POSmate Pty Ltd and Raymond Gaud v PICA Australia Pty Limited
[2023] ATMO 38
•21 March 2023
TRADE MARKS ACT 1995
DECISION OF A DELEGATE OF THE REGISTRAR OF TRADE MARKS WITH REASONS
Re:Opposition by POSmate Pty Ltd and Raymond Gaud to registration of trade mark application number 2120032 (classes 6 and 9) – POS-mate (figurative) - in the name of PICA Australia Pty Ltd
| Delegate: | Benjamin Goldsworthy |
| Representation: | Opponent: Charlton Rowley Applicant: Vault Legal Pty Limited |
| Decision: | 2023 ATMO 38 Trade Marks Act 1995 (Cth) – opposition under section 52 – grounds pursued under sections 43 and 60 – no grounds established – trade mark to proceed to registration |
Background
On 14 September 2020 (‘Relevant Date’) PICA Australia Pty Limited (‘Applicant’) filed trade mark application 2120032 for goods in classes 6 and 9, details of which are reproduced below:
Trade Mark:
(‘Trade Mark’)
Class 6: Cash drawers of metal
Class 9: Scanners (data processing equipment); Stands for computer equipment; Stands for mobile phones; Stands for tablet computers; Swivel stands for computers; Computer swivel bases; Printers for cash registers; Protective films adapted for computer screens; Protective films adapted for mobile phone screens; Cases for smartphones; Mobile phone covers
(‘Designated Goods’)
The Trade Mark was examined under s 33 of the Act[1] and acceptance was advertised on 15 February 2021. On 17 February 2021 POSmate Pty Ltd and Raymond Gaud (‘Opponent’) filed a Notice of Intention to Oppose. On 16 March 2021 the Opponent filed a Statement of Grounds and Particulars (‘SGP’). The Applicant filed a Notice of Intention to Defend on 14 May 2021. The Opponent filed Evidence in Support (‘EIS’) being the declaration of Raymond Gaud, dated 17 August 2021 with Annexure RG-1 (‘Gaud Declaration’). The Applicant filed Evidence in Answer (‘EIA’) being the declaration of Lou Mimmo, dated 19 November 2021 with Exhibits LM-1 to 26 (‘Mimmo Declaration’). The Opponent did not file Evidence in Reply.
[1] A reference in these reasons to a section is a reference to such in the Trade Marks Act 1995 (Cth).
Once the time allowed for filing evidence ended, a hearing was requested. Both parties filed written submissions prior to the hearing. The matter was heard by me, a delegate of the Registrar of Trade Marks on 7 February 2023. The Opponent was represented by Luke Rowley and Max Joy from Charlton Rowley. The Applicant was represented by Alan Ford of Counsel and Ryan Solomons from Vault Legal.
Evidence
EIS
The Gaud Declaration consists of three pages and an annexure labelled ‘RG-1’. The declaration provides background for the operations of the Opponent and makes various broad statements, including that significant resources have been expended in developing a reputation and goodwill, without any further details. A number of bare statements are made asserting a reputation in an unregistered trade mark (‘Other Trade Mark’), which Mr Gaud asserts the Opponent has been using in relation to similar goods to the Designated Goods. The Other Trade Mark is reproduced below:
The Gaud Declaration alleges regular contact from consumers concerning their actual confusion between the Other Trade Mark and the Trade Mark and asserts that the Trade Mark is likely to deceive or cause confusion. Annexure RG-1 is a copy of a registration certificate, dated 16 March 2015, from the Australian Securities and Investment Commission (‘ASIC’) for the business name ‘POSmate’, held by Raymond Gaud. The EIS provides no other relevant details or material such as evidence of use of the Other Trade Mark, sales figures, the extent of use, third-party material or any promotional activities.
EIA
Lou Mimmo is the Director of the Applicant. The Mimmo Declaration provides information about the establishment of the Applicant and its adoption of the Trade Mark. A reputation in the Trade Mark stemming from the Applicant’s own use is alleged for various products and accessories. Mr Mimmo also declares that he is unaware of instances of actual confusion. I need not further elaborate on the EIA.
Grounds and Onus
The SGP nominates grounds of opposition under ss 43 and 60. The Opponent has the onus of demonstrating one or more of the grounds of opposition, on the balance of probabilities.[2] The assessment of the rights of the parties is as at the Relevant Date.[3]
Discussion
[2] Pfizer Products Inc v Karam [2006] FCA 1663 (‘Pfizer’), [22] (Gyles J); Telstra Corporation Limited v Phone Directories Company Pty Ltd [2015] FCAFC 156, [133] (Besanko, Jagot and Edelman JJ).
[3] Southern Cross Refrigerating Co v Toowoomba Foundry Pty Ltd (1954) 91 CLR 592, 595 (Kitto J).
Section 60
The Opponent relies upon s 60, which provides:
60 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.
