Pertronic Industries Ltd v Firetonics Pty Ltd

[2001] ATMO 118

TRADE MARKS ACT 1995

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

Re:      Opposition by Pertronic Industries Ltd to registration of trade mark application 752193(9) - FIRETRONICS - filed in the name of Firetronics Pty Ltd.

Background

Trade mark application number 752193 is an application to register the word firetronics in class 9 for

Apparatus and equipment for the detection, prevention and inhibition of fires within buildings, including smoke and fire alarms, smoke and fire detectors and fire indicator panels

The application was filed on 7 January 1998 ("the relevant date") by Firetronics Pty Ltd ("the applicant"), an Australian company of Silverwater New South Wales. 752193 was duly examined and, on 4 February 1999, the Registrar advertised, in the Australian Official Journal of Trade Marks, that he accepted this trade mark for registration.

On 3 May 1999, in accordance with Part 5 of the Trade Marks Act 1995 ("the Act"), Pertronics Industries Ltd ("the opponent") a New Zealand company of Wellington New Zealand, filed opposition to the registration of 752193 and, in their notice of opposition, nominated numerous grounds; however at the hearing elected to rely only on sections 44 and 58 of the Act.

The opponent served on the applicant, and filed with the Trade marks Office, statutory declarations by David Robert Percy, the opponent's managing director, and Robert Bell, a manager in Pertronic Industries Pty Ltd an Australian subsidiary of the opponent. This constitutes the evidence in support of the opposition.

The applicant served on the opponent, and filed with the Trade Marks Office, a statutory declaration by Varoosh Shamavonian, a director of the applicant. This constitutes the evidence in answer to the opposition.

The opponent duly served and filed a statutory declaration by David Robert Percy. This constitutes the evidence in reply of the opposition.

The applicant served on the opponent, and filed with the Trade Marks Office, further evidence being a statutory declaration by Varoosh Shamavonian.

Pursuant to the provisions of regulation 5.14, the opponent requested a hearing. The Registrar appointed a hearing for 24 August 2001, in Canberra. The hearing was conducted before me. The opponent was represented by Ben Fitzpatrick of counsel, instructed by Billington McClure Lee Solicitors and Attorneys of Chatswood.  The applicant was represented by Carmen Champion of counsel, instructed by Freehills Carter Smith Beadle Patent and Trade Mark Attorneys of Melbourne. Counsel for the applicant appeared by telephone link up.

The Evidence

The evidence served and filed in these proceedings comprises:

Declarant	Known as	Date Made	Exhibits
Evidence in Support
David Robert Percy	Percy 1	31 March 2000	DP-1 to DP-5
Robert Bell	Bell	3 April 2000	RB-1 to RB-3
Evidence in Answer
Varoosh Shamavonian	Shamavonian 1	4 September 2000	Annexures A to E
Evidence in Reply
David Robert Percy	Percy 2	1 March 2001
Applicant's Further Evidence
Varoosh Shamavonian	Shamavonian 2	26 April 2001	Annexures A to F

Additionally, in the course of submissions, counsel for the opponent referred me to a statutory declaration made by Varoosh Shamavonian on 3 December 1998 ("Shamavonian 3"). Shamavonian 3 was filed during examination of the application as evidence of honest concurrent use in response to a report from the Trade Marks examiner. Shamavonian 3 was not served on the applicant, nor filed with the Trade Marks Office, as evidence in the opposition. Counsel for the applicant did not object at the hearing, nor did I comment at the time.

Mr Percy, the Managing Director of the opponent, a position he has held for 18 years, declares that the opponent adopted the mark firetronix in New Zealand in 1989 and that it was registered as a trade mark in that country on 14 November 1989.

In May 1992, he says the opponent commenced discussions with the New Zealand Trade Development Board to arrange a market survey to establish the viability of entering the Australian market with automatic fire alarm control equipment. Following a consequent report from the Board, the opponent visited Australia in 1993 to meet representatives from potential Australian distributors identified in the report. During this visit, Mr Percy distributed brochures relating to the opponent's goods.

Mr Percy attended a number of trade shows in Australia between 1994 and 1997, and commenced negotiations with some potential distributors. Ultimately, in 1999 the opponent appointed Fire Security Service Pty Ltd ("FSS") as major distributor of its goods and services in Australia. The opponent had commenced discussions with FSS in late 1996.

Percy 1 also exhibited the New Zealand Trade Development Board research brief and report on potential Australian distributors, a brochure for the firetronix F40 Fire Alarm System, and confidential annexures showing the opponent's Australian retail sales in 1999 and 2000 and its promotional expenditure during the period 1992 to 2000.

