QMastor Limited v Matrikon, Inc

[2010] ATMO 125

TRADE MARKS ACT 1995

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

Re:Opposition by QMASTOR Limited to registration of trade mark application nos. 1271670 MATRIKON MINE TO PORT; 1261671 M2P; 1271672 MINE2PORT (9, 42) - filed in the name of Matrikon, Inc.

Delegate:	Heath Wilson
Representation:	Decision on the written record.
Decision:	2010 ATMO 125 Section 52 opposition – Expedited - grounds pressed under sections 42(b), 44 and 60 of the Act - No grounds established in relation to trade marks 1271670 and 1271671 – section 60 established for trade mark 1271672 - Costs awarded against the opponent.

Background

1. The trade marks “Matrikon Mine to Port” (1271670), “M2P” (1271671), “Mine2Port” (1271672) were filed by Matrikon, Inc (“the applicant”) on 10 November 2008 for the following goods and services:

   Class 9:

   Automation software to integrate plant, manufacturing, mining and oilfield equipment and software applications, to monitor operations, track problems, report on operations, optimize plant, manufacturing, mining and oilfield operations and to enable communication between devices or applications used in industry

   
   
   Class 42:

   Industrial engineering and software integration services for plant, mining and oilfield control, automation and optimization

2. The above trade marks were subsequently opposed under section 52 of the Trade Marks Act 1995 (“the Act”) via notice of opposition filed by QMastor Limited (“the opponent”) on 16 March 2009. I have been delegated by the Registrar of Trade Marks to decide these trade mark oppositions based on the material comprising the written record (the details of which are set out below). The opponent additionally filed written submissions on 12 October 2010 including a request that the decision in relation to these matters be expedited. The applicant subsequently filed its own legal submissions on 23 November 2010.

   The Written Record

3. The material on which I have based this decision consists of:

   Evidence in Support

   • Statutory declaration of Trent Bagnall dated 14 October 2009 with exhibits 1 to 29.

   Evidence in Answer

   • Statutory declaration of Salvatore Crisafulli dated 26 February 2010 with exhibits SC-1 to SC-4.

   Evidence in Reply

   • Second statutory declaration of Trent Bagnall dated 2 June 2010.

   Further Evidence

   • Second statutory declaration of Salvatore Crisafulli dated 6 July 2010 with exhibits SC-1 to SC-2.

   Reasons

4. The opponent bears the onus of establishing one of the grounds of opposition stated in the notice of opposition on the balance of probabilities.[1] In the notice, the opponent has listed most available grounds of opposition but is specifically pressing sections 44, 60 and 42(b) of the Act. I find that the remaining nominated grounds of opposition have not been established.

   [1] Pfizer Products Inc v Karam (2006) 70 IPR 599, per Gyles J at [6] to [26]; Chocolaterie Guylian N.V. v Registrar of Trade Marks [2009] FCA 891 (18 August 2009) at [22] to [26].

   Section 44: Identical etc. trade marks

5. To establish the ground of opposition under section 44 of the Act, the opponent must point out the existence of an earlier filed trade mark application or registration which is substantially identical or deceptively similar to the applicant’s trade mark(s). The goods claimed for the respective trade marks must also be similar for the section 44 ground of opposition to be made out.

6. In pursuit of this ground, the opponent has specifically referred to the following trade marks all with earlier priority dates to the opposed trade marks:

TM No.	Trade Mark	Class / Statement of Goods
715216	PIT TO PORT	Class 9: Computer software for mining and bulk commodity industries
1122637	Pit to Plant	Class 9: Computer software for the bulk commodity industries
1122638	Port to Plant	Class 9: Computer software for bulk commodity industries

1. Upon comparison of the respective claimed goods in class 9, I am of the view that they are similar. I find that the opponent’s computer software for mining and bulk commodity industries and the applicant’s software integration services for plant, mining and oilfield control, automation and optimization in class 42 are closely related to each other.  As the opponent did not argue that any of the trade marks were substantially identical, I will now consider only whether any of the applicant’s trade marks are deceptively similar to the opponent’s marks outlined above. The established test was set out in Australian Woollen Mills[2] as follows:

   the marks ought not … to be compared side by side. An attempt should be made to estimate the effect or impression produced on the mind of potential customers by the mark or device for which the protection of an injunction is sought. The impression or recollection which is carried away and retained is necessarily the basis of any mistaken belief that the challenged mark or device is the same … The usual manner in which ordinary people behave must be the test of what confusion or deception may be expected. Potential buyers of goods are not to be credited with any high perception or habitual caution. On the other hand, exceptional carelessness or stupidity may be disregarded.

