOC CHILL does lead to a “total impression of similarity” and the proprietorship claim is supported.

33.     Although Malanda involved the comparison of plain word marks I have already commented on the value of the map in the Logo Mark and I only repeat that for the purposes of comparison, the Logo Mark “reads” as “PATRIOT Australia”.

34.     I find that the word “patriot” is the essential feature of both trade marks and after careful consideration I find the Logo Mark to be substantially identical to the mark, PATRIOT CAMPERS.

Discussion and Reasoning

35. I have first considered those grounds of opposition taken against both of the applications, namely, those based on sections 58 and 60 of the Act.

Section 58

36. Section 58 of the Act is reproduced below:

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

37. The word “owner” is not defined in the Act but is well understood to mean the first person to use (or where there is no use, apply to register) a trade mark in the course of trade in Australia in relation to the goods or services of relevance.[16] To establish its section 58 ground the Opponent must show a party other than the Applicant first used the Word Mark and the Logo Mark (or marks “substantially identical” thereto) in Australia for goods adjudged to be “the same kind of thing” as the Goods before (in this case) the Applicant’s first use of the Word Mark and the Logo Mark.

[16]  Seven Up Co v OT Ltd (1947) 75 CLR 203

38. Based on my earlier findings the Applicant is the senior user of both its Word Mark and Logo Mark in relation to recreational vehicles being caravans; mobile homes (caravans); camping/ camper trailers; their parts and accessories. To the small degree that the Goods claimed include other articles I do not find that the Opponent has established any better position than the Applicant in terms of ownership in relation to those remaining goods and so my finding is that the Applicant is the owner of both of the applied-for trade marks and the section 58 ground of opposition has not been established.

Section 60

39. Section 60 of the Act is reproduced below:

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.

40.     In McCormick & Co Inc v McCormick 51 IPR 102 (‘McCormick’) Kenny J asked at 128:

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”.

41.     In Le Cordon Bleu B.V. v Cordon Bleu International Ltee[17] Heerey J said that the reputation required to be demonstrated 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.

[17] [2000] FCA 1587.

42.     Regarding the measurement of reputation, in McCormick her Honour went on at p129 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.

43.     I have already considered the sales and promotional details provided by the Opponent.  The window of time in which the Opponent can show the development of its reputation in its trade marks is less than two years.   The Opponent’s X1 Trailer is not what I would ordinarily call a highly specialized product but, on the other hand, I do not agree with the Applicant’s submission that the audience for that type of product is so large that the relevant public is “virtually anyone in Australia owning a car able to tow a trailer”.  I consider that by the filing dates there existed a modest reputation in the Opponent’s Trade Marks in relation to the area of outdoor recreational vehicles.

44. That said, section 60 requires the Opponent to show a real tangible danger of deception or confusion occurring; a mere possibility is not sufficient. Further, in considering whether there is a likelihood of deception or confusion all surrounding circumstances have to be taken into consideration. Those surrounding circumstances include the Applicant’s use of what I have determined to be substantially identical trade marks. Not only do I find the Applicant’s use to have established a quite significant reputation in the Applicant’s trade marks, but a reputation springing from continuous use since 2010, well before the Opponent has documented any sales of the X1 Trailer.

45.     The terms ‘deception’ and ‘confusion’ refer to two different mental states. The differences between ‘deception’ and ‘confusion’ were explained by Richardson J in Pioneer Hi-Bred Corn Co v Hy-Line Chicks Pty Ltd[18]:

‘Deceived’ implies the creation of an incorrect belief or mental impression and ‘causing confusion’ may go no further than perplexing or mixing up the minds of the purchasing public ....

[18] [1978] 2 NZLR 50.

46. In my assessment any risk of confusion, or mixing up of the public’s mind, actual or otherwise, is the likely result of the use by the Opponent of its trade marks. Section 60 requires the confusion or deception to be the combined result of the Opponent’s reputation and the use of the applied-for marks. I find, on the contrary, the likelihood of any confusion or deception to be the result of the Applicant’s reputation and the Opponent’s use.

