Pinebeam Pty Ltd v BOC Limited

[2010] ATMO 2

TRADE MARKS ACT 1995

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

Re:Opposition by Pinebeam Pty Ltd to registration of trade mark application 990012(35) - GAS & GEAR - filed in the name of BOC Limited

and

Opposition by BOC Limited to registration of trade mark application 1169072(35) – WISE Gas & Gear – filed in the name of Pinebeam Pty Ltd.

Delegate:

Alison Windsor

Representation:

BOC Limited:  Stephen Burley SC and Andrew Fox of counsel, instructed by Shelston IP.

Pinebeam Pty Ltd:  not represented.

Decision:

2010 ATMO 2

S52 oppositions:  990012 - grounds under ss41, 58, 60 and 62 not established. Costs awarded against opponent.

1169072 – grounds under ss58A and 60 established. Costs awarded against applicant.

Background

1. This decision is in respect of oppositions by two parties, BOC Ltd (“BOC”) and Pinebeam Pty Ltd (“Pinebeam”) to registration of their respective trade marks, current details of which are as follows:

Appn No:	990012	1169072
Trade mark	GAS & GEAR	WISE Gas & Gear
Owner:	BOC Limited	Pinebeam Pty Ltd
Filing date	20/02/2004	30/03/2007
Priority date:	13/07/2001 by virtue of a divisional status from registration 882647	30/03/2007
Services:	Cl 35:  Retailing services being the retailing of gas, gas kits and gas equipment, LPG equipment, welding and cutting equipment, safety products (other than safety belts for vehicles and safety seats for children for vehicles), fume extraction equipment, spray painting products, power tools, engineering tools, hand tools, abrasives, air compressors, refrigeration componentry and associated metal-working tools and equipment	Cl 35:  Retailing of welding, industrial, safety and engineering supplies; retailing of gas
Endorsements	Provisions of subsection 41(5) applied.	Provisions of subsection 41(5) applied. Provisions of subsection s44(4) applied.

1. Both applications were examined as required by section 31 of the Trade Marks Act 1995 (“the Act”) and accepted for possible registration under the specific provisions of the Act shown in the endorsements in the table immediately above.

2. In due course, each party opposed the registration of the other party’s trade mark.  Details of the notices of opposition will be given later in this decision.

3. Evidence in support and evidence in answer were provided by the relevant parties in respect of each opposition.  At the end of the evidentiary period relevant to 990012, BOC applied for a hearing.  On receipt of notification of the request, Pinebeam advised the Registrar of the opposition proceedings in train in respect of application 1169072, noting that the evidentiary period was close to an end.  In the circumstances, Pinebeam requested that both oppositions be heard together.  BOC objected to any delay in setting down the hearing.  However, despite this objection, once the evidentiary processes for 1169072 were finalised, the matters were set down to be heard concurrently.   

4. As a delegate of the Registrar of Trade Marks, I heard the oppositions in Sydney on 9 November 2009.  BOC was represented by Stephen Burley SC and Andrew Cox of counsel, instructed by Andrew Lockhart of Shelston IP.  Pinebeam was not represented at the hearing, and relied on previously supplied brief written submissions.

Notices of opposition, grounds pursued and onus

Notice of opposition - 990012

1. Pinebeam filed its notice of opposition on 13 April 2007. The notice was couched in very broad terms, effectively claiming all grounds available under the provisions of the Act.

2. Prior to the hearing, Pinebeam advised that it intended to pursue grounds of opposition under sections 58, 41, 60 and 62 of the Act. At the same time Pinebeam advised that it would not be represented at the hearing and filed very brief written submissions.

Notice of opposition - 1169072

1. BOC filed its notice of opposition on 12 May 2008, similarly claiming all available grounds of opposition.  The grounds of opposition pursued at the hearing were those under sections 44, 58A and 60. 

Grounds of opposition not pursued

1. As neither party pursued all the grounds claimed on their notices, as a matter of completeness I decide here that all the grounds not pursued in each of these oppositions have not been established.