   [2] Australian Woollen Mills Ltd v F. S. Walton and Company Ltd (1937) 58 CLR 641 per Dixon and McTiernan JJ (at 658).

2. For the sake of efficiency, I will only discuss the applicant’s trade marks in comparison with the opponent’s trade mark “PIT TO PORT”. Despite the opponent’s detailed submissions to the contrary and considering the established tests for deceptive similarity, I cannot reasonably entertain the argument that the opponent’s trade marks “Pit to Plant” and “Port to Plant” are deceptively similar to any of the applicant’s trade marks. They are not, in my view.

3. The opponent’s trade mark “Pit to Port” has clear visual and aural differences to the applicant’s first trade mark “Matrikon Mine to Port.” The distinctive and unusual word “Matrikon” is a primary element to that trade mark and appears foremost. The last two words in both trade marks are identical. While the similar meaning of the words “Pit” and “Mine” may, and perhaps would, be evident to consumers of these goods that is not sufficient for deception and confusion to arise. The overall visual and aural impression is that those trade marks are not deceptively similar.

4. Comparing the trade marks “M2P” and “Pit to Port”, it is clear that they are visually, aurally and conceptually different. Consequently, they cannot be deceptively similar to each other in the ordinary application of the above test.

5. With regard to “Mine2Port” and “Pit to Port” trade marks, the initial impression reveals visual and aural differences in the respective prefixes. In London Lubricants[3]:

   …the tendency of persons using the English language to slur the termination of words…has the effect necessarily that the beginning of words is accentuated in comparison, and… the first syllable of a word is, as a rule, far the most important for the purpose of distinction.

   [3] London Lubricants (1920) Ltd’s Appn (1925) 42 RPC 264 at 279 (CA UK).

6. The substitution of the numeral “2” for the word “to” does not create a distinctly different impression between the trade marks; however, it still remains one factor to be taken into account in the comparison. The opponent has referred to the dictionary definitions of the word “Pit” which include, in relation to mining, “the mine itself”. Despite the potentially similar meanings between the trade marks, it has been established that trade marks must look and sound alike before the fact that they convey the same idea can be relevant.[4] Thus, in Cooper Engineering Co Pty Ltd v Sigmund Pumps[5] it was held:

   The fact that two marks convey the same idea is not sufficient in itself to create a deceptive resemblance between them, although this fact could be taken into account in deciding whether two marks which really looked alike or sounded alike were likely to deceive.

   While there is a possibility of confusion between “Pit to Port” and “Mine2Port,” I am not satisfied, on the balance of probabilities, that the likelihood of such confusion between the two trade marks is real and tangible.

   [4] See Sports Café Ltd v Registrar of Trade Marks (1999) 42 IPR 552.

   [5] Cooper Engineering Co Pty Ltd v Sigmund Pumps Ltd (1952) 86 CLR 536 per Dixon, Williams and Kitto JJ.

7. As I have found that none of the trade marks nominated by the opponent are deceptively similar to any of the opposed trade marks, the ground of opposition under section 44 of the Act has not been established.

   Section 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.

8. Here, the opponent must firstly establish that it had an Australian reputation in its trade marks extant on 10 November 2008. Secondly, it must establish that the use of the applicant’s trade marks would be likely to cause confusion in Australia as a consequence of the aforementioned reputation in the opponent’s trade marks.

