Re: Opposition by Forbo Financial Services AG to registration of trade mark applications numbers 1944409 (1, 2) - EUROPOL and 1944411 (1, 2) – EUROPOL and device - in the name of Europol Pty Ltd

[2021] ATMO 6

TRADE MARKS ACT 1995

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

Re:Opposition by Forbo Financial Services AG to registration of trade mark applications numbers 1944409 (1, 2) - EUROPOL and 1944411 (1, 2) – EUROPOL and device - in the name of Europol Pty Ltd

Delegate:

Louise Tuohy

Representation:

Opponent: Not represented at hearing

Applicant: HWL Ebsworth Lawyers

Decision:

2021 ATMO 6

Trade Marks Act 1995 (Cth) – opposition under section 52 – grounds under ss 42(b), 58 and 60 – no grounds established, Trade Marks to proceed to registration.

Background

1. This is an opposition by Forbo Financial Services AG (‘the Opponent’) under s 52 of the Trade Marks Act 1995 (Cth) (‘the Act’) to the registration of the following trade mark applications (collectively ‘the Trade Marks’) in the name of Europol Pty Ltd (‘the Applicant’):

   Application Number:   1944409

   Trade Mark:  EUROPOL

   Filing Date:  27 July 2018

   Specification:  Class 1: Polyurethane coatings (other than paints); polyurethane dust sealers; polyurethane granulate; polyurethanes; liquid coatings (chemical); coating agents (chemicals), other than paint; coating materials made from synthetic resins; chemical preparations for use in the manufacture of surface coatings; coatings for waterproofing and weatherproofing (chemicals); coatings to protect concrete from water (other than building materials, paints or oils)

   Class 2: Polyurethane coatings (paints); polyurethane finishes (paints); acrylic coatings (paints); anti-corrosive coatings (paints); bactericidal coatings; coating preparations for protection against rust and wear; coatings for waterproofing and weatherproofing (except chemicals); epoxy coatings; spray coatings (anti corrosives, lacquers, paints, varnishes); wood coatings (paints); coatings for the finishing of concrete; coatings to protect concrete from water (paints or oils); coating compositions for application to concrete (paints or oils); coating compositions for preserving concrete (paints or oils) (Applicant’s goods’)

   Application Number:   1944411

   Trade Mark:              

   Filing Date:  27 July 2018

Specification:  Applicants goods

1. The trade mark applications were examined as required under s 31 of the Act. Acceptance of the Trade Marks for possible registration were published in the Australian Journal of Trade Marks on 27 December 2018 for trade mark 1944409 and on 28 December 2018 for trade mark 1944411.

2. The Opponent filed Notices of Intention to Oppose the registration of the Trade Marks on 27 February 2019, followed by its Statements of Grounds and Particulars (‘the SGPs’) on 15 March 2019.

3. The Applicant filed Notices of Intention to Defend the opposition of the Trade Marks on 22 May 2019.

4. Thereafter the parties each filed evidence in accordance with the Trade Mark Regulations 1995 (‘the Regulations’) and were informed of their right to be heard; the Applicant requested an oral hearing.

5. The matter came before me, a delegate of the Register of Trade Marks, in Canberra on 16 November 2020. The Opponent did not attend the hearing and did not file any written submissions. The Applicant did not attend the hearing and relied on written submissions (‘the Applicant’s written submissions’) prepared by Nicholas Pullen and Scott La Rocca of HWL Ebsworth Lawyers.

Grounds of Opposition, Onus and Relevant Date

1. In the SGPs the Opponent nominated grounds of opposition under ss 42(b), 58 and 60 of the Act.

2. The Opponent bears the onus of establishing at least one of the grounds of opposition.[1] The standard of proof is the ordinary civil standard of the balance of probabilities.[2]

   [1] Food Channel Network Pty Ltd v Television Food Network GP [2010] FCAFC 58, [32].

   [2] Telstra Corporation Ltd v Phone Directories Co Pty Ltd [2015] FCAFC 156, [132].

3. The date at which the rights of the parties are to be determined is 27 July 2018 (‘the Relevant Date’) being both the filing and priority date of the Trade Marks.

Evidence

1. The Opponent filed the following declaration as evidence in support of its opposition:

   • Declaration of David Blakemore, Australian National Marketing Manager of Forbo Floorcoverings Pty Ltd, made on 28 August 2019 with Exhibits DB-1 to DB-14 (‘Blakemore’).