As mentioned earlier, the Opponent asserts that there is a reputation in the Other Trade Mark. A relevant ‘reputation’ for the purposes of s 60 cannot simply be assumed.[4] It is the Opponent who must establish that a reputation exists as a matter of fact.[5] The word ‘reputation’ here means ‘the recognition of the [trade mark] by the public generally’.[6] The Opponent may demonstrate such a reputation by a variety of means, including quantum of sales or advertising and promotional activities.[7] Advertisements or other appearances of the Other Trade Mark on television, radio or in magazines and newspapers may also be relevant. The required reputation is most often inferred from a high volume of sales, together with substantial advertising expenditures and other promotions.[8] Direct evidence of consumer appreciation of a mark, while often harder to produce, is another avenue for showing that a reputation exists.[9] Little beyond bare assertions of the existence of a reputation have been provided. Evidence of a business registration is not of itself sufficient to demonstrate that a reputation exists in a trade mark.[10] The paucity of evidence means it does not elucidate a relevant reputation for the Other Trade Mark. Since no reputation has been established, it is not possible to consider the test in s 60(b).
[4] ConAgra Inc v McCain Foods (Australia) Pty Ltd [1992] FCA 159 (‘ConAgra’), [77] (Lockhart J).
[5] ConAgra, ibid. See also, Sara Lee Corp v Bali Blue Pty Ltd [2003] ATMO 81.
[6] McCormick & Co Inc v McCormick [2000] FCA 1335 (‘McCormick’), [127] (Kenny J).
[7] Rodney Jane Racing Pty Ltd v Monster Energy Company [2019] FCA 923, [83] (O’Bryan J).
[8] McCormick (n 7) [80] (Kenny J).
[9] Ibid.
[10] Lone Star Steakhouse & Saloon v Zurcas [2000] FCA 29, [25]-[26]. See also, Dajin Pei and World United Group Pty Ltd v Comite International Olympique [2021] ATMO 142 [22]; Citigroup Inc v George Sparsis [2017] ATMO 14, [46]-[48]; Automobile Club De L'Oeust v Gardiakos [2005] ATMO 19, [47].
Accordingly, I am not satisfied that the ground of opposition under s 60 has been established.
Section 43
The Opponent also relies upon s 43, which provides
43 Trade mark likely to deceive or cause confusion
An application for the registration of a trade mark in respect of particular goods or services must be rejected if, because of some connotation that the trade mark or a sign contained in the trade mark has, the use of the trade mark in relation to those goods or services would be likely to deceive or cause confusion.
Section 43 requires that the Opponent identify a connotation in the Trade Mark, or a part of it, and that because of that connotation, the use of the Trade Mark in relation to the Designated Goods would be likely to deceive or cause confusion. It is long established that the ‘connotation’ is one which must be inherent in, and arising from, the Trade Mark itself.[11] Section 43 is not generally directed to deception or confusion caused by a reputation in Australia of some other trade mark.[12] The existence of the Other Trade Mark is not sufficient. No evidence of, or identification of, an intrinsic connotation in the Trade Mark has been provided.[13] With no such connotation to consider, I cannot be satisfied that because of some connotation in the Trade Mark, use of the Trade Mark in relation to the Designated Goods would be likely to deceive or cause confusion.
[11] Primary Health Care Limited v Commonwealth of Australia [2017] FCAFC 174, [140] (Katzmann J); Pfizer (n 3) [53] (Gyles J).
[12] Winton Shire Council v Lomas [2002] FCA 288, [19] (Spender J); Registrar of Trade Marks v Woolworths Ltd (1999) 93 FCR 365; [1999] FCA 1020, 389 (FCR) (Branson J, dissenting). See also, Ian Horak and Mark Davis, Shanahan’s Australian Law of Trade Marks & Passing Off (7e, 2022) (‘Shanahan’s’), 413-414. A reputation and resultant connotation inhering in a trade mark such that use of another trade mark might result in confusion is usually a matter dealt with by s 60. Cases where there is perception among relevant persons that a trade mark is so related to a particular trader that use of another trader will confuse or deceive other persons to infer a relationship or endorsement (for example in Amalgamated Television Services Pty Ltd v Clissold [2000] ATMO 14) are rare; see, Shanahan’s, 414.
[13] Similar to Time Warner Entertainment Company, LP v Stepsam Investments Pty Ltd [2002] ATMO 93, perhaps with even less evidence here at hand.
Accordingly, I am not satisfied that the ground of opposition under s 43 has been established.
Decision and costs
Section 55 relevantly provides:
55 Decision
(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.
The Opponent has not established any ground of opposition. Accordingly, the Trade Mark should proceed to registration one month from the date of this decision. If the Registrar is served with a notice of appeal before that time, I direct that registration shall not occur until the appeal has been decided or discontinued and the disposition of the application should otherwise be in accordance with the Court’s order or direction.
The Applicant has requested costs. It is normal for costs to follow the event. I see no reason to make an exception here. I award against the Opponent under s 221 in the amounts according to Schedule 8 of the Trade Marks Regulations 1995 (Cth).
Benjamin Goldsworthy
Hearing Officer
Oppositions and Hearings
Trade Marks and Designs
21 March 2023
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