Onus

1. The opponent in an opposition bears the onus of establishing at least one of the grounds of opposition specified in the notice of opposition on the balance of probabilities.[1]  

   [1] Pfizer Products Inc v Karam (2006) 70 IPR 599, per Gyles J at [6] to [26]; Chocolaterie Guylian NV v Registrar of Trade Marks [2009] FCA 891, para 22-27

Evidence

1. The evidence provided for the two oppositions is essentially the same in each case and consists of the following Statutory Declarations:

   ·   BOC Ltd            ▪ Evidence in Support for 1169072 and

   ▪ Evidence in Answer for 990012

   ▪ Nathan John Sinclair with Annexures NJS-1 to NJS-3 (6 August 2008)

   ▪ Graeme Bartram with Annexures GB-1 to GB-16 (6 August 2008)

   ·   Pinebeam Pty Ltd        ▪ Evidence in Support for 990012 and  

   ▪ Evidence in Answer for 1169072

   ▪ Claude Paul Anese with Exhibits CPA1 and CPA2 (Anese 1) (11 October 2007)

   ▪ John Patrick Cuddihy with Exhibits JPC-2 to JPC-6 (8 October 2007)

   ▪ Claude Paul Anese with Exhibits CPA1 and CPA2 (Anese 2) (19 November 2008)

BOC’s evidence

1. Graeme Bartram is the Company Secretary of BOC.  He states that BOC Limited was previously known as The Commonwealth Industrial Gases Ltd (“CIG”) and BOC Gases Australia Limited (“BOC Australia”).  BOC is a related company of Linde AG, and forms part of The Linde Group, a leading international industrial gases and engineering business founded in 1879.  Another related company of BOC is African Oxygen Limited, known as Afrox Limited, which is a leading supplier of gases, welding consumables and safety products in Africa. 

2. As background to the evidence, Mr Bartram said that BOC is one of the top 100 companies in the South Pacific region, with an annual turnover exceeding $A1 billion.  BOC services over 400,000 customers through 40 production facilities, 90 retail outlets and more than 1000 agents and equipment partners.  BOC is the owner of the trade mark application 990012 (GAS & GEAR), filed as a divisional application of application 882647, thus claiming a priority date of 13 July 2001.

3. Mr Bartram stated that the trade mark GAS & GEAR has been used in Australia in respect of the claimed services since at least as early as 1986.  Annexure GB-3 consists of printouts from several annual reports dating from 1987 to 1992 (under BOC’s previous name, CIG) demonstrating use of the trade mark GAS & GEAR.  Annexures GB-5 to GB-10 show examples of the trade mark in use in respect of buildings, catalogues, goods sold and staff uniforms. 

4. Sales and advertising figures, which are provided on a confidential basis, show that sales in Australia amount to many millions of dollars per annum.  Advertising figures are likewise significant.  Mr Bartram gives his opinion that the relevant buying public commonly and regularly refer to the GAS & GEAR outlets as “Gas and Gear” stores.

5. The Sinclair declaration provides a vehicle to enter certain information onto the official record.  Mr Sinclair is a trade marks attorney employed by Shelston IP in Sydney.  Annexure NJS1 to the declaration consists of a copy, obtained under the provisions of the Freedom of Information Act, of the Registrar’s file for application 1169072.  The file includes a copy of a letter from Pinebeam’s legal representative which refers to the declaration of John Patrick Cuddihy which was filed as evidence in support of Pinebeam’s opposition to BOC’s application 990012, and was then relied upon as evidence of use during examination of Pinebeam’s application 1169072.  Annexure NJS-2 consists of a copy of this declaration.  Annexure NJS-3 consists of full printouts obtained from the records of the Australian Securities and Investment Commission (“ASIC”) showing details of various business name registrations, all involving the words “Gas & Gear”.  The relevance of this listing will become obvious later in this decision.

Pinebeam’s evidence

1. The largest part of Pinebeam’s evidence consists of the previously mentioned declaration made by Patrick John Cuddihy, Managing Director of Pinebeam Pty Ltd.

