Re: Opposition by CSR Building Products Limited to extension of protection to Australia of International Registration 530546 (6, 17, 19, 37) - GYPREX (Australian Trade Mark Application No. 1966387) - in the name..
[2021] ATMO 82
•10 August 2021
TRADE MARKS ACT 1995
DECISION OF A DELEGATE OF THE REGISTRAR OF TRADE MARKS WITH REASONS
Re:Opposition by CSR Building Products Limited to extension of protection to Australia of International Registration 530546 (6, 17, 19, 37) – GYPREX (Australian Trade Mark Application No. 1966387) – in the name of Placoplatre
Delegate:
Nicholas Smith
Representation:
Opponent: Shauna Ross of Counsel instructed by Brian Shortt of IP Solved (ANZ) Pty Ltd
Holder: Francesca Colubriale and Vivian Tran of Spruson & Ferguson
Decision:
2021 ATMO 82
Trade Marks Regulations 1995 (Cth) – Reg 17A.33 opposition: ss 42(b), 44, 58 and 60 considered s60 partially established for some goods and services – protection of the IR to be extended Australia for a subset of the goods
Background
1. Trade mark number 1966387is the Australian designation of a request made under the Madrid Protocol by Placoplatre (‘the Holder’) to extend protection of the trade mark subject of International Registration 530546 to Australia. The request is known as an International Registration Designating Australia (‘IRDA’). This decision relates to an opposition to the extension of protection brought by CSR Building Products Limited (‘the Opponent’) pursuant to reg 17A.33 of the Trade Marks Regulations 1995 (Cth). Details of the IRDA are as follows:
Application Number:
1966387
IR Number:
530546
Priority and Filing Date:
27 Aug 2018
Goods and Services:
Class 6: Base metals and their alloys; metallic construction materials; transportable metallic constructions; metallic materials for railway tracks; non-electrical metallic cables and wires; ironmongery; metal pipes; safes; goods of common metals not included in other classes; ores; metallic parts for installation, particularly adjusting and locking devices, angle plates, tabs and screw products
Class 17: Rubber, gutta-percha, gum, asbestos, mica and goods made thereof not included in other classes; products made of semi-processed plastics; packing, stopping and insulating materials; nonmetallic flexible pipes; insulating materials particularly made with plaster and/or expanded or extruded polystyrene
Class 19: Nonmetallic construction materials; nonmetallic rigid pipes for construction purposes; asphalt, pitch and bitumen; nonmetallic transportable constructions; nonmetallic monuments.
Class 37: Construction and repair services.
(‘Holder’s Goods and Services’)
Trade Mark:
GYPREX
(‘Trade Mark’)
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 on 26 May 2019 in the Australian Official Journal of Trade Marks of IP Australia’s intention to extend protection to Australia for the International Registration, the Opponent filed a Notice of Intention to Oppose extension of protection followed by a Statement of Grounds and Particulars on 30 September 2019 (‘SGP’). The SGP raised grounds of opposition under ss 42(b), 43, 44, 58, 60 and 62A of the Act. The Holder filed a Notice of Intention to Defend on 1 October 2019.
Evidence
The Opponent filed the following evidence in support of its opposition:
·Declaration made on 20 December 2019 by Peter Tollens, the Senior Product Manager for the Gyprock and Cemintel divisions of the of the Opponent and CSR Limited, with Exhibits 1 to 34 (‘Tollens 1’).
5. The Holder filed the following evidence in answer:
·Declaration made on 19 March 2020 by Charlotte Myers, Intellectual Property/trademarks director of the Saint-Gobain Group (a group including the Holder) (‘Myers declaration’);
·Declaration made on 24 March 2020 by Kathryn Howard, a paralegal employed by Spruson & Ferguson, the representative of the Holder, with Annexures K1 to K5 (‘Howard declaration’); and
·Declaration made on 24 Mach 2020 by Pinnara Na-Ranong, the Chief Operating Officer of Thai Gypsum Products PLC, a company part of the Saint Gobain group, with Annexures A to D (‘Na-Ranong declaration’).
The Opponent filed the following evidence in reply:
·Declaration made on 24 September 2020 by Peter Tollens with Exhibits 1 to 27 (‘Tollens 2’).
7. 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 20 October 2020 the Opponent requested an oral hearing. Following rescheduling relating to availability, the matter was set down for a hearing by video conference on 15 June 2021 and the matter was allocated to me. In line with usual practice, an email was sent to the parties on 8 April 2021 which contained a schedule for the provision of written summaries of submissions to be filed prior to the hearing. The Opponent filed written submissions on 1 June 2021 (‘Opponent’s Submissions’). The Holder filed written submissions on 8 June 2021 (‘Holder’s Submissions’). The Holder’s Submissions sought to include additional evidence as Annexure A, being an examination report into an application made by the Opponent for a similar trade mark. I decline to have regard to this late-filed evidence on the basis of relevance as I am not bound by an examination report into a trade mark that is not the subject of the proceeding. In addition, on August 3, 2021 the Opponent filed additional unsolicited supplementary submissions referring to a recent decision issued by the Registrar. As the submissions did not add anything to my consideration of the matter I did not need to consider them.
8. At the hearing Shauna Ross of Counsel instructed by Brian Shortt of IP Solved represented the Opponent and Francesca Colubriale and Vivan Tran of Spruson & Ferguson represented the Holder.
I am a delegate of the Registrar of Trade Marks and I am to decide the opposition as required by Reg 17A.34N which provides that, unless the proceedings are discontinued or dismissed, the Registrar must, at the end, decide:
(a)to refuse protection in respect of all of the goods or services listed in the IRDA; or
(b)to extend protection in respect of some or all of the goods or services listed in the IRDA (with or without conditions or limitations);
having regard to the extent (if any) to which any ground on which the the IRDA was opposed has been established. In doing so I take account of the written record comprised of the materials mentioned in the preceding paragraphs and any oral submissions made by the parties.
