Powerchip Australia Pty Ltd v Inverlair Tropical Enterprises Pty Ltd

[2024] ATMO 241

TRADE MARKS ACT 1995

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

Re:Opposition by Powerchip Australia Pty Ltd to registration of trade mark application 2299605 (37) – DIESELFLASH REMAPPING AND MECHANICAL (Figurative) – in the name of Inverlair Tropical Enterprises Pty Ltd.

Delegate:

Nicholas Smith

Representation:

Opponent: self-represented

Applicant: Michael Buck IP

Decision:

2024 ATMO 241

Trade Marks Act 1995 (Cth) - section 52 opposition: ss 42(b), 43, 44, 58, 58A, 60 and 62A considered – none established – trade mark to proceed to registration

Background

1. This decision concerns an opposition brought by Powerchip Australia Pty Ltd (‘Opponent’) to the registration of the trade mark which is the subject of the application detailed below in the name of Inverlair Tropical Enterprises Pty Ltd (‘Applicant’): 

Application Number:

2299605

Filing Date[1]:

16 September 2022

Services:

Class 37: Maintenance and repair of land vehicles; Maintenance and repair of motor vehicles; Maintenance and repair of vehicles; Engine conversions; Maintenance of internal combustion engines; Maintenance and repair of engines; Rebuilding engines that have been worn or partially destroyed; Reconditioning of vehicle engines; Repair of engines; Repair of parts of engines; Tuning of engines

(‘Applicant’s Services’)

Trade Mark:

(‘Trade Mark’)

[1] Also known in this decision as the ‘relevant date’.

2.  Unless otherwise indicated, any references to sections or regulations in this decision are references to sections or regulations of the Trade Marks Act 1995 (Cth) (‘Act’) or the Trade Marks Regulations 1995 (Cth) (‘Regulations’), respectively.

3.  Following the advertisement of the application’s acceptance for possible registration, the Opponent filed a Notice of Intention to Oppose the registration on 13 April 2023 followed on 13 May 2023 by a Statement of Grounds and Particulars, later rectified by this office (‘SGP’). The SGP raised grounds of opposition under ss 42(b), 43, 44, 58, 58A, 60 and 62A. Following a cooling off period, the Applicant filed a Notice of Intention to Defend on 9 August 2023.

Evidence

1. Neither party filed any evidence in this matter.

   5.  Once the time allowed for filing evidence had ended the parties were given an opportunity to request a hearing in this matter or a decision without hearing.  On 12 February 2024 the Applicant requested a hearing by written submissions.  The matter was set down for a hearing by submissions on 30 October 2024 and the matter was allocated to me.  In line with usual practice, a notice was sent to the parties on 23 September 2024 which contained a schedule for the provision of written summaries of submissions to be filed prior to the hearing.  The Applicant filed written submissions on 22 October 2024.  The Opponent did not file any submissions.

2. I am a delegate of the Registrar of Trade Marks and I am to decide the opposition as required by s 55 which provides that, unless the proceedings are discontinued, dismissed, or have lapsed under s 54A 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. 

   In doing so I take account of the written record comprised of the materials mentioned in the preceding paragraphs.

   The Parties

3. Neither party has provided evidence in the matter and hence I have no evidence about them other than (for the Applicant) what is on the Register.    

   Grounds of Opposition, Onus and Standard of Proof

4. As indicated above, in the SGP the Opponent nominated grounds of opposition under ss 42(b), 43, 44, 58, 58A, 60 and 62A. To successfully oppose the application the Opponent needs to establish one of the nominated grounds.

   9.  The onus of proof in an opposition rests upon the Opponent.[2]  The relevant standard of proof is the ordinary civil standard based on the balance of probabilities.[3] The date at which the rights of the parties are to be determined is the relevant date, which is also the priority date for the purposes of ss 44 and 60.[4]

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

   [3] Following Pfizer Products Inc v Karam (2006) 70 IPR 599, [6]-[26] (Gyles J), and Telstra Corporation Limited v Phone Directories Company Pty Ltd [2015] FCAFC 156, [133] (Besanko, Jagot and Edelman JJ).