2. Mr Cuddihy states that prior to 1999, the company traded under the business names ‘Welding, Industrial, Safety and Engineering Supplies (W.I.S.E Supplies)’, ‘W.I.S.E Supplies’ and ‘W.I.S.E. Hire’.  Following its appointment as an agent/distributor for Air Liquide Australia Limited, a major supplier of welding and speciality gases for use in welding, industry and engineering, Pinebeam adopted the name ‘WISE Gas & Gear’.  It registered the name as a business name in Queensland on 20 January 1999, and has traded under that business name since that time.

3. Mr Cuddihy states that the component ‘WISE’ in the business name and claimed trade mark was coined from the product range initially sold by Pinebeam, namely Welding Industrial Safety and Engineering supplies.  He considers that the component “Gas & Gear” is simply a general description of products and services Pinebeam supplies, namely gas-related services, gear and equipment.

4. Annual sales figures provided in the declaration amount to millions of dollars per annum.  Advertising figures are increasing and, since 2001 at least, are quite significant.[2]   

   [2] Both figures, however, are an order of magnitude less than those nominated by BOC.

5. Mr Cuddihy provided examples of purchase orders and invoices which he said show use of both the business name and the trade mark.  The earliest dated invoice which includes the name ‘Wise Gas & Gear’ is dated February 2000.  Many of the exhibits are not dated, or not clearly dated.  Mr Cuddihy stated that Pinebeam’s trade mark is well known in the trade, and provided a list of independent persons in various parts of Australia who he said could attest to the use and reputation of the trade mark.  No declarations from any of these persons have been provided.

6. At the end of the declaration, Mr Cuddihy refers to a letter received from BOC in August 2000 asserting ownership of the trade mark ‘Gas & Gear’ and reserving the right to take legal action against Pinebeam if it did not undertake to cease using the words as a name or brand.  He said that after receipt of the letter he was unable to find any trade mark application or registration for the words, though he did find a registration for CIG GAS & GEAR.[3]  Pinebeam applied to register “WISE Gas & Gear” on 21 August 2000, but allowed the application to lapse after a ground for rejection was raised during examination.  Although he was aware of BOC’s application, he states that he did not consider BOC would be able to obtain exclusive rights in the term GAS & GEAR , as he considers it to be a generic or descriptive term which should remain freely available for all traders to use in relation to gas and related equipment.

   [3] Registration number 510061 for CIG GAS & GEAR was cancelled in June 2002.

7. The Anese declarations form the remainder of Pinebeam’s evidence.  Claude Anese is a registered trade mark attorney and partner in the firm Cullen & Co.  Anese 1 is a brief declaration which is a vehicle to place certain information before the Registrar.  Exhibit CPA1 is a list of company and business names currently registered in Australia, all including the words “Gas & Gear” and obtained from the ASIC records.  Exhibit CPA2 consists of extracts from a Google search of the internet using the search term “Gas & Gear”.  Anese 2 is likewise a brief declaration which brings into evidence definitions of the word “gear” from the Macquarie and Oxford dictionaries.

Discussion

1. In paragraphs 7 and 8 of this decision I briefly referred to the grounds of opposition pursued by each party in their respective oppositions.  In detail the grounds pursued are as follows: 

   990012 – GAS & GEAR – Pinebeam v BOC  

   · s58 – applicant is not the owner of the trade mark

   · s41 – trade mark not capable of distinguishing

   ·   s60 – trade mark similar to one with a reputation in Australia (pre-amendment version)[4]

   · s62 – trade mark accepted for registration on the basis of evidence etc false in material particulars

1169072 – WISE Gas & Gear – BOC v Pinebeam

·   s 44 – identical etc trade marks

·   s60 – trade mark similar to one with a reputation in Australia (post amendment version)[5]

· s58A – Opponent’s earlier use of a similar trade mark.

[4] Section 60 was amended by virtue of the Trade Marks Amendment Act 2006. Applications filed prior to 23 October 2006 are subject to the provisions of section 60 as it stood at their filing date.

[5] This application was filed after the amendments to section 60 were enacted and may take advantage of the provisions of section 60 as it currently stands.