The Opponent
The Opponent is an Australian company that is involved in the production of various materials including building materials. The Opponent’s parent company is CSR Limited and I refer to the Opponent and CSR Limited as ‘CSR’.
11. The Opponent is the owner of the trade marks listed in Annexure A (‘Opponent’s Trade Marks’) all of which have an earlier priority date than the Trade Mark. The goods and services for which the Opponent’s Trade Marks are registered are collectively referred to as the ‘Opponent’s Goods and Services’. The Opponent has multiple registrations for the word mark ‘Gyprock’ for various goods and services which will collectively be referred to as the ‘GYPROCK Mark’.
12. The relevant claims/statements in Tollens 1 can be summarised as follows:
· CSR provides building products for residential and commercial construction and has been operating in Australia for over 160 years. It has annual revenues of over $2 billion and has 2,900 employees across Australia and NZ.
· CSR operates through a number of divisions including its GYPROCK division, which provides plasterboard and related products. Gyprock uses the GYPROCK Mark and the related Opponent’s Trade Marks to provide its goods.
· CSR has produced and sold plasterboard and related products in Australia since 1948. Plasterboard is a major component of the internal linings of most buildings, and CSR’s GYPROCK division is Australia’s leading manufacturer of gypsum-based products. CSR also operates a network of 56 trade centres and provides supply installation, maintenance and repair services under the GYPROCK Mark. CSR’s GYPROCK products are sold through all major hardware supply stores in Australia (such as Bunnings and Dulux) and by way of direct sales. Sales figures for the sale of goods and services under the GYPROCK Mark are significant.
· CSR has a significant reputation in the GYPROCK Mark developed through its use on or as part of brochures, catalogues, websites, direct television and radio advertising, communications from CSR, packaging, signage as well as third party media. CSR’s annual expenditure for the promotion of its goods and services under the GYPROCK Mark is not insignificant.
· CSR’s GYPROCK division has introduced various new plasterboard products in Australia over the years, usually marketed by reference to the GYPROCK Mark as well as a sub-brand, such as Plus, Supaceil or Aria. CSR also offers various products and accessories for use with its GYPROCK plasterboard product.
· The Holder seeks to register and use the Trade Mark for goods and services sold in close proximity or direct competition with the Opponent’s goods and services sold under the GYPROCK Mark.
13. The relevant claims/statements in Tollens 2 can be summarised as follows:
· The Opponent is a wholly owned subsidiary of CSR Limited and all companies in the CSR group share a unity of purpose.
· All goods manufactured in Australia bearing the Opponent’s Trade Marks prior to 2009 were manufactured by CSR Limited. In 2009 CSR Limited assigned the Opponent’s Trade Marks to the Opponent, who has subsequently taken over the manufacturing of goods bearing the Opponent’s Trade Marks.
· CSR enjoys a market share of 40% for plasterboard products sold in Australia.
· CSR has been manufacturing, promoting, advertising and offering ceiling tiles for sale in Australia under or by reference to the GYPROCK Mark since 1973. The Opponent also offers a range of specialised plasterboard products under the GYPROCK Mark designed to be used in conjunction with CSR’s wall and ceiling products.
· CSR has offered metallic products under the GYPROCK Mark since 1991, including wall clip products. CSR and the Opponent has also sold and promoted fixings under or by reference to the GYPROCK Mark since 1991.
· The market for the Opponent’s Gyprock products is a broad one as it is used by builders, interior fit-out companies and people undertaking home DIY products. It is typical for operators in the internal linings industry to offer for sale both plasterboard solutions and tile/panel solutions, all of which can be used for ceilings.
· As of 2020 the Holder has not used the Trade Mark in Bunnings, rather the products sold under the GYPREX Mark are by the Holder’s related entities. The Holder’s evidence of sale of products under the Trade Mark in Australia is not reflected in the searches conducted by the Opponent.
The Holder
The Holder is a French company that is involved in the production of building materials. The Myers Declaration states that the Holder is part of the Saint Gobain group, as is Thai Gypsum Products PLC and that the Holder has authorised Thai Gypsum Products PLC (‘Thai Gypsum’) to use the Trade Mark in Australia
15. The Howard Declaration contains the results of various online searches that indicate that the term ‘gypsum’ has a dictionary definition, referring to a common soft sulphate mineral that is commonly used to make plaster. Gypsum Board is often used as a synonym of plasterboard.
16. The relevant claims/statements in the Na-Ranong Declaration can be summarised as follows:
· Thai Gypsum was established in 1968 and since that date has manufactured gypsum plasterboard. Since 2002 it has manufactured and distributed building materials containing gypsum under or by reference to the Trade Mark. It is the authorised user of the Trade Mark in Australia.
· Thai Gypsum has exported goods to Australia bearing the Trade Mark since at least 2002. This includes ceiling tiles and sales to distributors in Australia are not insignificant.
· The Holder has registered the Trade Mark in numerous jurisdictions without the Opponent opposing the registration and the Declarant is not aware of any instances of confusion between the Trade Mark and the GYPROCK Mark in Australia and New Zealand (the Declarant being the export director of Thai Gypsum for Australia and New Zealand)
Grounds of Opposition, Onus and Standard of Proof
As indicated above in the SGP the Opponent nominated grounds of opposition under ss 42(b), 43, 44, 58, 60 and 62A however in the hearing indicated that it did not press the grounds of opposition pursuant to ss 43 and 62A of the Act. To successfully oppose the application the Opponent needs to establish one of the nominated grounds.
18. The onus of proof in an opposition rests upon the Opponent.[1] The relevant standard of proof is the ordinary civil standard based on the balance of probabilities.[2] The date at which the rights of the parties are to be determined is the filing date 27 Aug 2018 (‘relevant date’), which is also the priority date for the purposes of ss 44 and 60.[3]
Section 60
[1] Food Channel Network Pty Ltd v Television Food Network GP [2010] FCAFC 58, [32].
