Prokit's Industries Co Ltd v Pro-Kit Pty Ltd

[2019] ATMO 6

TRADEMARKSACT 1995

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

Re:Opposition by Prokit's Industries Co Ltd to registration of trade mark application 1643945 (1, 7, 9, 11, 12, 16, 17, 20) - Pro-Kit (Logo) - in the name of Pro-Kit Pty Ltd.

DELEGATE:

Iain Campbell Thompson

REPRESENTATION:

Opponent: Spruson & Ferguson Applicant: Hazan Hollander

DECISION:

2019 ATMO 6

Trade Marks Act 1995

Section 52 opposition to registration: grounds under sections 44, 60, 42, and 62(b) of the Act: goods not of same description - section 44 ground not established; no evidence filed in relation to other grounds

- opposition to registration not established

Background

1. In these proceedings under section 52 of the Trade Marks Act 1995 (‘the Act’) Pro-Kit Pty Ltd (‘the Applicant’) of Minto, NSW, applied to register the trade mark which appears below:

Application No:         1643945
Priority Date:             28 August 2014
Goods:  Class 1: Tyre repair adhesives

Class 7: Radiator caps for cooling radiators for motors and engines; Air filters being parts of engines; Air filters for automobile engines; Air filters for motorcycle engines; Filters for cleaning cooling air (for engines); Filters for lubricants; Filters for vehicle engines; Fuel filters; Oil filters for engines; Vacuum cleaners; Gas operated blow torches; Air compressors

Class 9: Fuses

Class 11: Flashlights (torches); Hand torches (flashlights); Rechargeable torches; Torches for lighting

Class 12: Tyre repair patches; Steering wheels for vehicles; Air pumps (vehicle accessories); Supports for trailers and caravans (legs and dolly wheels); Seat cushions for the seats of vehicles; Seats for vehicles; Car seat covers (shaped or fitted); Petrol caps for vehicles;  Hub  caps; Horns  for  vehicles;  Vehicle  mirrors;  Covers  for  vehicle  steering

wheels; Foot pumps for inflating vehicle tyres; Windscreen washer pumps

Class 16: Adhesive packaging tapes
Class 17: Adhesive tapes for electrical insulating purposes

Class 20: Cable ties (‘the Goods’)

Trade Mark:

(‘The Trade Mark’)

Endorsements:              Evidence and/or other circumstances provided under subsection 41(4).

Provisions of subsection 44(4) and/or Reg 4.15A(5) applied.1

1. The Trade Mark was examined as required by section 31 of the Act, accepted for possible registration with the above endorsements, and advertised as such in the Australian Official Journal of Trade Marks on 19 May 2016.

1. On 19 July 2016, Prokit's Industries Co., Ltd. (‘the Opponent’), of Taiwan, filed a Notice of Intention to Oppose the registration of the Trade Mark.

1. On 19 August 2016, the Opponent filed its Statement of Grounds and Particulars detailing grounds under sections 44,2 60, 42, and 62(b) of the Act.

1. On 22 September 2016, the Applicant filed a Notice of Intention to Defend.

1. Neither party has filed evidence in these proceedings.

1. Now, in order that the Registrar may discharge her obligation under section 55 of the Act to decide the matter, it has been passed to me, one of her delegates for my decision on the written record which is comprised of those materials referred to in the preceding paragraphs.

Onus and Relevant Date

1. The Opponent bears the onus of establishing a ground of opposition which is detailed in the Statement of Grounds and Particulars on the balance of probabilities.3

1 These endorsements reflect evidence filed by the Applicant in order to address grounds for rejection in terms of sections 41 and 44 of the Act.

2 Relying on prior registration 958897 (8).

1. The relevant date (‘the Relevant Date’) at which the grounds must be considered is the filing date4 of the opposed application and I note that where sections 44 and 60 specify the ‘priority date’ that is here the same as the filing date.

Section 44

Statement of Grounds and Particulars

1. In its Statement of Grounds and Particulars the Opponent asserts:

The Opponent is the owner of the following Australian trade mark registration: Registration No Trade Mark Registration 958897. The Opposed Mark is substantially identical with or deceptively similar to the above trade mark and covers goods that are the same or similar to the goods covered by the trade mark listed above.