1. There are some common elements within the grounds pursued which have a direct effect on the ability of the respective opponents to establish some of their grounds of opposition.  In respect of 990012, the ground under section 60 (the pre-amendment version) requires that the trade mark claimed by Pinebeam as one already having established a reputation in Australia should be at least deceptively similar, if not substantially identical, to BOC’s trade mark.  The section 44 ground pursued in respect of 1169072 relies upon the same requirement, with BOC nominating 990012 as the trade mark in conflict.  A consideration of the resemblance between the trade marks of each party is a useful place to begin my discussions.

Substantial identity and deceptive similarity

1. The test for substantial identity requires that the trade marks be viewed side by side, their similarities and differences noted, and a decision made as to whether or not a total impression of similarity emerges from the comparison.[6]

   [6] Windeyer J in Shell Co. (Aust) Ltd v Esso Standard Oil (Aust) Ltd (1963) 109 CLR 407 at 414-415

2. On a side by side comparison, both trade marks include the expression GAS & GEAR.  Pinebeam’s trade mark, however, includes as an additional feature the word WISE.  On a side by side comparison of the two marks, the additional word has a significant effect on the identity of Pinebeam’s trade mark, resulting in a clear difference between the two trade marks.  I am satisfied that the trade marks are not substantially identical.

3. In respect of deceptive similarity, section 10 of the Act defines a “deceptively similar” trade mark as one which so nearly resembles another trade mark that it is likely to deceive or cause confusion. The accepted tests, which are also articulated in the Shell case, are quite different from those applied previously. 

4. The trade marks are not now looked at side by side.  The comparison is made via the impression left in the mind of the purchaser by one trade mark, which impression may well colour his/her reactions when faced with the other similar trade mark.  In Aristoc Ltd v Rysta Ltd[7] Luxmoore LJ said:

   It is the person who only knows the one word, and has perhaps an imperfect recollection of it, who is likely to be deceived or confused.  …  The court must be careful to make allowance for imperfect recollection and the effect of careless pronunciation and speech on the part no only of the person seeking to buy under the trade description but also of the shop assistant ministering to that person's wants.

   [7] (1943) 60 RPC 87

5. Both parties in these oppositions are operating in the same field – that of the provision of welding gases and supplies.  I am satisfied that the chance of confusion between these two trade marks is extremely high.  Any member of the relevant buying public who is familiar with one of these trade marks is highly likely to assume that the other is in some way related.  The trade marks are clearly deceptively similar.

6. This common matter having been decided, I think the appropriate way to deal with the two oppositions now is by looking at them separately.

Trade Mark application 990012 in the name of BOC Limited

1. The grounds Pinebeam has pursued are those in relation to sections 41, 58, 60 (in its pre-amendment form) and 62. The onus in on Pinebeam to establish at least one of these grounds. The date relevant to the matter is the priority date of BOC’s application – 13 July 2001.

2. This trade mark consists of the words GAS & GEAR in plain upper case letters.  What follows is the total of the comments Pinebeam made in respect of the grounds of opposition which it intended to pursue:

   a)        BOC Limited is not the owner of the Opposed Trade Mark in relation to the Services. [S. 58]

   BOC Limited did not use the term ‘Gas & Gear’ by itself as a trade mark to any significant extent before the relevant date, and any relevant use of the term had been in conjunction with ‘BOC’

   d)        The Opposed Trade Mark is not capable of distinguishing the Services of BOC Limited from the services of other persons. [S. 41]

   e)        Before the priority date for the registration of the Opposed Trade Mark, one or more other trade marks had acquired a reputation in Australia and because of the reputation of the other trade mark(s), use of the Opposed Trade Mark would be likely to deceive or cause confusion. [S. 60]

   The other trade marks include the trade mark “WISE Gas & Gear” in which the Opponent had acquired a reputation.

   i)         The Opposed Trade Mark was accepted for registration on the basis of evidence or representations that were false in material particulars. [S. 62]

   The representations that BOC Limited is the owner of the Opposed Trade Mark and that it has used the Opposed Trade Mark are false, as the evidence shows that BOC Limited did not use the term ‘Gas & Gear’ by itself as a trade mark to any significant extent before the relevant date, but only in conjunction with ‘BOC’

3. Pinebeam also made the following brief submissions in respect of its opposition:

   (i)        The evidence clearly establishes that ‘Gas & Gear’ is a non-distinctive or generic term which should remain freely available for traders to use or continue to use;

   (ii)       The evidence fails to establish that BOC Limited has used the term ‘Gas & Gear’ by itself as a trade mark to any significant extent before the relevant date, and any use of the term had been only in conjunction with ‘BOC’;

   (iii)      BOC Limited has not established to the satisfaction of the Registrar that the term ‘Bas & Gear’ by itself is associated exclusively with that company, or that BOC Limited is otherwise entitled to a monopoly of that term.