[2] Following Pfizer Products Inc v Karam (2006) 70 IPR 599, [6]-[26], and Telstra Corporation Limited v Phone Directories Company Pty Ltd [2015] FCAFC 156, [133].
[3] Southern Cross Refrigerating Co v Toowoomba Foundry Pty Ltd (1954) 91 CLR 592, 595, see also s 29(1) Trade Marks Act 1995 (Cth).
Section 60 is reproduced below:
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.
To establish a ground of opposition under s 60 an opponent must demonstrate that as at the relevant date there was another trade mark which had acquired a reputation in Australia amongst a significant or substantial number of persons in the relevant market such that use of the trade mark would be likely to deceive or cause confusion.[4]
[4] The present paragraph and the following paragraphs summarizing the requirements under s 60 of the Act are paraphrased from the decision of the Registrar’s Delegate in Australian Boutique Markets Pty Ltd v Rachael Zelensky and Jeffrey Zelensky [2013] ATMO 97.
In McCormick & Co Inc v McCormick, Kenny J considered what is intended by the word ‘reputation’ as used in s 60. Her Honour consulted the Macquarie Dictionary and on the basis of the definition provided concluded that it was ‘the recognition of the [trade mark] by the public generally’.[5] Her Honour quoted with approval the following words of Lockhart J in Re ConAgra Inc v McCain Foods (Aust) Pty Ltd:
[R]eputation within the jurisdiction may be proved by a variety of means including advertisements on television or radio, or in magazines and newspapers within the forum. It may be established by showing constant travel of people between other countries and the forum and that people within the forum, (whether residents there or persons simply visiting there from other countries) are exposed to the goods of the overseas owner …[6]
[5] [2000] FCA 1335, [81].
[6] (1992) 33 FCR 302, 343.
On the subject of reputation Kenny J also referred to the Hugo Boss decision, where the Registrar’s delegate observed:
[I]t is true that the assessment of the reputation of a trade mark goes far beyond mere examination of sales or turnover of goods sold under that trade mark and contemplation of the advertising and promotional figures.
As regards a trade mark, its reputation derives both from the quantum of sales under that mark and also its esteem, or image, projected by that trade mark. The quantum of sales, advertising and promotion contributes to the ‘recognition’ component of the trade mark’s reputation. The credit, image and values projected by a trade mark attaches to the ‘esteem’ component of the reputation as do the public events and other trader’s marks with which [the] owner of the trade marks in question chooses to associate the trade marks via sponsorships, cross-promotions, ‘contra deals’ and so forth.
It follows that a trade mark used in relation to goods with comparatively low sales may have a high and strong reputation by virtue of the high credit or esteem in which it is held, or, conversely, that a trade mark which has very high sales may have a strong reputation notwithstanding the lack of esteem that attaches to it. The particular popular images, or sets of values, that attach to the trade mark are also, therefore, important parts of the reputation of the trade mark and may be as strong an associative force in the minds of the public as the association of the trade marks with the goods or services themselves.[7]
[7] Hugo Boss AG v Jackson International Trading Co Kurt D Bruhl Gesellschaft MbH & Co KG (1999) 47 IPR 423, 426.
As stated above, in assessing reputation under s 60, what constitutes a significant or substantial number of persons in the relevant market must be considered. The case of Le Cordon Bleu BV v Cordon Bleu International Ltee[8] was decided under s 28(a) of the (now repealed) Trade Marks Act 1955. That provision did not refer to ‘reputation’ at all, only that use of the impugned trade mark would be ‘likely to deceive or cause confusion’. Nevertheless the words of Heerey J provide some guidance:
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 … We are here concerned with foodstuffs sold in supermarkets, delicatessens, milk bars and other retail outlets. The relevant market is virtually the entire Australian population from early teenage years onwards.[9]
[8] (2000) 50 IPR 1.
[9] Ibid 20. Heerey J’s decision was overturned on appeal to the Full Federal Court, although not on the point quoted. Indeed the court specifically noted that his approach contained no error; see Renaud Cointreau v Cordon Bleu International Ltee [2001] FCA 1170, [75].
The Opponent has particularised the ground of opposition in the SGP in the manner set out below:
1. CSR is the registered owner of the trade mark GYPROCK.
2. In 1947, the trade mark GYPROCK was first used in Australia by CSR in connection with the introduction of its earliest gypsum-based building product which comprised a paper faced plasterboard that was the first of its kind in Australia. Today, the trade mark GYPROCK is used throughout Australia by CSR in connection with an extensive range of gypsum-based building and construction products such as plasterboard and cornice, as well as compounds, adhesives, specialty plasters and associated finishing materials and related accessories.
3. The trade mark GYPROCK was coined by CSR as a unique and arbitrary way of communicating the source of CSR’s building and construction products and its related goods and services (the “GYPROCK Goods and Services”).
4. In Australia, CSR is the owner of several registrations for the trade mark GYPROCK including a family of GYPROCK-formative trade marks. CSR’s trade mark GYPROCK and its family of GYPROCK-formative trade marks are collectively hereinafter referred to as the “GYPROCK Mark”.
5. CSR has continuously used the GYPROCK Mark in Australia in connection with the GYPROCK Goods and Services. CSR’s GYPROCK Mark is well known in Australia through use in connection with the GYPROCK Goods and Services. The GYPROCK Mark had already acquired a substantial reputation in Australia in respect of the GYPROCK Goods and Services well before the Opposed Trade Mark Priority Date.
6. Based on the renown and reputation acquired by CSR in the GYPROCK Mark in respect of the GYPROCK Goods and Services in Australia, the use of the Opposed Trade Mark would be likely to deceive or cause confusion.
7. Considering CSR’s reputation in Australia in the GYPROCK Goods and Services and taking into account CSR’s use of the GYPROCK Mark in Australia since as early as 1947, consumers are likely to be deceived or confused into believing that the Opposed Trade Mark Goods and Services are those of CSR, or somehow associated and/or affiliated with CSR or endorsed by or sponsored by CSR, when that is not the case.