1. Details of the registered trade mark relied upon by the Opponent are:

Registration No:         958897
Priority Date:             23 June 2003

Goods:Class 8: Hand tools, including wrenches, pliers, screwdrivers, sockets, cable cutters, strippers, scissors, flush cutters, hammers, hand drivers

Trade Mark:               PRO'SKIT

(‘the Opponent’s Trade Mark’)

The Act

1. Section 44 of the Act relevantly provides:

44 Identical etc. trade marks

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

(a)    the applicant’s trade mark is substantially identical with, or deceptively similar to:

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

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

Note 1:     For deceptively similar see section 10. Note 2:         For similar goods see subsection 14(1).

3 Pfizer Products Inc v Karam [2006] FCA 1663; 237 ALR 787; (2006) 70 IPR 599; [2006] AIPC 92-146 per

Gyles J at [6] to [26]; Telstra Corporation Ltd v Phone Directories Co Pty Ltd [2015] FCAFC 156 at [132] to [133].

4 Southern Cross Refrigerating Co v Toowoomba Foundry Pty Ltd [1953] HCA 73; (1954) 91 CLR 592.

Note 3:     For priority date see section 12.

Note4:     The regulations may provide that an application must also be rejected if the trade mark is substantially identical with, or deceptively similar to, a protected international trade mark or a trade mark for which there is a request to extend international registration to Australia: see Part 17A.

1. To found this ground it is incumbent upon the Opponent to establish that the trade mark upon which is relies:

Has a priority date earlier the Relevant Date; and

The goods covered by Opponent’s Trade Mark are similar to those of the Trade Mark; and

The Opponent’s Trade Mark is substantially identical with, or deceptively similar to, the Trade Mark.

Discussion

1. The priority date of the Opponent’s Trade Mark is earlier than the Relevant Date.

1. The expression ‘similar goods’ is defined by subsection 14(1) of the Act:

14  Definition of similar goods and similar services

(1)    For the purposes of this Act, goods are similar to other goods:

(a)    if they are the same as the other goods; or

(b)    if they are of the same description as that of the other goods.

[…]

1. The expression ‘goods of the same description’ was addressed in Solahart Industries Pty Ltd v Solar Shop Pty Ltd (‘Solarhart’) by Perram J:5

30.  The question […] of whether one kind of good is ‘of the same description’ as another is a question whose answer will often be inherently contestable. That goods are of the same description as other goods is really but another way of saying that they belong to the same genus, but that observation only exchanges the uncertainties attending the concept of ‘same description’ with the ambiguities attending the word ‘genus’; at the end of the day the concepts are the same and in such expressions the legal mind encounters an inherently vague standard not susceptible to further analysis. The delimitation of such a concept is notoriously controversial: one may no more readily answer whether a monkey is an animal of the same description as a baboon than one may say that trade mark attorneys are lawyers of the same description as intellectual property barristers.

[…]

5 [2011] FCA 700; (2011) 281 ALR 544; 92 IPR 165 at [30].

32. The difficulty in this area has existed not in the identification of  any particular description but in sifting those descriptions which are relevant from those which are not. In that endeavour a number of guides have been suggested: the nature and origin of the goods; the uses made of the goods including their intended uses; and, the trade channels through which the goods are bought or sold: see Re Jellinek’s Application (1946) 1A IPR 393 at 403 per Romer J; Reckitt & Colman (Aust) Ltd v Boden [1945] HCA 12; (1945) 70 CLR 84 at 94 per Dixon J. Some doubt has been cast over the last in light of the rise of the modern department store (cf. Colorado Group Ltd v Strandbags Group Pty Ltd (No 2) [2006] FCA 880; (2006) 69 IPR 281 at 287 [26] per Finkelstein J). To that, one might add the phenomenon of internet retailing which rather tends to blur, almost to extinction, these kinds of consideration. No doubt, a sensible business judgment is called for (In the matter of the Australian Wine Importers Trade Mark [1889] 6 RPC 311 at 318 per Lindley J) and in that context notions of substitutability appear to be apposite: New South Wales Dairy Corporation v Murray Goulburn Co-operative Co Ltd [1989] FCA 124; (1989) 86 ALR 549 at 566 per Gummow J. In that case it was held that whilst it might well have been true that flavoured milk and lunch sized package cheese were both sources of calcium for children they were not goods of the same description because, in fact, there was no evidence that they were substituted for each other.