Section 58 – applicant not owner of trade mark

1. It is now well established in law that, in order to succeed under this ground of opposition, the opponent must establish three factors. These are:

• that the respective trade marks of the applicant and opponent be either identical or substantially identical [8],

• that the respective services of both parties be the ‘same kind of thing’ [9]

• that the opponent has the earlier claim to ownership based on use prior to both the application to register and any actual use of the mark by the applicant[10].

  [8] Carnival Cruise Lines Inc. v Sitmar Cruises Ltd 31 IPR 375 (1994) 120 ALR 495

  [9] Re Hicks’ Trade Mark (1897) 22 VLR 636, 3 ALR 75

  [10] Settef SpA v Riv-Oland Marble Co (Vic) Pty Ltd 10 IPR 402 at 413

1. I have found that the trade marks are neither identical nor substantially identical.  This ground of opposition therefore fails at the threshold.

Section 62 – application etc. defective etc.

1. The basis of this ground is that the Registrar accepted the application for registration because of evidence or representations that were false in material particulars.  Pinebeam has not provided any evidence which supports this ground.  It has merely submitted that BOC has not used the term ‘Gas & Gear’ by itself as a trade mark, but only in conjunction with the word BOC.

2. Section 27 of the Act provides that a person who claims to be the owner of a trade mark and who is either using the mark, or has the intention to use it, may apply to have the trade mark registered. There is no requirement at the time of filing for evidence of any kind to be provided to support the claim. BOC, however, was only able to secure acceptance for possible registration via the provision of evidence of use of its claimed trade mark in order to satisfy the provisions of subsection 41(5). Pinebeam claims that the evidence of use provided does not demonstrate use of the trade mark by itself and therefore BOC’s claims to use and ownership are false.

1. The evidence of use submitted to the Registrar in support of the application prior to its acceptance does not form part of the evidence in this opposition.  Strictly speaking then, it is not admissible in these proceedings.  However, much of the evidence provided prior to acceptance is incorporated within the evidence in answer which BOC filed and served in dealing with this opposition.  The opposition evidence is more detailed than that originally provided, but this is not of particular importance in this matter.  Therefore I am able, given the information before me (and before Pinebeam), to decide whether or not BOC’s evidence demonstrates any information which is false in material particulars.

2. I am not aware of any requirement that, for trade mark use to be demonstrated, the claimed trade mark must be used in isolation from all and any other trade mark material.  It is quite possible for a trader to use more than one trade mark on or in respect of its particular range of goods and services.  The important matter is whether or not the material claimed as a trade mark is used in a way that indicates it is a trade mark, that is, it is used as a badge of origin.

3. I am satisfied that BOC has demonstrated such use.  While it is true that most use of the words ‘Gas & Gear’ is in circumstances where the word ‘BOC’ is also used, as in the examples following, it is clear to me that the words serve to identify the owner, just as ‘BOC’ does.  Indeed, the examples show that BOC is often the less prominent feature in the signage applied to the premises as shown in the following photographs and in other material provided.

1. Under these circumstances, I am satisfied that the information provided by BOC in order to persuade the Registrar to accept its trade mark for possible registration was not false in any of its material particulars.  Pinebeam has been unsuccessful in establishing this ground of opposition.

Section 41 – trade mark not capable of distinguishing.

1. Pinebeam has submitted that the words ‘Gas & Gear’ form a non-distinctive or generic term which should be freely available for use by other traders.  This also appears to have been the opinion of the examiner who first examined BOC’s trade mark application.  BOC, however, provided evidence of use sufficient to satisfy the examiner that the trade mark could be accepted under the provisions of subsection 41(5).