   [4] Southern Cross Refrigerating Co v Toowoomba Foundry Pty Ltd (1954) 91 CLR 592, 595 (Kitto J), see also s 29(1) Trade Marks Act 1995 (Cth).

   10. As the Opponent has filed no evidence and provided no submissions, I have no hesitation deciding that the Opponent has not discharged the onus on it with respect to the grounds of opposition under ss 42(b), 58, 58A, 60 and 62A of the Act since these grounds are particularised by reference to the Opponent’s use of and reputation in the unregistered mark Dieselflash and an asserted relationship between the parties and the Opponent has not provided any evidence to support these particulars.

5. With respect to the s 44 ground, the Opponent particularises this ground of opposition on the basis of two prior trade mark applications it filed for the word Dieselflash and a device mark featuring the word DIESELFLASH. These two applications (Application Nos. 2298664 and 2298665) did not proceed to registration and are now lapsed, so there is no basis for the Opponent to rely on these prior applications under s 44 to prevent registration of the Trade Mark as they are no longer marks whose registration is being sought; see 44(2)(a)(ii). In any event both the marks were for ‘Computer software (programs)’ which is not a good closely related to the Applicant’s Services. I find the s 44 ground is not established.

6. It remains necessary to address the s 43 ground.

   Section 43

   13. Section 43 is reproduced below:

   Section 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.

7. To establish a ground of opposition under s 43, there must be an inherent connotation within the trade mark. As Gyles J in Pfizer Products Inc v Karam commented:

   ‘Connotation’ is a secondary meaning implied by the mark. The likelihood of deception or confusion must flow from the secondary meaning inherent in the mark itself. It is apparent that the underlying purpose of s 43 is a similar purpose to that lying behind ss 52, 53 and 55 of the Trade Practices Act 1974 (Cth). It is to prevent the public being deceived or confused as to the nature of the goods offered by reason of a secondary meaning connoted by the mark in question... [5]

   [5] [2006] FCA 1663; (2006) 70 IPR 599, [53].

8. In Winton Shire Council v Lomas Spender J said:

   Section 43 is directed to the mark itself. It is not concerned with any deception or confusion caused by the reputation in Australia of some other trade mark. That aspect of the matter is dealt with under s 60. [6]

   [6] [2002] FCA 288; (2002) 119 FCR 416; (2002) 56 IPR 72, [19].

9. The ground of opposition pursuant to s 43 was particularised in the SGP as follows:

   The applicants use of the Trademark after it no longer has the authority from our company is likely to mislead or deceive consumers because the applicants use has continued after it is no longer permitted to use the mark.   The use of our mark must be used to sell the products our company creates.  We have and continue to suffer loss and damage as a result of the unlawful use of the mark by the applicant.

10. The Opponent provides no evidence to support the particulars of this ground and as such I find that the ground has not been established. In any event, in order for s 43 to operate to prevent the registration of the Trade Mark, the requisite confusion or deception must arise from a connotation within the Trade Mark itself rather than as a result of the reputation the Opponent may be able to demonstrate in its own marks or confusion between the Trade Mark and the trade marks owned by the Opponent or third parties. The first step in establishing this ground of opposition requires the Opponent to identify some connotation inherent in the Trade Mark. The Opponent has provided no evidence to suggest such a connotation exists.

11. As a consequence, I am not satisfied that if the Trade Mark is used in relation to the Applicant’s Services, there is an apparent connotation within it which is likely to result in deception or confusion. I find that the ground of opposition under section 43 has not been established.

    Decision and Costs

12. The Opponent has failed to establish any of the grounds of opposition it nominated in the SGP.  Trade mark application number 2299605 may proceed to registration not less than 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 either the appeal is withdrawn or discontinued.  Otherwise, the disposition of the application should be in accordance with the Court’s order or direction.

13. 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. I accordingly award costs against the Opponent under s 221 in the relevant amounts under Schedule 8 of the Regulations.

    Nicholas Smith

    Hearing Officer

    Delegate of the Registrar of Trade Marks

    9 December 2024