Given the extensive use of the GYPROCK Mark by the Opponent and CSR Limited since 1948, including the extensive promotion, significant sales figures and the fact that the Opponent’s Gyprock plasterboard products hold a 40% market share in the plasterboard products in Australia I am satisfied that, on the evidence before me that the GYPROCK Mark had, before the relevant date, acquired a very significant reputation in Australia for plasterboard products (including both wall and ceiling products), sufficient for the requirements under s 60(a), and a less significant, through still sufficient, reputation in connection with goods and services best described as accessories to plasterboard products which would include certain metallic building goods, adhesives and sealants as well as services relating to the use of plasterboard products.
It is not sufficient that the Opponent merely establishes that its trade marks have a reputation; the Registrar must also be satisfied that because of that reputation the use of the Trade Mark would be likely to deceive or cause confusion. Discussions and decisions on the subjects of deception and confusion are legion and a good number provide relevant comments in relation to a consideration of deception and confusion for the purposes of s 60. In a case concerning infringement and passing off, Australian Woollen Mills Limited v F S Walton and Company Limited, Dixon and McTiernan JJ said the following:
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 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. The course of business and the way in which the particular class of goods are sold gives, it may be said, the setting, and the habits and observations of men considered in the mass affords the standard.[10]
[10] (1937) 58 CLR 641, 658.
In Registrar of Trade Marks vWoolworths Ltd French J highlighted the following further matters concerning confusion:
A trade mark is likely to cause confusion if the result of its use will be that a number of persons are caused to wonder whether it might not be the case that the two products or closely related products and services come from the same source. It is enough if the ordinary person entertains a reasonable doubt. It may be interpolated that this is another way of expressing the proposition that the trade mark is likely to cause confusion if there is a real likelihood that some people will wonder or be left in doubt about whether the two sets of products or the products and services in question come from the same source.
In considering whether there is a likelihood of deception or confusion all surrounding circumstances have to be taken into consideration. These include the circumstances in which the marks will be used, the circumstances in which the goods or services will be bought and sold and the character of the probable acquirers of the goods and services.[11]
[11] (1999) 45 IPR 411, 428. These considerations by French J are based on principles set out by Kitto J in Southern Cross Refrigerating Co v Toowoomba Foundry Pty Ltd (1954) 91 CLR 592, 594-5.
In Pottle Productions Inc v Rute Ithalat Ve Ihracat Anonim Sirketi the delegate observed that:
The assessment of the likelihood of deception or confusion under section 60 is informed by the strength of the reputation of the Opponent’s trade mark(s), the inherent distinctiveness thereof, the degree of similarity between the trade marks under consideration and the nexus or connection between the goods and/or services of the parties. Each of these is a variable and it is possible that a trade mark’s reputation might be sufficiently strong and the degree of similarity to an opposed trade mark be so great (particularly where the trade marks are inherently distinctive) that confusion or deception will be a likelihood where very little, if any, nexus or connection exists between the goods and/or services under consideration.[12]
[12] [2012] ATMO 124, [40].
While it is not necessary to show that the marks are deceptively similar for the purposes of an opposition under s 60, as stated in Qantas Airways Limited v Edwards, ‘the degree of similarity between the allegedly conflicting marks will be a relevant consideration to be taken into account when considering the likelihood of confusion resulting from use of the opposed mark.’[13]
[13] [2016] FCA 729, [142].
In the present case the GYPROCK Mark and the Trade Mark share the same first element ‘gyp’ and a second syllable beginning with ‘r’. The goods and services for which the GYPROCK Mark has a reputation in (namely plasterboard and goods and services being accessories to plasterboard products) fall within the Holder’s Goods and Services, though I acknowledge that the Holder’s Goods and Services are broader than the goods and services for which the GYPROCK Mark has acquired a reputation.
The Holder’s Goods and Services can be broadly defined as building products and building services. The market for these goods is a broad one, incorporating both sophisticated contractors and relatively unsophisticated DIYers. The fact that the ceiling tiles offered by Thai Gypsum are sold at Bunnings shows that products sold under the Trade Mark are offered to the general public.
I accept the Holder’s submissions that the Holder’s Goods and Services are broader than the goods and services for which the GYPROCK Mark has acquired a reputation. However the question here is whether confusion could arise in the use of the Trade Mark for the Holder’s Goods and Services by reason of the reputation acquired in the GYPROCK Mark in a narrower range of goods and services. I note that the GYPROCK Mark is used for goods and services not limited to plasterboards, rather it is used for a suite of building products, though most of them are designed to be used with plasterboard (cornices, fastenings, adhesives). I also accept the evidence that in the market for building products, a single brand can be used across different building materials and products. As such a consumer engaged in a building project, aware that GYPROCK is used for both plasterboard and other building products (and given the Opponent’s 40% market share, a possible user of the Gyprock plasterboard product), may be confused by the use of a similar mark for (say) building products that are not necessarily directly connected to plasterboard products, but, like GYPROCK, are used for building homes and offices (part of the Holder’s Goods and Services).
Notwithstanding my conclusions above there is a subset of the Holder’s Goods and Services that are sufficiently distinct from the goods and services for which the GYPROCK Mark has acquired a reputation, that use in relation to those Goods and Services would not cause confusion. I set out the goods that are sufficiently distinct (‘Remaining Goods’) below:
Class 6: Base metals and their alloys; metallic materials for railway tracks; ironmongery; safes; ores;
Class 19: asphalt, pitch and bitumen;
In the ordinary course of things, an application to register a mark (such as the Trade Mark) that contains the same first element as a mark with a significant reputation for the same goods may well result in a finding that by reason of the reputation of the earlier mark, the use of the later mark would deceive or confuse. However, the Holder submits that to the extent that the trade marks are similar it is due to the shared element ‘gyp’ that could be seen as an abbreviation of ‘gypsum’ being the base material for plasterboard.