1. The Applicant filed the following declaration as evidence in answer:

   • Declaration of Anthony Boccia, Sole Director and owner of the Applicant, made on 25 November 2019 with Exhibits AB-1 to AB-8 (‘Boccia’).

1. The Opponent did not file any evidence in reply.

The Opponent

1. The Blakemore declaration provides the following information about the Opponent:

   • the Opponent is a Swiss company that was formed in 1928 and is a leading global producer of floor coverings, building and construction adhesives, and power transmission and conveyor belt solutions;[3] and

   ·     since 1961 the Opponent has been supplying the Australian market with adhesives, flooring products, primers, mortars, levelling compounds and associated flooring tools under the trade mark EUROCOL.[4]

   [3] Blakemore 8.

   [4] Blakemore 10.

2. Exhibit DB-7 provides copies of pages from the website They have been sourced from a web archiving service and are dated from April 2015 to September 2017. The webpages appear to be targeted to the Australian market and show use of the EUROCOL trade mark on adhesives, primers and cleaners.

3. Exhibit DB-9 is extracts from a You-Tube search, of videos in the name of Forbo Eurocol. The videos listed are instructional videos on how to use products bearing the EUROCOL trade mark dating back 8 years (from 28 August 2019).

4. Exhibit DB-4 is a copy of a product brochure produced by Forbo Eurocol bv, created for distribution in the international market. The brochure is dated November 2011 and shows use of the EUROCOL trade mark on primers, surface damp proof membranes, repair mortars, levelling compounds and floor covering adhesives.

5. Exhibit DB-5 is a copy of a brochure produced by Forbo Floorcoverings Pty Ltd and distributed to its Australian customers. The brochure is dated 6 March 2008 and shows use of the EUROCOL trade mark in relation to floor adhesives.

6. Exhibit DB-11 are copies of Price Lists produced by Forbo Floorcoverings Pty Ltd for the years 2007, 2013, 2014, 2015, 2016, 2017 and 2018, listing adhesives, primers and tape products bearing the EUROCOL trade mark.

7. Exhibit DB-10 provides a sample of invoices issued by Forbo Floorcoverings Pty Ltd to customers for goods sold under the EUROCOL trade mark dating from December 2014 to April 2016.

8. Confidential Exhibit DB-12 details sales revenue derived in Australia for goods sold under the EUROCOL trade mark for the financial years 2014 to 2019, and confidential Exhibit DB-14 provides approximate advertising expenditure in Australia for marketing of products bearing the EUROCOL trade mark for the financial years 2014 to 2019.

9. Exhibit DB-1 is a copy of an article entitled 90 years and beyond sourced from the website The article outlines the history of Forbo dating back to 1928.

10. Exhibit DB-2 is a copy of a copy of an article entitled Forbo Eurocol Netherland B.V. sourced from the website The article outlines the history of the EUROCOL brand.

11. Exhibit DB-8 provides a listing of the Opponent’s overseas registrations for the EUROCOL trade mark in relation to goods in classes 1, 3, 17 and 19.

The Applicant

1. The Boccia declaration provides the following information about the Applicant:

   • the declarant Anthony Boccia is the sole director and owner of Europol Pty Ltd;[5]
   • Anthony Boccia is also a director and part owner of Floor Sanding Supplies Pty Ltd (‘FSS’) and in 2018 in consultation with the other directors of FSS, he decided to create a new polyurethane-based coating product and supply this new product to FSS under the trade mark EUROPOL;[6] and

• the new products were publicly launched in February 2019 and the EUROPOL trade mark is applied to the packaging of polyurethane-based coating for timber, flooring, parquetry and cork tiles.[7]

Consideration and Reasoning

[5] Boccia 1.

[6] Boccia 8-1.

[7] Blakemore 13.

Section 58

1. Section 58 of the Act provides:

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.

1. It is well established that in the absence of fraud, the owner of a trade mark is taken to be the first person to use it or another trade mark substantially identical to it,[8] in the course of trade in Australia in relation to the designated goods or services[9] or in relation to goods or services considered to be the ‘same kind of thing’ as the designated goods or services.[10]

   [8] Carnival Cruise Lines Inc. v Sitmar Cruises Limited [1994] FCA 68; (1994) 120 ALR, [62].

   [9] Seven Up Co v OT Ltd [1947] HCA 59.

   [10] Re Hicks’ Trade Mark (1897) 22 VLR 636.