9. The majority of the opponent’s demonstrated reputation resides in its “Pit to Port” trade mark. “Pit to Port” was developed in 1987 and is used in respect of a “Mining Supply Chain Management Information System” comprising of specialist software for the mining, port, power generation and bulk commodities industries. The system was previously owned by Carbon Consulting International Pty Ltd and was sold to the opponent in September 2001. Consequently, the majority of the exhibited use in the “Pit to Port” trade mark is dated from 2001. However, there are some examples of brochures indicating use by the predecessor in title dating from 1997. In the McCormick[6] case, Kenny J said:

   In practice, it is commonplace to infer reputation from a high volume of sales, together with substantial advertising expenditures and other promotions, without any direct evidence of consumer appreciation of the mark, as opposed to the product.

   [6] McCormick & Co Inc v McCormick (2000) 51 IPR 102 (at 127).

10. Use of the opponent’s trade mark has been demonstrated by newspaper articles and newsletters for the mining industry dating from 2001 until 2007. The trade mark has also been promoted at mining conferences in Australia and in the international arena. In 2003 and 2007, the opponent won business awards specifically in relation to the “Pit to Port” software program. The sales turnover in relation to the product (and trade mark) is substantial from 2001 until 2008 and establishes significant overall growth. While there seems to be a discrepancy between the opponent’s marketing figures in exhibit 8 and the declaration[7], even taken at the lowest figures, those marketing numbers are not insubstantial.  In terms of trade mark reputation, in Le Cordon Bleu BV v Cordon Bleu International Ltee[8]:

    What is "significant" or "substantial" will depend on the nature of the goods or services in question. For some highly specialised products, awareness among a few thousand persons, or even less, might be sufficient.

    [7] First Bagnall declaration, paragraph 38.

    [8] (2001) 50 IPR 1; [2000] FCA 1587 at 20:

11. The “Pit to Port” software performs a particular function designed for and targeted at the specialist mining industry. I am satisfied that the opponent has demonstrated a reputation for its trade mark in this industry existing on 10 November 2008. For completeness, I find that the evidence supporting the reputation in the opponent’s remaining trade marks is insufficient to establish this ground. While I am satisfied that there was a reputation existing in “Pit to Port” at the priority date of the opposed application, the determinative issue is whether deception or confusion resulting from the use of any of the opposed trade marks is likely.

    Likely to Deceive of Cause Confusion

12. There are a number of factors affecting the likelihood of confusion between the opponent’s and the applicant’s trade marks. It also is worth noting that section 60 does not require the trade marks to be prima facie deceptively similar for the opponent to successfully oppose.

13. “Pit to Port” is completely dissimilar to “M2P” and confusion is still unlikely to occur despite the opponent’s reputation in its trade mark. I also find that the visual and aural differences between “Matrikon Mine to Port” and “Pit to Port” are sufficient to avoid confusion in this specialized industry. If “Mine to Port” in that trade mark were seen as a descriptive identifier, this would not contribute to the perception of a connection with “Pit to Port.” The addition of “Matrikon” may also suggest to the consumer that it is not associated with the opponent’s particular software system. Accordingly, despite the abovementioned reputation in the “Pit to Port” trade mark, I do not find that reputation to be so substantial that the applicant’s use of “Matrikon Mine to Port’ or “M2P” would cause confusion in Australia.

14. Both parties evidently operate within the same specialist market.  This fact increases the likelihood of confusion between the trade marks as a result of the opponent’s trade mark.  It is clear that the applicant and the opponent are competitors in this field; however the main consideration is whether the consumers of the opponents’ products are likely to be deceived by the applicant’s use of “Mine2Port”.

15. An additional point is the fact that the opponent has demonstrated a propensity to use trade marks that are variations on the “Pit to Port” theme, including “Pit to Plant” and “Port to Plant” which were first used in 2006. For consumers of mining software (who are likely to have knowledge of the opponent’s trade mark) it is not unlikely that “Mine2Port” would be seen as part of the “family” of the opponent’s trade marks and a further variation on this established brand. The numeral “2” appearing in the applicant’s trade mark is a minor variation and would not be sufficient to avoid confusion in this context. While the trade mark “Pit to Port” does have a descriptive tinge in relation to its claimed goods, I am not of the opinion that the opponent’s rights in this particular trade mark would be limited as a consequence.