2. The scheme of section 41 was clearly set out by Branson J in the Oregon case[11]. Her Honour indicated that the first issue to be considered under s.41 is the extent to which the opposed trade marks are “inherently adapted to distinguish the designated goods or services from the goods or services of other persons” as specified in subsection 41(3). If it is considered the trade marks are sufficiently inherently adapted then section 41 is satisfied and the trade marks should be considered prima facie registrable. It is only where the trade marks are considered to contain insufficient inherent adaptation to assess their capacity to distinguish, or to contain no inherent adaptation at all, that the further enquiries under subsections 41(5) or 41(6) need be undertaken. It is important to note that under the provisions of the Act as it stands, a trade mark which is determined to be completely devoid of adaptation to distinguish may still be registered if its owner is able to provide sufficient evidentiary support.

   [11] Blount Inc v Registrar of Trade Marks (1998) 40 IPR 498

3. At examination, the examiner considered that the words GAS & GEAR had insufficient adaptation to distinguish BOC’s services from those of other traders in the same field.  The provisions of subsection 41(5) therefore applied, and BOC would need to provide additional material to persuade the Registrar that the trade mark would be capable of distinguishing the services claimed.  That evidence, as mentioned previously, does not form part of the evidence provided for this opposition.  However, I do have the benefit of the evidence of use provided specifically for the purposes of BOC’s defence in this action, and for BOC’s opposition to application 1169072.

4. BOC submitted that at the priority date of 990012, which is, because of its divisional status, 13 July 2001, it had already acquired the requisite capacity to distinguish in its trade mark.  BOC claims use of the trade mark since as early as 1986, when the trade mark was in use by its predecessor in business, Commonwealth Industrial Gases Limited (CIG).

5. Pinebeam called into question the propriety of the examiner’s acceptance of BOC’s trade mark application.  The basis for this contention was that the words had not been used alone but always with ‘BOC’; that the words were purely descriptive; that BOC should not be permitted a monopoly of the words, and that other traders were already using them in respect of their own businesses.  Pinebeam provided a list of business and company names which it states have come from the ASIC databases incorporating the words ‘Gas & Gear’ in support of this contention.[12]  There are nine entries on the list.

   [12] Anese 1 at exhibit CPA1

6. The Sinclair declaration provided full printouts of these records from ASIC.  The full records show that the first three entries on the list are business names registered by BOC in Tasmania, South Australia and Western Australia.  The next two entries (‘CIG Gas & Gear’)[13] have been registered by Pinebeam – in June 2005 in Queensland and in January 2006 in New South Wales.  ‘Wise Gas & Gear’, Pinbeam’s own trade mark, is one of the remaining records, with the other remaining records belonging to other parties.

   [13] Note here that BOC had cancelled its predecessor’s CIG GAS & GEAR trade marks in 2002.

7. The fact that there are other parties using a particular set of words is not necessarily sufficient reason to negate an applicant’s claim to trade mark rights.  If long and appropriate use by a trader results in the acquisition of trade mark rights, then that trader has a right under law to apply for and achieve registration.  I am satisfied that this is the case here.

8. BOC’s evidence includes extracts from CIG Limited’s annual reports for the years 1987, 1989, 1991 and 1992.  The Director’s Report in the 1987 document states the following (emphasis added):

   The acquisition of Transpower will deepen our market penetration in one of Australia’s fastest-growing regions.  It also accesses a new range of products which are ideal for CIG’s Gas and Gear nationwide retail chain, specialising in servicing the tradesperson and the Do-it-Yourself markets.

9. A reference in the 1989 director’s report notes that “the company will continue to distribute CIGWELD products through its Gas and Gear network”.  In 1991 the Managing Director’s overview refers to the “opening of three new Gas & Gear retail centres increasing total Australia-wide outlets to 75”.  The managing director’s Overview in the 1992 report refers to “opening of seven new Gas & Gear centres” and an excellence award given to “CIG Gas & Gear Port Kembla”.