1. It is apparent from the official file that the examiner cited the Opponent’s Trade Mark as a ground for rejection of the Trade Mark on the basis of a perception that ‘Gas operated blow torches’ are goods of the same description as some of the ‘hand tools’ which are covered by the Opponent’s Trade Mark.

1. Whilst discussion of this ground is not a review of the examiner’s decision, I observe that no other basis for this ground has been suggested by the Opponent nor can I immediately discern one.

1. However that may be, whilst ‘Gas operated blow torches’ are (or may be) held in the hand during use, I do not consider that they are of the same description as, or in terms of Solarhart substitutable for, any of the hand tools that occur within Class 8 of the International (Nice) Classification of Goods and Services (‘Nice’). Whilst a gas operated blow torch may be a tool, I do not consider that it is generally regarded as being a ‘hand tool’ of the same ilk as those which occur in Class 8 of Nice. Further, vis a vis gas operated blow torches, there appear to me to be no comparable (or substitutable) tools within Class 8 of Nice or ones which might usually be made by the same trader, distributed through the same trade channels, or sold to the same class of customer for the same or a similar purpose. Neither, in this regard, has the Opponent suggested any.

1. This being so, the goods of the parties are not ‘goods of the same description’.

1. Accordingly, the ground under section 44 is not established.

Section 60

Statement of Grounds and Particulars

1. In its Statement of Grounds and Particulars the Opponent asserts:

The Opponent is the owner of the trade mark “Pro’sKit” and has used and acquired a reputation in that trade mark in Australia and overseas. The Opponent first used the “Pro’sKit” trade mark in Australia in 1993. As a result of the Opponent’s use and reputation in its “Pro’sKit” trade mark, use of the Opposed Mark in respect of the goods the subject of the opposed application is likely to deceive or cause confusion.

The Act

1. Section 60 of the Act 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.

1. In order to found this ground an opponent must establish that the trade mark on which it relies has a reputation such that the use of the opposed trade mark would confuse or deceive. As the reputation of a trade mark is established by evidence of that reputation,6 and the Opponent has not filed such evidence, the ground cannot be established.

1. The ground under section 60 is not established.

Section 42

Statement of Grounds and Particulars

1. In its Statement of Grounds and Particulars the Opponent asserts:

6 McCormick & Co Inc v McCormick [2000] FCA 1335; (2000) 51 IPR 102; [2000] AIPC 38-192.

Given the Opponent’s reputation in its “Pro’sKit” trade mark, use by the Applicant of the Opposed Mark would constitute passing off and/or misleading or deceptive conduct in breach of the Australian Consumer Law.

The Act

1. Section 42 of the Act provides:

42 Trade mark scandalous or its use contrary to law

An application for the registration of a trade mark must be rejected if: […]

(b)  its use would be contrary to law.

1. As with section 60, in order to establish this ground an opponent must evidence that the trade mark upon which it relies has a reputation. Because the Opponent has not filed any evidence the ground cannot be established.

1. The Opponent has not established its ground under section 60.

Section 62(b)

Statement of Grounds and Particulars

1. It its Statement of Grounds and Particulars the Opponent asserts:

The Opposed Mark includes the endorsement: “Provisions of Section 44(4) and/or Reg. 4.15A(5) applied. Evidence and/or other circumstances provided under sub-section 41(4)” The Opponent submits that the Registrar accepted the application for registration on the basis of evidence or representations that were false in material particulars. The Opponent submits that the Opposed Mark was accepted on the basis of evidence or representations that did not show the applied for trade mark being used as a trade mark or acting as a badge of origin or a trade mark that should not be left free for other traders to use. Consequently, there is a causal connection between the evidence or representations that were false in material particulars and the decision to accept the application for registration.

1. The Opponent has not filed evidence which establishes that any of the materials filed by the Applicant prior to the acceptance of the Trade Mark for possible registration were false in material particulars.

1. The Opponent has not established its opposition under section 62(b).

Decision

1. Section 52 of the Act 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.

1. The Opponent has not established a ground of opposition.

1. The trade mark application may then 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 decided or discontinued and that the disposition of the application should be in accordance with the court’s order or direction.

Iain Campbell Thompson Hearing Officer

Trade Marks Hearings 17 January 2019