16. In summary, I find that there is a real likelihood of deception or confusion if “Mine2Port” were used on the claimed goods or services taking into account the opponent’s demonstrated reputation in its trade mark “Pit to Port”. The section 60 ground of opposition has been established in relation to trade mark application no. 1271672 “Mine2Port”.

    Section 42(b): Trade mark 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.

17. The opponent argues that the use of the applicant’s trade marks would be amount to a breach of sections 52, 53(c) and 53(d) of the Trade Practices Act 1974 (“TPA”). Section 52(1) of the TPA provides that:

    A corporation shall not, in trade or commerce, engage in conduct that is misleading or deceptive or is likely to mislead or deceive.

    and section 53 relevantly provides:

    A corporation shall not, in trade or commerce, in connexion with the supply or possible supply of goods or services or in connexion with the promotion by any means of the supply or use of goods or services:

    …(c) represent that goods or services have sponsorship, approval, performance characteristics, accessories, uses or benefits they do not have;

    (d) represent that the corporation has a sponsorship, approval or affiliation it does not have.

18. While the opponent and the applicant appear to be operating in the same industry offering similar products and the opponent has earlier use of its trade mark, these facts are not sufficient to establish a breach of section 52 of the TPA. The applicant’s conduct may be misleading or deceptive if it is likely to lead into error,[9] but to establish a breach of section 52, there must be more than a remote chance or possibility of misleading or deceptive conduct. Given my findings under section 60, the section 42(b) ground can only be relevant to 1271672: “Mine2Port” as use of a trade mark which may “deceive or confuse” is a broader test than use which is likely to “mislead or deceive”. Accordingly, section 42(b) has a higher threshold than section 60 of the Act and the Registrar must be satisfied that use of the trade mark “would”, not “could” be contrary to law for the opponent to succeed.[10]

    [9] Parkdale Custom Built Furniture Pty Ltd v Puxu Pty Ltd (1982) 149 CLR 191.

    [10] Advantage Rent-A-Car Inc v Advantage Car Rental Pty Ltd (2001) 52 IPR 24 at 32 [28].

19. The visual differences between the trade marks (as discussed under the section 44 ground) mean that they are unlikely to mislead or deceive the Australian public. The reputation demonstrated for the opponent’s trade marks is not sufficient for a reasonably significant number of Australian purchasers to be misled or deceived and I am not satisfied that a sufficient nexus between the applicant’s conduct and any misconception by retail purchasers has been established. It then follows that the applicant’s trade mark is unlikely to falsely represent that the applicant has the approval of the opponent to use its trade marks, especially in those instances where the word “Matrikon” appears. The use of the applicant’s trade marks would not breach section 53 of the TPA.

20. I am unable to find that there is a “real or not remote chance or possibility”[11] of the applicant’s use of any of its three trademarks being either misleading or deceptive under the TPA. The opponent has not discharged the onus of establishing that a reasonably significant number of persons are more likely than not to be misled as a result of the applicant’s conduct. I am not satisfied that the ground of opposition under section 42(b) of the Act has been established.

    Decision

    [11] Equity Access Pty Limited v Westpac Banking Corporation [1989] FCA 506; (1989) 16 IPR 431.

    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.

21. The opponent has established a ground of opposition under the Act in relation to trade mark application “Mine2Port” only. As a result, I refuse to register trade mark application no. 1271672.

22. The opponent has not established any grounds of opposition in relation to opposed trade marks “Matrikon Mine to Port” (1271670) or “M2P” (1271671). The applicant is successful for those matters, and I direct that trade mark application nos. 1271670 and 1271671 may proceed to registration after one month from the date of this decision.

23. If the Registrar is served with a notice of appeal on or before that time in relation to the above decision, I direct that the registration(s) shall not occur until the appeal has been discontinued, or in the event of a decision from the court, that the application(s) be subject to that order.

    Costs

24. The opponent has been successful for one of the opposition matters and unsuccessful in relation to the remaining two oppositions. I therefore award costs against the opponent for one opposition in accordance with the Official Scale contained in Schedule 8 of the Trade Marks Regulations 1995.

    Heath Wilson
    Hearing Officer
    Trade Marks Hearings
    15 December 2010