The Bell declaration provided evidence that Mr Bell was the operations manager for FSS from March 1997 to July 1999, after which he became the opponent's Australia subsidiary's systems manager. Bell confirms that FSS began promoting the firetronix mark in Australia in late 1996 and that FSS commenced supplying goods and services bearing the firetronix trade mark in early 1999. Bell exhibits a large number of items showing use of the mark by FSS since 1997, including:

• Yellow Pages advertisements in Sydney and Melbourne;

• Business cards;

• Calendars

• Brochures and pamphlets;

• Service labels;

• A circuit board;

• Point of sale material; and

• Clothing including a polo shirt, a work shirt, overalls, a woollen jacket and a hard hat.

In evidence in reply, Shamavonian 1 gives a history of the applicant's business in the fire detection and safety trade from 1986, including the registration of a business name, incorporation and, in 1992, the commencement of the manufacture and sale of firetronics brand smoke detectors. It includes Annexures "C" and "D", relating to client lists, which were not served on the opponent. Those annexures are therefore not admitted into evidence, as previously advised by the Trade Marks Office. The information in Annexure C was served and filed later in the applicant's further evidence under Shamavonian 2. Shamavonian 1 details the current activities of the applicant's business.

Shamavonian 1 also provides evidence of confusion arising between the business conducted under the firetronics and firetronix trade marks. Mr Shamavonian also exhibits examples of correspondence that he says illustrates repeated failed attempts to contact the opponent company through FSS.

In evidence in answer, Percy 2 advises that Shamavonian 1 Annexures C and D were not served on the opponent. Mr Percy disputes Mr Shamavonian's report of failed contacts. He says neither the opponent nor its employees have seen the attempted correspondence by the applicant with FSS. Mr Percy states that FSS has no authority to legally represent or act on behalf of the opponent. Percy 2 concludes by advising that enquiries with FSS indicate that FSS has not received the correspondence from the applicant.

Shamavonian 2, the applicant's further evidence, contains one of the opponent's brochures and a copy of the opponent's web site, both showing a device similar to the firetronix mark but with the word "Pertronic" in the place of "Firetronix". Mr Shamavonian says that the "freecall" 1800 telephone number featured in various annexures to the Bell declaration has been disconnected by Telstra. Mr Shamavonian gives details of a conversation between him and Messrs Percy and Bell on 19 March 2001, and encloses a copy of Mr Bell's business card provided by him that day. Mr Shamavonian also exhibits copies of company searches conducted for both FSS and Pertronic Industries Pty Ltd. Finally, Mr Shamavonian exhibits a client list that had been part of Shamavonian 1 but not served on the opponent.

Submissions, Considerations and Findings

The Section 44 Ground
The opponent submitted that the applicant's mark is deceptively similar to Australian trade mark registration 117628 (class 9 Fire extinguishing apparatus.) and 117629 (class11 Sprinkler systems for fire extinction), for word mark fyretron. Neither party to these proceedings owns the fyretron mark.

During examination of the applicant's application, the fyretron registrations were cited under section 44 of the Act and the applicant was required to provide evidence of honest concurrent use pursuant to section 44(3). The applicant provided evidence that was acceptable to the Trade Marks Office and the Registrar consequently accepted the application in accordance with section 33 of the Act.

In the course of the hearing, the opponent cited the fyretron registrations, asserting that the Registrar should not have accepted the applicant's evidence at the examination stage (Shamavonian 3). It was submitted the applicant's mark is deceptively similar to fyretron and, therefore does not satisfy section 44(1) of the Act. It was further submitted that once it has been established that there is a substantially identical or deceptively similar prior mark covering the same good or goods of the same description, there is an evidentiary onus on the applicant if it wishes to rely on sections 44(3) or 44(4): Smith Bartlett & Co v British Pute Oil Grease and Carbide Co Ltd (1934) 51 RPC 157, Re Application by Hal Computer Products (1989) 15 IPR 323.

The evidence filed during examination in support of the section 44(3) matter has not been properly brought into evidence in the opposition matter. The strength of that evidence then is not a matter that I can consider in the course of the opposition proceedings. In terms of the section 44 ground the opponent thus cannot rely on any submissions concerning alleged inadequacies in that material.

The opponent must fail in so far as it has attempted to unseat the application of the provisions of section 44(3) in respect of the section 44(1) and (2) conflict between the application trade mark firetronics and 117628 fyretron.

No other trade mark has been raised in the course of the opponent's section 44 submissions and I consequently dismiss the opposition in so far as it relies on section 44.

The Section 58 Ground

Section 58 of the Act states:

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

Both the opponent and applicant were in agreement as to the legal principles applicable to this ground. Those principles can be summarised thus: ownership of a trade mark may be established by showing who had first use in Australia of the same trade mark, or virtually the same trade mark, in respect of "the same kind of thing", before the priority date of the application. The test for sameness was that for substantial identity, and not that for deceptive similarity. They cited The Shell Co of Australia Ltd v Esso Standard Oil (Australia) Ltd (1963) 109 CLR 407, Carnival Cruise Lines Inc v Sitmar Cruises Ltd (1994) AIPC 91-049, and Re Hicks' Trade Mark (1897) 22 VLR 636 at 640.