47. In conclusion, I consider that the Opponent’s evidence does not establish that the use of either the Word Mark or the Logo Mark would be likely to confuse or deceive because of the reputation of the Opponent’s trade marks. The Opponent has not established its ground under section 60 of the Act.

48. For the reasons given, the opposition against application number 1684150 for the Applicant’s Word Mark, which relied on sections 58 and 60 only, fails. The remaining discussion relates solely to the Logo Mark.

Sections 44 and 58A

49. Section 44 of the Act relevantly provides:

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.

[…]

(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.

50. The application for the Logo Mark was made on 8 April 2016. The pending (deferred) applications for the Opponent’s Word Mark and the Opponent’s Logo Mark were made on 16 September 2015. Under subsection 44(1) the Opponent’s trade marks predate the Logo Mark and I find they are made for “similar goods” to the Goods within the meaning of that term under the Act. Further, as I have found, the Opponent’s Word Mark is substantially identical to the Logo Mark. On the face of it, section 44(1) is established, but as noted earlier, the Logo Mark was accepted under section 44(4) of the Act since the Applicant had demonstrated to the examiner’s satisfaction that there had been continuous use of the Logo Mark in relation to the Goods beginning before 16 September 2015 and continuing up until the filing date.

51. Having reviewed the evidence I see no reason to depart from the examiner’s assessment and I am satisfied that the Applicant has met the requirements of section 44(4). Revision of that evidence gives me no reason to think that an incorrect assessment was taken in relation to section 44(3) of the Act and I need say nothing more of that.

52. What then remains is the operation of section 58A of the Act which provides:

58AOpponent’s earlier use of similar trade mark

(1)This section applies to a trade mark (section 44 trade mark) the application for registration of which has been accepted because of:

(a)subsection 44(4); or

(b)a similar provision of the regulations made for the purposes of Part 17A.

Note:Subsection 44(4) prevents rejection of an application for registration of a trade mark that is substantially identical with, or deceptively similar to, a registered trade mark or a trade mark whose registration is being sought where the first‑mentioned trade mark has been continuously used since before the priority date of the other trade mark.

(2)The registration of the section 44 trade mark may be opposed on the ground that the owner of the substantially identical or deceptively similar trade mark (similar trade mark) or the predecessor in title:

(a)first used the similar trade mark in respect of:

(i)similar goods or closely related services; or

(ii)similar services or closely related goods;

before the owner of the section 44 trade mark or the predecessor in title in relation to the section 44 trade mark first used the section 44 trade mark; and

(b)has continuously used the similar trade mark in respect of those goods or services since that first use.

Note:For predecessor in title see section 6.

53.     It is the Opponent’s submission that:

… in relation to the operation of section 44(4), Patriot’s evidence is that it has used its mark at least since January or February 2013, or at the latest July 2013. That evidence demonstrates use in connection with camping trailers/camper trailers (including load bearing trailers), and parts, fittings and accessories for those camping trailers/camper trailers.
By operation of TMA section 58A use of the PATRIOT CAMPERS mark prior to the priority date of the PATRIOT CAMPERS word mark and device mark is relevant to determining the application of the opposed Sunland application, insofar as it seeks to rely on section 44(4).
The evidence of Sunland does not demonstrate any use of the opposed device mark in connection with the goods being marketed by Patriot: camping trailers/camper trailers (including load bearing trailers), and parts, fittings and accessories for camping trailers/camper trailers (including load bearing trailers). 

54.     As discussed already, the Opponent is not on the facts the first user in respect of the relevant goods and I see no scope for the application of this provision in the Opponent’s favour.  The ground has not been established.

Decision

55. 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.

56.     The Opponent has failed to establish a ground of opposition in either of its oppositions.  Subject to any appeal from the Registrar to the courts, I order that registration of both applications proceeds thirty days from the date of this decision.

Costs

57. 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. As the Opponent has not established either opposition. Both oppositions proceeded on what was essentially the same evidence and taking that into account I award costs against the Opponent under section 221 of the Act in line with the amounts in Schedule 8 of the Trade Mark Regulations 1995. 

Debrett Lyons
Hearing Officer
Hearings and Oppositions
30 April 2018

“Under examination – deferred”.