2. In the SGPs the Opponent particularises the s 58 ground of opposition as follows:

   The Opponent is not the owner of the Opposed Trade Marks.

   The Opponent has prior use of a substantially identical trade mark EUROCOL in respect of adhesives, levelling compounds, mortars, sealants, grouts and damp proof membranes.

3. In assessing whether trade marks are substantially identical the ‘side by side’ test is applied. In Shell Company of Australia v Esso Standard Oil (Australia) Ltd, Windeyer J explained the test:

   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 feature of the registered mark and the total impression of resemblance or dissimilarity that emerges from the comparison. [11]

   [11] The Shell Company Australia Ltd v Esso Standard Oil (Australia) Limited (1961) 109 CLR 407, [414].

4. For the purposes of this comparison I have reproduced the trade marks side by side:

The Trade Marks	The EUROCOL trade mark
EUROPOL	EUROCOL

1. During a side by side comparison, I note there are clear differences between the trade marks. The trade marks share the prefix EURO. However, the Trade Marks consists of the suffix POL, which is pronounced pɒl, and refers to polyurethane, while the EUROCOL trade mark consists of suffix COL, which is pronounced kɒl, and has no discernable meaning in relation to the goods. Likewise, the letter P in the Trade Marks is a vertical line and a semi circle and visually dissimilar to the letter C in the EUROCOL trade mark is formed by one continuous curve. Accordingly, a total impression of similarity or resemblance does not emerge from a comparison of the trade marks. I find that the trade marks are not substantially identical. 

2. The Opponent has not established the ground of opposition under s 58 of the Act.

Section 60

1. Section 60 of the Act provides:

2. 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.

1. In the SGPs the Opponent particularises the s 60 ground of opposition as follows:

   Before the priority date of the Opposed Trade Mark the Opponent has used its trade mark EUROCOL in Australia in respect of adhesives, levelling compounds, mortars, sealants, grouts and damp proof membranes. It has also used the trade mark EUROCOL in respect of such goods in a number of countries around the world.

   Before the priority date the Opposed Trade Marks, being 27 July 2018, the Opponent had acquired a reputation in Australian, and other countries of its trade mark EUROCOL.

   As a result of the use and recognition of the Opponent’s trade mark, the Opponent has acquired a reputation in Australia, and other countries before the priority date of the Opposed Trade Marks.

1. To establish a ground of opposition under s 60 of the Act the Opponent must demonstrate that the trade mark upon which it relies had a reputation in Australia at the Relevant Date and because of that reputation the use of the Trade Marks would likely deceive or cause confusion.

2. In McCormick & Co Inc v McCormick, Kenny J considered what is intended by the word ‘reputation’ as used in s 60. Her Honour had 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’[12] and quoted with approval the following words of Lockhart J in Re ConAgra Inc v McCain Foods (Aust) Pty Ltd:

   [12] McCormick & Company Inc v McCormick [2000] FCA 1335, [81].

   [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…[13]

   [13] Re ConAgra Inc v McCain Foods (Aust) Pty Ltd [1992] FCA 159, [118].

3. Justice Kenny 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 sale or turnover of goods sold under the 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 sale, 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 sponsorship, 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 sale 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 association of the trade marks with the goods or services themselves. [14]

   [14] Hugo Boss AG v Jackson International Trading Co Kurt D Bruhl Gesellschaft MbH & Co KG [1999] ATMOS 23; (1999) 47 IPS 423, [426].

4. What constitutes a significant or substantial number of persons in the relevant market must be considered. Heerey J in Le Cordon Blue BV v Cordon Blue International Ltd states (albeit in relation to paragraph 28(a) of the now superseded Trade Marks Act 1995) provided 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 …[15]

   [15] Le Cordon Blue BV v Cordon Blue International Ltd [2000] FCA 1587; (2000) 50 IPR 1.

5. The Opponent submits it has been supplying the Australian market with adhesives, flooring products, primers, mortars, levelling compounds and associated flooring tools under the EUROCOL trade mark since 1961.  

6. In my assessment of the evidence, the promotion of the EUROCOL trade mark in Australia is limited to the international website, You Tube account and the infrequent production and distribution of brochures to customers. Notably, there is no evidence of Australian traffic to the website or You Tube account, or how many brochures were distributed. Moreover, marked as confidential, the advertising expenditure for the years 2014 to 2019 have been provided which I would describe as very modest.

7. Marked as confidential, the sales revenue generated under the EUROCOL trade mark in Australia for the years 2014 to 2018 have been provided which I would describe as reasonable, however there is no indication of market size.