10. These examples of use of the term, along with the catalogue and photographic material forming part of the evidence of use, demonstrate to me both the intention, and the realization of that intention, to use the term ‘Gas & Gear’ as a trade mark, an identifying mark for BOC’s services. The sales and advertising figures lend ample support to the matter as well. I am satisfied that BOC has demonstrated that the words GAS & GEAR are distinctive of its business. The ground of opposition under section 41 is therefore not established.

Section 60 – trade mark similar to one with a reputation in Australia

1. Section 60, as it applies to this opposition, reads as follows:

   The registration of a trade mark in respect of particular goods or services may be opposed on the ground that:

   (a)  it is substantially identical with, or deceptively similar to, a trade mark that, before the priority date for the registration of the first-mentioned trade mark in respect of those goods or services, had 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.

2. I have already decided that the trade marks belonging to the two parties involved here are deceptively similar.  The matters remaining are whether Pinebeam is able to substantiate a reputation in its trade mark existing at BOC’s priority date, and substantiate a reputation such that BOC’s use of its own trade mark would be likely to deceive or cause confusion.  The priority date relevant to the matter is 13 July 2001. 

3. BOC submitted that Pinebeam’s evidence demonstrating use of its WISE GAS & GEAR trade mark before the priority date was deficient.  Clear examples of use, BOC said, between the claimed date of first use in 1999 and the priority date were few.  I agree with these submissions as the information provided is neither comprehensive nor of good quality.  The Cuddihy declaration also includes some inconsistencies when dealing with the claimed use.  For example, it states at paragraph 9 that its trade mark was first used in Australia in early 1999, but at paragraph 12 provides a table of annual sales in respect of “the opponent’s trade mark” dating from 1993/94. 

4. In addition, while Pinebeam’s trade mark does indeed use the term ‘Gas & Gear’, the mark in use appears most often as shown below:

1. If Pinebeam can claim a reputation before BOC’s priority date, it is in the word WISE and the device of an owl, the expression ‘Gas & Gear’ being of secondary importance.  However, overall the information provided is simply too scanty for me to be able to determine that a reputation existed at the relevant time.  While sales and advertising figures from as early as 1993 have been provided, it is not at all clear which trade mark was in use during what periods of time.  Given the paucity of the information Pinebeam has provided, I am not satisfied that it has pointed to a trade mark which meets the requirements of section 60.  The ground of opposition has thus not been established.

2. Section 60 being the last of the four grounds pursued by Pinebeam, I note that it has not established any of its grounds.  This opposition therefore fails.

Trade mark application 1169072 in the name of Pinebeam Pty Ltd

1. The grounds BOC has pursued are those in relation to sections 44, 58A and 60 (in its amended form).  The onus in on BOC to establish at least one of these grounds.  The date relevant to the matter is the filing date of Pinebeam’s application – 30 March 2007.

Section 44 – identical etc trade marks

1. Section 44 as it is relevant to this matter provides the following:

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

   (a) it is substantially identical with, or deceptively similar to: 

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

   (ii) a trade mark whose registration in respect of similar services or closely related goods 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 services is not earlier than the priority date for the registration of the other trade mark in respect of the similar services or closely related goods.

   Note 1: For deceptively similar see section 10.

   Note 2: For similar services see subsection 14(2).

   Note 3: For priority date see section 12.

   …

   (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.

   Note 1: An authorised use of the trade mark by a person is taken to be a use of the trade mark by the owner of the trade mark (see subsection 7(3)).

   Note 2: For predecessor in title see section 6.   

2. Pinebeam’s trade mark was accepted in the face of BOC’s earlier dated trade mark on the basis of prior use as embodied in the provisions of subsection 44(4).  The evidence of use Pinebeam provided to support its application is the same evidence used to support its opposition to 990012.  The examiner accepted the application only after Pinebeam had agreed to restrict its service specification to include only the specific services which are now recorded.

3. I have determined previously that the two trade marks are deceptively similar.  BOC’s application has the earlier priority date, and the services with which both parties are dealing are at least similar, if not the same.  The provisions of sub section 44(2) are therefore met.  