While I note the statements made by Stephen J in Hornsby Building Information Centre Pty Limited v Sydney Building Information Centre Limited[14] regarding the risk of confusion that must be accepted as a price to be paid for the advantages of a descriptive trade name, the present case does not fall into the category of cases where confusion does not arise because the shared element is descriptive. This is because the shared element is not the descriptive term ‘gypsum’ but the abbreviation ‘gyp’ that at best alludes to gypsum. Neither of the marks is descriptive or contains descriptive elements; there is no evidence before me that the abbreviation ‘gyp’ is in such common use in Australia to describe construction materials containing gypsum that it must be discounted as common to the trade[15]. Rather the evidence before me shows that the Opponent has a very significant reputation in the GYPROCK Mark, such that it is quite possible that a consumer would see (for example) the ceiling tiles offered by Thai Gypsum under the Trade Mark and be caused to wonder whether it might not be the case that GYPROCK and GYPREX products are closely related or come from the same source.
[14] (1978) 140 CLR 216, 229.
[15] The Holder in its submissions identifies 3 trade marks which have the prefix ‘gyp’ and cover goods or services related to plasterboard. One of them uses the word Gypsum itself. There is no evidence of any extensive use or reputation with respect to the remaining marks (395016 GYPFAST, 1249888 GYPTONE).
While I note that there is no evidence of confusion between the respective products, the absence of evidence is of limited value in this case given the limited evidence of sales under the Trade Mark (limited to ceiling tiles) as well as the inherent difficulties of acquiring evidence of confusion in circumstances where neither the Holder, nor Thai Gypsum, directly sell to the public (Thai Gypsum sells to distributors, who sell to retailers, who sell to the public).
In the present case I am satisfied that by reason of the reputation acquired by the GYPROCK Mark in Australia, the use by the Holder of the Trade Mark for the Holder’s Goods and Services (other than the Remaining Goods) would be likely to deceive or cause confusion.
I find that the Opponent has established the ground of opposition pursuant to s 60 in respect of all the Holders Goods and Services other than the Remaining Goods. I will consider the remaining grounds of opposition solely in respect of the Remaining Goods.
Section 42
Section 42 is reproduced below:
42 - Trade mark scandalous or its use contrary to law
An application for the registration of a trade mark must be rejected if:
(a) the trade mark contains or consists of scandalous matter; or
(b) its use would be contrary to law.The Opponent pressed this ground of opposition solely on the basis that the use of the Trade Mark would be contrary to law (s 42(b)). The onus is on the Opponent to establish that use of the Trade Mark by the Holder would be, rather than could be, contrary to law on the balance of probabilities.[16] The relevant time for assessing whether an application is contrary to law is at the relevant date but ‘looking forward to prospective conduct after registration’.[17]
[16] Advantage Rent-a-Car Inc v Advantage Car Rental Pty Ltd [2001] FCA 683.
[17] Time Warner Entertainment Co LP v Stepsam Investments Pty Ltd [2004] 59 IPR 343, 353 (Wilcox J).
The Opponent has particularised the ground of opposition in the SGP as follows:
1. CSR is the registered owner of the trade mark GYPROCK.
2. In 1947, the trade mark GYPROCK was first used in Australia by CSR in connection with the introduction of its earliest gypsum-based building product which comprised a paper faced plasterboard that was the first of its kind in Australia. Today, the trade mark GYPROCK is used throughout Australia by CSR in connection with an extensive range of gypsum-based building and construction products such as plasterboard and cornice, as well as compounds, adhesives, specialty plasters and associated finishing materials and related accessories.
3. The trade mark GYPROCK was coined by CSR as a unique and arbitrary way of communicating the source of CSR’s building and construction products and its related goods and services (the “GYPROCK Goods and Services”).
4. In Australia, CSR is the owner of several registrations for the trade mark GYPROCK including a family of GYPROCK-formative trade marks. CSR’s trade mark GYPROCK and its family of GYPROCK-formative trade marks are collectively hereinafter referred to as the “GYPROCK Mark”.
5. CSR has continuously used the GYPROCK Mark in Australia in connection with the GYPROCK Goods and Services. CSR’s GYPROCK Mark is well known in Australia through use in connection with the GYPROCK Goods and Services. The GYPROCK Mark had already acquired a substantial reputation in Australia in respect of the GYPROCK Goods and Services well before the Opposed Trade Mark Priority Date.
6. Based on the renown and reputation acquired by CSR in the GYPROCK Mark in respect of the GYPROCK Goods and Services in Australia, the use of the Opposed Trade Mark would be likely to deceive or cause confusion.
7. The use of the Opposed Trade Mark is use, in trade or commerce, which is likely to mislead or deceive consumers in contravention of ss 18 and 29 of the Australian Consumer Law which is Schedule 2 to the Competition and Consumer Act 2010 (Cth). Consumers are likely to be misled or deceived into believing that the Opposed Trade Mark Goods and Services offered and provided under the Opposed Trade Mark are those of CSR or somehow associated or affiliated with CSR in breach of section 18 of the Australian Consumer Law 2010 (Cth).
8. Providing and offering to provide the Opposed Trade Mark Goods and Services also suggests that the Applicant and the Opposed Trade Mark Goods and Services are associated or affiliated with CSR, or that the Applicant has obtained CSR's sponsorship or approval to use the Opposed Trade Mark, when that is not the case. This conduct is in breach of section 29 of the Australian Consumer Law 2010 (Cth).
9. Based on the renown and reputation acquired by CSR in the GYPROCK Mark in Australia in respect of the GYPROCK Goods and Services, the use of the Opposed Trade Mark amounts to actionable passing off by the Applicant.