The opponent's submissions also discussed the principles to be applied in the case of a foreign trade mark owner. In that case, commercial activities undertaken by a trade mark owner in Australia prior to the commencement of any trading under, or by reference to, the mark, may amount to relevant use of the trade mark in Australia.

The opponent accepted that many of the activities declared in Percy 1 leading up to the relationship with FSS were preliminary in nature and not relevant trade mark use; however, it was submitted that they were clear evidence of an intention to sell firetronix products in Australia.

The opponent submitted that the specific negotiations with FSS and the promotional activity from at least March 1997 constituted relevant trade mark use.

The opponent submitted that the applicant failed to provide evidence to show that its smoke detectors were sold with reference to the firetronics mark before the relevant date. Since the opponent had evidenced use of its mark in 1997, it was entitled to succeed under section 58 of the Act.

Alternatively, the opponent submitted that to the extent that the applicant had evidenced use of its mark prior to the relevant date, such use is restricted to "smoke detectors". Smoke detectors are not the same kind of thing as the opponent's goods. The opponent's good are highly sophisticated monitoring and alarm devices, which, although related to, are clearly distinct from the applicant's smoke detectors. Thus, it was submitted, the applicant is not entitled to claim ownership of the firetronics mark with respect to all the goods covered in the application and the goods should be restricted accordingly.

As to the marks themselves, the opponent submitted that firetronics and firetronix were substantially identical.

In response, the applicant submitted that the evidence established that the first trade mark use of the Firetronics mark was as early as 15 May 1991, based on Shamavonian 3. But Shamavonian 1 also established use of the mark since 1992.

The applicant submitted that, applying the test for substantial identity in The Shell Co of Australia Ltd v Esso Standard Oil (Australia) Ltd (1963) 109 CLR 407, the two marks were obviously different, given the firetronics mark was a word mark and the firetronix mark was a device mark.

The applicant further submitted that the competing marks were not applied to the same kind of thing. The applicant submitted that the opponent's evidence in support and in reply only established that the firetronics mark was used in respect of "zone control units" and there was no evidence that such goods were the same kind of thing as the applicant's goods.

The case law establishes that ownership of a trade mark may be established by showing who had first use in Australia of the same trade mark, or of virtually the same trade mark, in respect of "the same kind of thing", before the priority date of the application.

None of the evidence of use of the respective marks in Australia is unequivocal. Neither party provided supporting evidence of actual sales figures. I have ignored the Shamavonian 3 evidence referred to by counsel for the applicant for the same reasons as discussed above in the section 44 ground. I do, however, accept the evidence from Shamavonian 1 paragraph 5, that the applicant began manufacturing and selling firetronics brand smoke detectors in 1992. I find that to be the applicant's use of the trade mark firetronics.

I also accept the submission from counsel for the opponent that the opponent's promotional activity in 1997 that culminated in sales of its goods by FSS constituted the opponent's first trade mark use of the firetronix mark. Therefore, firetronics is the first of the competing marks to be used in Australia.

The opponent's case fails at this point; however, for the sake of completeness I will consider whether the trade marks firetronics and firetronix are the same. I agree with the parties that the appropriate test is that for substantial identity. In Carnival Cruise Lines Inc v Sitmar Cruises Ltd, supra, Gummow J said:

When the decision is understood in this way, it does not supply any general authority for the proposition that in the case of disputed claims to proprietorship under the present statute anything less than substantial identity between the two marks will suffice. The phrase "substantially identical" as it appears in s. 62 (which is concerned with infringement) was discussed by Windeyer J in The Shell Company of Australia Limited v Esso Standard Oil (Australia) Limited (1963) 109 CLR 407 at 414. It requires a total impression of similarity to emerge from a comparison between the two marks. In a real sense a claim to proprietorship of the one extends to the other. But to go beyond this is, in my view, not possible.

The applicant's trade mark is the word firetronics. The opponent's mark is the following device:

While the word component of the opponent's mark is virtually the same as that of the applicant, the remainder of the device is quite dissimilar. The device features a distinct graphical element of a flame design that prevents any total impression of similarity to emerge from a comparison between the two marks.

The opponent has failed on the first two limbs of this ground, so it is not necessary for me to decide whether or not the competing marks are applied to "the same kind of thing". However, in my opinion, "automatic fire alarm control equipment" (Percy 1 paragraph 4) is the same kind of thing as "apparatus and equipment for the detection, prevention and inhibition of fires within buildings, including smoke and fire alarms, smoke and fire detectors and fire indicator panels".

I find that this ground of opposition is not made out.

Decision and Costs

The opponent has not established any of its grounds of opposition. I therefore direct that the applicant's trade mark be registered unless, within one month from the date of this decision, the Registrar is served with a copy of a notice of appeal.

As to costs, I direct that the opponent pay the costs of the applicant in accordance with the Official Scale (Schedule 8 of the Trade Marks Regulations 1995).

Jock McDonagh
Hearing Officer

23 November 2001