4. However, as noted previously, the application was accepted under the provisions of subsection 44(4). The examiner accepted the application on the basis of the evidence filed at the time, which evidence has also been filed in support of the opposition to this application. At face value, there is some small amount of evidence which could be said to support Pinebeam having used the words GAS & GEAR as a trade mark before BOC’s priority date, and under these circumstances, the examiner applied the provisions of subsection 44(4). The evidence before me though, clearly shows that BOC has demonstrated use of the claimed trade mark for many years prior to any use to which Pinebeam can lay claim. It is appropriate then to look at the ground of opposition under section 58A.

Section 58A – Opponent’s earlier use of similar trade mark

1. Section 58A relevantly provides the following:

   (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);

   …

   (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.

2. Section 58A was added to the Act in 2006, and according to the Explanatory Memorandum which accompanied the amendment, it was needed to allow the owner of a deceptively similar trade mark to oppose registration on the basis of absolute first use.[14]  The Memorandum said:

   As it stands the owner of the earlier registered trade mark has no basis on which to oppose registration of a trade mark accepted under subsection 44(4), even where their use pre-dates that of the accepted application.

   [14] Note that section 58 (Applicant not owner of trade mark) requires that the trade marks be at least substantially identical before its provisions can be applied.

3. My discussions in respect of the related opposition written up earlier in these reasons refer to evidence provided by BOC which demonstrate use of the term GAS & GEAR as a trade mark since as early as 1986. The use is in respect of the same services as those claimed by Pinebeam. The evidence clearly shows continuous use, either by BOC or its predecessors in business, from 1986 until at least the filing date of Pinebeam’s own trade mark. I have previously decided that the two trade marks under consideration are deceptively similar, therefore fitting the requirement that they be “similar trade marks”. The information I have before me allows me to be satisfied that the provisions of section 58A are met and that BOC has established the ground of opposition.

Section 60 - Trade mark similar to trade mark that has acquired a reputation in Australia

1. Since BOC has established a ground of opposition under section 58A, there is no strict requirement for me to consider any other grounds upon which it relied. However, for completeness, I will make some comments about the Section 60 ground.

2. As the notice of opposition was filed subsequent to the amendment of section 60, the amended form of the section applies.[15]  There is no specific mention within the section of the similarity of the trade marks as a threshold requirement.  I have, however, found that the trade marks under consideration are deceptively similar.

   [15] Section 60 currently provides the following:

   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.

3. I am satisfied that BOC has a well established reputation within the trade, and that there is a strong possibility that Pinebeam’s use of its trade mark is likely to cause significant confusion.  BOC can rely on a reputation dating back to as early as 1986, 13 years prior to any documented use of Pinebeam’s own trade mark.  BOC has established this ground of opposition as well.

Pinebeam’s reputation in its WISE GAS & GEAR trade mark

1. However, Pinebeam has also claimed a reputation in a trade mark which contains the expression “Gas & Gear”, and has attested to healthy sales and advertising figures for its business.  This trade mark, as far as I am able to ascertain from the evidence, is the composite trade mark shown previously at paragraph 56.  While Pinebeam’s evidence often refers to use of its business names and URLs which incorporate the trade mark it has applied for, use of these indications is not use as a trade mark.  I am satisfied therefore that any reputation Pinebeam has is not engendered by the trade mark for which it has applied, but in the image of an owl and the word WISE. 

Decision

1. Section 55 relevantly provides the following:

   Section 55.  Decision

   (1)  Unless the proceedings are discontinued or dismissed, 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.

2. In respect of application 990012 in the name of BOC Limited, the opponent has not been successful in its opposition.  Therefore the application 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 discontinued or, in the event of a decision from the Court, that the application be subject to that decision.

3. In respect of application 1169072 in the name of Pinebeam Pty Ltd, the opponent has been successful in its opposition.  I refuse to register this application.

Costs

1. Both parties requested their costs in the event of success.  BOC has been successful in both actions and is therefore able to claim its costs.  I award costs against Pinebeam pursuant to the official scale, noting the decision made by the Registrar’s delegate in Hume Industries (Malaysia) Berhard v James Hardie & Coy Pty Ltd (2001 ATMO 78) in respect of the amounts which may be claimed when more than one opposition is heard at the same time.   

Alison Windsor

Hearing Officer

Trade Marks Hearings

12 January 2010