As previously stated the Opponent has failed to establish a ground of opposition under s 60 with respect to the Remaining Goods. The test for misleading or deceptive conduct under s 18 of the Australian Consumer Law (‘ACL’) is a more stringent one than that for deception or confusion under s 60,[18] and consequently I find that the Opponent has also failed to establish that the Holder’s use of the Trade Mark for the Remaining Goods would be contrary to s 18 of the ACL.
[18] See, e.g.: Ownit Homes Pty Ltd v Ownit Conveyancing Pty Ltd [2005] ATMO 47, [36] (Hearing Officer Williams); Parkdale Custom Built Furniture Pty Ltd v Puxu Pty Ltd (1982) 149 CLR 191, 198 (Gibbs CJ).
Paraphrasing the statement of the Registrar’s Delegate in A G Professional Hair Care Products Ltd v Geagroup Invest SRL[19], where a trade mark does not run afoul of s 18 of the ACL, neither will it run afoul of s 29 of the ACL. In Pacific Publications Pty Ltd v IPC Media Pty Ltd, Beaumont J considered—in connection with the superseded Trade Practices Act1974 (‘TPA’)—that ‘the Court’s conclusion on s 52 would necessarily carry with it a conclusion on s 53(c) and (d)’.[20] Sections 52 and 53 of the TPA were, respectively, the equivalent provisions to ss 18 and 29 of the ACL. Justice Hill in Re Equity Access Pty Ltd v Westpac Banking Corporation also addressed the relationship between s 52 of the TPA and passing off. His Honour considered that:
The scope for the operation of s 52 will thus be broader than that involved in the tort of passing off so that in a case such as the present where the claim is for the protection of the reputation in a name against the use of that name by another, failure to succeed under s 52 or s 53 will invariably mean that proceedings for passing off would likewise fail.[21]
[19] [2014] ATMO 65, [50] (Hearing Officer Wilson).
[20] [2003] FCA 104, [107] (Beaumont J).
[21] [1989] FCA 506, [40] (citations omitted).
For these reasons I am not satisfied that use of the Trade Mark by the Holder for the Remaining Goods would be contrary to law. Therefore, the Opponent has failed to establish the ground of opposition under s 42(b) for the Remaining Goods.
Section 44
The relevant provisions of section 44 with respect to the Remaining Goods are reproduced below:
Section 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)it 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).
(2)…
(3)If the Registrar in either case is satisfied:
(a)that there has been honest concurrent use of the 2 trade marks; or
(b)that, because of other circumstances, it is proper to do so;
the Registrar may accept the application for the registration of the applicant's trade mark subject to any conditions or limitations that the Registrar thinks fit to impose. If the applicant's trade mark has been used only in a particular area, the limitations may include that the use of the trade mark is to be restricted to that particular area.
Note: For limitations see section 6.
(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.
Note 3: For priority date see section 12.
Section 10 - Definition of deceptively similar
For the purposes of this Act, a trade mark is taken to be deceptively similar to another trade mark if it so nearly resembles that other trade mark that it is likely to deceive or cause confusion.
46. To successfully oppose the application pursuant to s 44 the Opponent must establish the requirements of s 44(1), i.e. that at least one of the trade marks upon which it relies, being a trade mark registered by a person other than the Holder:
· has a priority date which is earlier than that of the Trade Mark (‘the first requirement’);
· is substantially identical with or deceptively similar to the Trade Mark (‘the second requirement’); and
· is in respect of similar goods, and/or services which are closely related to, the Remaining Goods (‘the third requirement’).
In the event that each of these requirements is satisfied by the Opponent it may still be possible for the Registrar to accept the application (or allow it to proceed to registration) if the Registrar is satisfied, pursuant to ss 44(3) and 44(4), that there has been honest concurrent use of the Trade Mark, other circumstances which would make registration of the Trade Mark proper, or that the Holder has continuously used the Trade Mark beginning before the priority date of the Opponent’s relied upon mark.
The Opponent has particularised the ground of opposition in the SGP by reference to the Opponent’s Trade Marks. Each of the Opponent’s Trade Marks has a priority date that is earlier than the priority date of the Trade Mark. A number of the Opponent’s Trade Marks (such as 520863, 528803, 571040) are registered for all goods in Class 19 so the third requirement is satisfied at least in respect of a subset of the Remaining Goods. It is therefore necessary to consider the second requirement.
Substantially identical and/or deceptively similar
I will now consider whether the Trade Mark is substantially identical to the Opponent’s Trade Marks. When considering ‘substantial identity’ in Shell Co of Australia Ltd v Esso Standard Oil (Australia) Ltd Windeyer J said:
In considering whether marks are substantially identical they should, I think, be compared side by side, their similarities and differences noted and the importance of these assessed having regard to the essential features of the registered mark and the total impression of resemblance or dissimilarity that emerges from the comparison.[22]
[22] (1963) 109 CLR 407, 414.
50. The Trade Mark consists of the word GYPREX. The Opponent’s Trade Marks consist of either the word GYPROCK, GYPROCK with additional elements (i.e. GYPROCK SECURITYWALL) or another term consisting of the first element ‘gyp’ and a second element (i.e. GYPBOARD, GYPFAST)
51. On a side by side comparison there are clear differences which mean that a total impression of dissimilarity emerges from a comparison of each of the Opponent’s Trade Marks and the Trade Mark. Each of the Opponent’s Trade Marks shares the ‘gyp’ element with the Trade Mark but does not contain the ‘rex’ element and contain other distinctive elements that mean that the respective marks are not substantially identical. I move then to consider whether the Trade Mark and Opponent’s Trade Marks are deceptively similar.
52. The principal authority for guidance in determining whether trade marks are deceptively similar also comes from the judgment of Windeyer J in Shell Co (Aust) Ltd v Esso Standard Oil (Aust) Ltd:
On the question of deceptive similarity, a different comparison must be made from that which is necessary when substantial identity is in question. The marks are not now to be looked at side by side. The issue is not abstract similarity, but deceptive similarity. Therefore the comparison is the familiar one of trade mark law. It is between, on the one hand, the impression based on recollection of the plaintiff’s mark that persons of ordinary intelligence and memory would have; and, on the other hand, the impressions that such persons would get from the defendant’s [trade mark].[23]
[23] Ibid [13].
