Petesal Enterprises Pty Ltd v Grayson's International Pty Ltd

[2025] ATMO 14

TRADE MARKS ACT 1995

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

Re:Opposition by Petesal Enterprises Pty Ltd to registration of trade mark application number 2248940 (class 6) – LEAFSCREENER (fig.) - in the name of Grayson’s International Pty Ltd

Delegate:

Tracey Berger

Representation:

Opponent: Self-represented

Applicant: Self-represented

Decision:

2025 ATMO 14

Trade Marks Act 1995 (Cth) – opposition under section 52 – grounds of opposition under ss 41 and 58 considered – no grounds established – trade mark to proceed to registration subject to the resolution of any pending oppositions

Background

1. This decision concerns an opposition under s 52 of the Trade Marks Act 1995 (Cth)[1] by Petesal Enterprises Pty Ltd (‘Opponent’) to registration of the trade mark detailed below in the name of Grayson’s International Pty Ltd (‘Applicant’):

Trade Mark:        (‘Trade Mark’)

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

Number:2248940 (‘Application’)

Filing Date:         12 February 2022    (‘Relevant Date’)

Specification:     Class 6:

Metallic building materials and components including, roof materials, large items of hardware, plumbing accessories, drainage parts, gutter protection parts, gutter guards, meshes, barriers, fire ember guards, fixing devices, grids, guttering, spouting, pipes, tubes, water storage containers, coverings for guttering, wire, props, posts, collars, bolts, screws, angle trims, fittings, anchors, clip clamps, screens, sheets, channels, extrusions, castings, wire products and small items of hardware;

(‘Applicant’s Goods’)

2.     Following the advertisement of acceptance of the Trade Mark for possible registration, on 20 July 2022, the Opponent opposed the Application filing both a Notice of Intention to Oppose and a Statement of Grounds and Particulars which was subsequently rectified (‘SGP’).  The Applicant filed a Notice of Intention to Defend on 1 October 2022.

3. The parties then had an opportunity to file evidence in accordance with the Regulations. The Opponent did not file any evidence in support of the opposition. As evidence in answer, the Applicant filed a Declaration of Grayson O’Connor made on 27 March 2023 with Appendixes 1 to 8. The Opponent did not file any evidence in reply.

4.     Following the conclusion of the evidence stage, the parties were given the opportunity to request a hearing.  Neither party asked to be heard but the Applicant requested a decision without a hearing.  This matter has been allocated to me to determine as a delegate of the Registrar of Trade Marks and I do so based on the aforementioned materials.

Grounds, onus and Relevant Date

5.     In its SGP, the Opponent nominated grounds of opposition under ss 41 and 58.

6.     The Opponent bears the onus of establishing at least one ground of opposition.[2]  The relevant standard of proof is the ordinary civil standard based on the balance of probabilities.[3] 

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

[3] Telstra Corporation Ltd v Phone Directories Co Pty Ltd [2015] FCAFC 156, [133] (Besanko, Jagot and Edelman JJ).

7.     The date at which the rights of the parties are to be determined is the Relevant Date, being both the filing date and priority date of the Application.[4]

Discussion

[4] Southern Cross Refrigerating v Toowoomba Foundry Pty Ltd (1953) 91 CLR 592, 595 (Kitto J).

Section 58

8. Section 58 provides that ‘registration of a trade mark may be opposed on the ground that the applicant is not the owner of the trade mark’. The term ‘owner’ is not defined in the Act but it is well established that the owner of a trade mark is the first person to either use the mark in Australia for the relevant goods or services (or the ‘same kind of thing’) or file an application to register the mark in Australia, whichever is the earlier.

9.     To succeed on this ground of opposition, the Opponent must establish by way of evidence that:

·  the Trade Mark is identical, or substantially identical, to an earlier trade mark;[5]

·  the trade mark upon which the Opponent relies has been used in respect of goods that are ‘the same kind of thing’ as the Applicant’s Goods;[6] and

·  a person other than the Applicant has an earlier claim of ownership based on prior use of the earlier trade mark before the Relevant Date.[7]

[5] Carnival Cruise Lines Inc. v Sitmar Cruises Limited [1994] FCA 936; (1994) 31 IPR 375 (Gummow J).

[6] Re Hicks Trade Mark [1897] VicLawRp 118; (1897) 22 VLR 636 (Holroyd J).

[7] Settef SpA v Riv-Oland Marble Co (Vic) Pty Ltd (1987) 10 IPR 402, 413 (McGarvie J).

10.     In its SGP, the Opponent claims that:

the applicant (Grayson’s) did not design or invent the trademark “leafscreener” and has no rights to the trademark.  Michael Sichel was awarded and (sic) Australian Design Award in 1991 and is credited with the concept, design and development and this is also evidenced by the applicant’s own website: The Opponent has not filed any evidence to support the allegations made in the SGP.  In the absence of evidence that the Applicant is not the owner of the Trade Mark this ground of opposition is unsuccessful.

Section 41

12.     Section 41 relevantly provides:

41  Trade mark not distinguishing applicant’s goods or services

(1)  An application for the registration of a trade mark must be rejected if the trade mark is not capable of distinguishing the applicant’s goods or services in respect of which the trade mark is sought to be registered (the designated goods or services) from the goods or services of other persons.

Note:          For goods of a person and services of a person see section 6.

(2)  A trade mark is taken not to be capable of distinguishing the designated goods or services from the goods or services of other persons only if either subsection (3) or (4) applies to the trade mark.