8. In evaluating consumer awareness of the EUROCOL trade mark, I note that the relevant market is specialised, given the Opponent’s goods are used primarily in flooring installation, and would be tradespersons or do it yourself customers. However, in a market where it is not easy to sway tradespersons from the brand they have remained loyal to for many years, there is no evidence (for example, media articles, consumers blogs, reviews) which would assist in establishing reputation in Australia.

9. The Opponent also relies on the use and recognition of the EUROCOL trade mark in other jurisdictions. In support of this claim Exhibit DB-1 in Blakemore states that Forbo Group operates on five continents and Exhibit DB-2 in Blakemore states that Forbo Eurocol is a market leader in the Netherlands. However, there is no evidence of sales, advertising or promotion of the EUROCOL trade mark in the Netherlands, nor is there any evidence of consumer awareness of the EUROCOL trade mark in other jurisdictions which would assist in establishing a spill-over reputation in Australia.

10. Based on this information, I find that the evidence before me does not demonstrate the ‘recognition’ and ‘esteem’ required to show a significant or substantial reputation in the Opponent’s EUROCOL trade mark to the relevant Australian public.

11. The Opponent has not established the ground of opposition under s 60 of the Act.

Section 42

1. Subparagraph 42(b) 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. In the SGPs the Opponent particularises the s 42(b) ground of opposition as follows:

   Use would be contrary to the Competition and Consumer Act 2010 (Cth); and

   Use would be contrary to the tort of passing off.

1. As with all the grounds of opposition, the onus of proof rests with the Opponent and in that regard the case law on s 42(b) requires it to show that use of the Trade Marks would be, rather than could or might be contrary to law.[16]

   [16] Advantage Rent a Car Inc v Advantage Car Rental Pty Ltd [2001] FCA 683.

2. Section 18 of the Australian Consumer Law[17] (‘ACL’) is concerned with misleading or deceptive conduct. Case law relevant to the ACL has made it plain that s 18 imposes a more stringent test than that for deception or confusion under s 60.[18] In this matter, I have found that the Opponent has failed to establish a ground of opposition under s 60. Consequently, I find that the Opponent has also failed to establish that the Applicant’s use of any of the Trade Marks would be contrary to s 18 of the ACL.

   [17] Schedule 2 to the Competition and Consumer Act 2010 (Cth).

   [18] Parkdale Custom Built Furniture Pty Ltd v Puxu Pty Ltd [1982] HCA 44; 91982) 149 CLR 191, [198]. This case was decided under the superseded Trade Practices Act 1974 and s 52 of the Act and is necessarily the equivalent to provision s 18 of the ACL.

3. In relation to s 29 of the ACL it has been held that where a trade mark does not offend s 18 of the ACL, neither will it offend s 29 of the ACL[19] nor will it constitutepassing off.[20]

   [19] In Pacific Publications Pty Ltd v IPC Media Pty Ltd [2003] FCA 104, Beaumont J considered – in connection with the superseded Trade Practices Act 1974 (‘TPA’) that ‘the Court’s conclusion on section 52 would necessarily carry with it a conclusion on section 53 (c) and (d). Sections 53(c) and 53(d) of the TPA are the equivalent provisions to ss 29(1)(g) and 29(1)(h) of the ACL.

   [20] Re Equity Access Pty Ltd v Westpac Banking Corporation [1989] FCA 506 [39]; (1989) 16 IPR 431.

1. The Opponent has not established the ground of opposition under s 42(b) of the Act.

Decision

1. Section 55(1) of the Act 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.

1. The Opponent has failed to establish any of the grounds of opposition it nominated in the SGPs. Trade Marks 1944409 and 1944411 may proceed to registration not less than one month from the date of this decision. If the Registrar has been served with a notice of appeal before this time, I direct that registration shall not occur until either the appeal is withdrawn or discontinued. Otherwise the disposition of the application should be in accordance with the Courts order or direction.

Costs

1. Both parties sought their costs. Costs may follow the event.

2. In respect of trade mark 1944409 I award costs against the Opponent as per Schedule 8 of the Regulations.

3. In respect of trade mark 1944411 I award costs against the Opponent in the same manner as indicated in Hume Industries (Malaysia) Berhard v James Hardie & Coy Pty Ltd [2001] ATMO 78.

Louise Tuohy

Hearing Officer

Oppositions and Hearings

Trade Marks and Designs

22 January 2021