53. Jacobson J in Millennium & Copthorne International Limited v Kingsgate Hotel Group Pty Ltd summarised the principles of deceptive similarity with reference to the authorities as follows:
Without seeking to reformulate the various statements of principle stated in the Full Court authorities, it is sufficient for present purposes to identify the critical elements which seem to me to inform the issue of deceptive similarity in the present case. There are nine elements.
First, the judgment of likelihood of deception is a practical one. It requires an assessment of the effect of the challenged mark on the minds of potential customers: Woolworths[24] at [49]; Australian Woollen Mills[25] at 658.
[24] Registrar of Trade Marks v Woolworths Ltd [1999] FCAFC 1020.
[25] Australian Woollen Mills Ltd v FS Walton & Co Ltd [1937] HCA 51; (1937) 58 CLR 641.
Second, the question of deceptive similarity is not to be decided by a side-by-side comparison. It is to be determined by a comparison of the impression based on recollection of the opponent’s mark that persons of ordinary intelligence and memory would have, and the impression that those persons would get from the opposed trade mark: Crazy Ron’s[26] at [73]; Shell Company of Australia Ltd v Esso Standard Oil (Australia) Ltd [1963] HCA 66; (1963) 109 CLR 407 at 415 per Windeyer J.
[26] Crazy Ron’s Communications Pty Ltd v Mobileworld Pty Ltd [2004] FCAFC 196; (2004) 209 ALR 1.
Third, allowance must be made for imperfect recollection: Crazy Ron’s at [74].
Fourth, the effect of the spoken description must be considered: Woolworths at [49]; Crazy Ron’s at [75]; Australian Woollen Mills at 658.
Fifth, it is necessary to show a real tangible danger of deception or confusion: Woolworths at [43] and [50]; Crazy Ron’s at [76]; Southern Cross Refrigerating[27] at 594 – 595.
[27] Southern Cross Refrigerating Co v Toowoomba Foundry Pty Ltd (1954) 91 CLR 592.
Sixth, a trade mark is likely to ‘cause confusion’ if the result of its use will be that a number of persons are ‘caused to wonder’ whether the two products come from the same source: Woolworths at [50]; Southern Cross Refrigerating Co at 595. This test sets a lower threshold than that which is required to establish that conduct is likely to mislead or deceive under s 18 of Schedule 2 of the Competition and Consumer Act 2010 (Cth): see McWilliam's Wines Pty Ltd v McDonald's System of Australia Pty Ltd [1980] FCA 159; (1980) 33 ALR 394 at 398 per Smithers J.
Seventh, all surrounding circumstances must be taken into consideration. The circumstances include those in which the marks will be used, and in which the goods or services will be bought and sold, as well as the character of the probable acquirers of the goods and services: Woolworths at [50]; Crazy Ron’s at [86] – [89]; Southern Cross Refrigerating at 595.
Eighth, the question of whether there is a likelihood of confusion is not to be answered by reference to the manner in which a party has used the mark, but by reference to what an applicant can do. That is to say, the use to which it can properly put the mark if registration is obtained: Woolworths at [50]; Berlei Hestia Industries Ltd v The Bali Company Inc [1973] HCA 43; (1973) 129 CLR 353 at 362 per Mason J.
Ninth, if a registered trade mark includes words which can be regarded as an ‘essential feature’ of the mark, another mark that incorporates those words may cause a tangible danger of deception or confusion by reason of consumers retaining an imperfect recollection of those words: Crazy Ron’s at [79]. However, care must be taken to not too readily characterise words in a composite trade mark as an ‘essential feature’ because to do so may effectively convert a composite mark into something different: Crazy Ron’s at [100].[28]
[28] [2012] FCA 1022, [37]-[46].
In the present case the Trade Mark shares the element ‘gyp’ with each of the Opponent’s Trade Marks and in some cases (such as with the GYPROCK Mark) a suffix beginning with ‘r’. However in the present case it is important to consider the similarities in the context of the Remaining Goods being base metals and their alloys; metallic materials for railway tracks; ironmongery; safes; ores; asphalt, pitch and bitumen. These goods are not material commonly purchased by the general public; rather they are purchased by sophisticated commercial or government agencies involved in large scale construction, roadwork or metallurgy who are likely to take some care and consideration in the entity they purchase the Remaining Goods from; these are not goods purchased on impulse or by amateurs. I consider that, on balance, the differences between the Trade Mark and each of the Opponent’s Trade Marks, being the distinctive suffix are sufficient that when considered as a whole in the context of the goods (and their likely purchasers), even allowing for imperfect recollection, it is unlikely that the use of the Trade Mark will deceive or cause confusion among a substantial number of persons because of any similarity it has to the Opponent’s Trade Marks.
I find that the Opponent has failed to establish the ground of opposition under s 44 with respect to the Remaining Goods.
Section 58 – Applicant not owner of trade mark
56. Section 58 is reproduced below:[29]
[29] In summarising the principles that apply with respect to s 58 of the Act I have paraphrased from Richard Khouzame v Melambada Pty Ltd (Unreported, Australian Trade Marks Office, 6 January 2017), [12] (Hearing Officer Wilson).
Section 58. Applicant not owner of trade mark
The registration of a trade mark may be opposed on the ground that the applicant is not the owner of the trade mark.
Note:For applicant see section 6.
57. The owner of a trade mark is the person who first uses it in Australia, or first files a trade mark application in Australia, whichever is the earlier. It is now well established at law that in order to succeed under this ground of opposition the Opponent must establish three factors. These are:
· that the Trade Mark is identical, or substantially identical, to the trade mark(s) relied upon by the Opponent (‘the first factor’);[30]
[30] Carnival Cruise Lines Inc. v Sitmar Cruises Limited (1994) 31 IPR 375.