(3)  This subsection applies to a trade mark if:

(a)  the trade mark is not to any extent inherently adapted to distinguish the designated goods or services from the goods or services of other persons; and

(b)  the applicant has not used the trade mark before the filing date in respect of the application to such an extent that the trade mark does in fact distinguish the designated goods or services as being those of the applicant.

(4)  This subsection applies to a trade mark if:

(a)  the trade mark is, to some extent, but not sufficiently, inherently adapted to distinguish the designated goods or services from the goods or services of other persons; and

(b)  the trade mark does not and will not distinguish the designated goods or services as being those of the applicant having regard to the combined effect of the following:

(i)  the extent to which the trade mark is inherently adapted to distinguish the goods or services from the goods or services of other persons;

(ii)  the use, or intended use, of the trade mark by the applicant;

(iii) any other circumstances.

13.     In order to decide whether the s 41 ground of opposition is established, I must first determine whether the Trade Mark is capable of distinguishing the Applicant’s Goods.  This involves an assessment of the inherent distinctiveness of the Trade Mark which is to be determined: 

[B]y reference to the likelihood that other persons, trading in goods of the relevant kind and being actuated only by proper motives – in the exercise, that is to say, of the common right of the public to make honest use of words forming part of the common heritage, for the sake of the signification which they ordinarily possess – will think of the word and want to use it in connexion with similar goods in any manner which would infringe a registered trade mark granted in respect of it.[8]

[8] Clark Equipment Co v Registrar of Trade Marks [1964] HCA 55, [5]; cited with approval in Cantarella Bros Pty Ltd v Modena Trading Pty Ltd  [2014] HCA 48, [26] (French CJ, Hayne, Crennan and Kiefel JJ) (‘Cantarella’).

14.     The majority judgement of the High Court in Cantarella indicated that the test for distinctiveness under s 41  involves a two-step process.  The first step requires consideration of the ‘ordinary signification’ of the word/s of the trade mark to any person in Australia concerned with the goods to which the proposed trade mark is to be applied.  The second step involves considering whether other traders might legitimately desire to use the trade mark for the sake of its ‘ordinary signification’ in respect of the same or similar goods.  

15.     The Opponent claims in its SGP that ‘leaf screener’ is a generic term in the building and roofing industries which has been used since the late 1980s to describe mesh covering for gutters to prevent leaves and debris blocking the gutters.  The Opponent’s SGP alleges that there are 54 business names containing ‘leafscreener’ on the Australian Business Register and 11 such business names with current Australian Business Numbers registered since 1991. 

16.     The distinctiveness of the term ‘leafscreener’ and of the Trade Mark have previously been  considered by this Office with other delegates respectively finding that ‘leafscreener’ has no inherent adaptation to distinguish similar goods to the Applicant’s Goods[9] but that the Trade Mark is capable of distinguishing the Applicant’s Goods.[10]  I agree with my colleague that when he Trade Mark is considered as a whole, it is capable of distinguishing the Applicant’s Goods.

[9] Grayson’s International Pty Ltd [2022] ATMO 141 (Hearing Officer N. Butson).

[10] Karben Industries Pty Ltd v Grayson’s International Pty Ltd [2024] ATMO 125 (Hearing Officer B. Goldsworthy).

17.     The ‘ordinary signification’ of a mark is the ordinary meaning of the sign to any person in Australia who may trade in or consume the Applicant’s Goods.[11]  The term ‘leafscreener’ is comprised of the ordinary English word ‘leaf’ and a variation of the word ‘screen’.  Both these words have well understood meanings and whilst I do not believe the term ‘screener’ is a normal or natural term in common use, in the context of the Applicant’s Goods, I am of the opinion that the term ‘leafscreener’ would be understood as indicating a device or guard which ‘screens’ or filters leaves.

[11] Cantarella, [70].

18.     However, the Trade Mark is not comprised simply of the term ‘leafscreener’ but is a composite mark consisting of the word ‘leafscreener’ shaped along the outside of a device, the outline of which resembles a leaf with an interior grid.  This device forms a dominant part of the Trade Mark as a whole.  The relevant question is not whether any of the individual elements of the Trade Mark are distinctive but rather whether the marks as a whole is inherently adapted to distinguish the Applicant’s Goods.[12]  In my view, the combination of the unusual word ‘screener’ and this device element, results in the Trade Mark as a whole being one which is capable of distinguishing the Applicant’s Goods.  The combination of elements is not one which other traders are likely to desire to use in the ordinary course of their business for their similar goods or services.  The s 41 ground of opposition is not established.

[12] Fry Consulting Pty Ltd v Sports Warehouse Inc (No 2) [2012] FCA 81, [61] (Dodds-Streeton J).

Decision

19.     The Opponent has not established either of the grounds of opposition nominated in the SGP.  Accordingly, the Trade Mark may proceed to registration under application number 2248940 after the appeal period expires and pending the outcome of any other oppositions to registration of the Trade Mark.

20.     If the Registrar is served with a notice of appeal, I direct that registration shall not occur until the appeal has been decided or discontinued.  The disposition of the Application should otherwise be in accordance with the Court’s order or discretion.

21. The Applicant sought an award of costs. As costs ordinarily follow the event, I award costs against the Opponent under s 221 in accordance with Schedule 8 of the Regulations.

Tracey Berger

Hearing Officer

Delegate of the Registrar of Trade Marks

15 January 2025