· that the Holder’s Goods are the ‘same kind of thing’ as the goods for which the trade mark(s) relied upon by the Opponent was used (‘the second factor’);[31] and
[31] Re Hicks’ Trade Mark (1897) 22 VLR 636.
· that a person other than the Holder has the earlier claim to ownership of the Trade Mark based on use of the trade mark(s) relied upon by the Opponent prior to whichever is the earlier of: (a) the application to register; or (b) any actual use of the Trade Mark by the Holder (‘the third factor’).[32]
[32] Settef SpA v Riv-Oland Marble Co (Vic) Pty Ltd (1987) 10 IPR 402, 413 (McGarvie J).
58. The ground based on s 58 was particularised in the SGP as follows:
1. The Opposed Trade Mark Priority Date is 27 August 2018.
2. In 1947, CSR commenced use of the trade mark GYPROCK in Australia.
3. CSR was the first to adopt and use the trade mark GYPROCK in Australia.
4. CSR was the first to obtain registration of the trade mark GYPROCK in Australia.
5. The Opposed Trade Mark is substantially identical or deceptively similar to the trade mark GYPROCK.
6. The Opposed Trade Mark Goods and Services covered by the Opposed Trade Mark are of the same kind or same description as the GYPROCK Goods and Services. The intended customers/users of the Opposed Trade Mark Goods and Services and the intended customers/users of the GYPROCK Goods and Services are the same.
59. Given that I have found that the GYPROCK Mark is not substantially identical to the Trade Mark, the Opponent has failed to establish the first factor. As the Opponent must establish all three factors to succeed in the s 58 ground of opposition, I find that the Opponent has failed to establish the ground of opposition pursuant to s 58 of the Act.
Decision and Costs
60. Regulation 17A.34N provides:
17A.34N Decision on opposition
(1)Unless the opposition proceedings are discontinued or dismissed, the Registrar must decide:
(a)to refuse protection in respect of all of the goods or services listed in the IRDA; or
(b)to extend protection in respect of some or all of the goods or services listed in the IRDA (with or without conditions or limitations);
having regard to the extent (if any) to which the grounds on which the IRDA was opposed have been established.
(2) The Registrar must notify the International Bureau of the Registrar’s decision.
61. The provisions for decision on oppositions to IRDAs are couched differently to those for national trade mark opposition decisions under s 55 of the Act. The provisions here clearly allow the Registrar to refuse protection to all goods and services listed in the IRDA or to extend protection for some or all of those goods and services. This decision is guided by the extent to which a ground of opposition has been established.
62. In this matter, the Opponent has established a ground of opposition under s 60 of the Act in relation to the Goods and Services listed below. I refuse to extend protection of the IR in respect of those goods and services.
Class 6: metallic construction materials; transportable metallic constructions; non-electrical metallic cables and wires; metal pipes; goods of common metals not included in other classes; metallic parts for installation, particularly adjusting and locking devices, angle plates, tabs and screw products
Class 17: Rubber, gutta-percha, gum, asbestos, mica and goods made thereof not included in other classes; products made of semi-processed plastics; packing, stopping and insulating materials; nonmetallic flexible pipes; insulating materials particularly made with plaster and/or expanded or extruded polystyrene
Class 19: Nonmetallic construction materials; nonmetallic rigid pipes for construction purposes; nonmetallic transportable constructions; nonmetallic monuments.
Class 37: Construction and repair services.
63. I extend protection in respect of the Remaining Goods listed below one month from the date of this decision.
Class 6: Base metals and their alloys; metallic materials for railway tracks; ironmongery; safes; ores;
Class 19: asphalt, pitch and bitumen;
64. If the Registrar is served with notices of appeal before the protection is extended, I direct that the protection shall not occur until the appeal has been withdrawn or discontinued. Otherwise I direct that protection of the IRDAs be subject to any orders of the court.
65. The International Bureau will be notified of the Registrar’s decision.
66. The Parties have each sought an award of costs in their favour. Given that each party has enjoyed partial success in this matter I make no order as to Costs.
Nicholas Smith
Hearing Officer
Delegate of the Registrar of Trade Marks
10 August 2021
Annexure A – Opponent’s Trade Marks
Number
Mark
Status
Goods & Services classes
80319
GYPROCK
Registered
19
341890
GYPCOVE
Registered
19
342714
GYPROCK
Registered
37
520863
GYPROCK FYRCHEK
Registered
19
528803
GYPROCK AQUACHEK
Registered
19
571040
GYPBOARD
Registered
19
759983
Registered
8, 19, 37
852915
GYPROCK TRADE CENTRE
Registered
35, 37
877436
CSR GYPROCK IMPACTCHEK
Registered
19
890114
Gyprock SecurityWall
Registered
6
890188
GYPROCK SILENCER
Registered
6
924701
GYPROCK SYMPHONY
Registered
19
943430
GYPROCK JAZZ
Registered
19
943431
GYPROCK ALTO
Registered
19
943432
GYPROCK CONCERTO
Registered
19
977998
Gyprock Superpanel
Registered
19
977999
Gyprock Supapanel
Registered
19
990103
Gyprock Easy-Flow
Registered
19
997258
Gyprock Classic
Registered
19
997259
Gyprock Tempo
Registered
19
1003899
The Gyprock Red Book
Registered
16
1038382
Registered
19
1379374
GYPROCK EXP
Registered
8, 17, 19, 35, 37
1485290
Gyprock Aria
Registered
19
1529270
Gyprock Rapid Repair Kit
Registered
19
1621586
GYPROC
Registered
19
1641491
GYPROCK DUO
Registered
19
1706734
Gyprock Plus
Registered
19
Key Legal Topics
Areas of Law
-
Intellectual Property
-
Administrative Law
Legal Concepts
-
Standing
-
Procedural Fairness
-
Judicial Review
-
Statutory Construction
0
26
0