Re: Opposition by Mirage Granito Ceramico SpA to registration of trade mark application number 1851067 (class 19) - CON-TACT in the name of Kittrich Corporation

[2020] ATMO 105

TRADE MARKS ACT 1995

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

Re:Opposition by Mirage Granito Ceramico SpA to registration of trade mark application number 1851067 (class 19) – CON-TACT - in the name of Kittrich Corporation

Delegate:

Jock McDonagh

Decision on the Written Record

Decision:

2020 ATMO 105

Trade Marks Act 1995 (Cth) - Section 52 opposition: ss 44 and 59 considered – grounds not established – trade mark to proceed to registration

Background

1.  This decision concerns an opposition brought by Mirage Granito Ceramico SpA (‘Opponent’) pursuant to s 52 of the Trade Marks Act 1995 (Cth) (‘Act’) to the registration of the trade mark which is the subject of the application detailed below in the name of Kittrich Corporation (‘Applicant’): 

Application Number:

1851067

Filing Date:

9 June 2017

Goods:

Class 19: Synthetic non-metal tiles for use on indoor or outdoor floors

(‘Applicant’s Goods’)

Trade Mark:

CON-TACT (‘Trade Mark’)

2.  Following the advertisement on 2 November 2017 in the Australian Official Journal of Trade Marks of the application’s acceptance for possible registration, the Opponent filed a Notice of Intention to Oppose on 2 January 2018.  The Opponent then filed a Statement of Grounds and Particulars (‘SGP’) on 2 February 2018. The SGP raised grounds of opposition under ss 44 and 59 of the Act. The Applicant filed a Notice of Intention to Defend on 13 March 2018.

3.  Neither party filed any evidence or submissions in respect of the opposition.

4. I am a delegate of the Registrar of Trade Marks and I am to decide the opposition as required by s 55 of the Act which provides that (unless the proceedings are discontinued, dismissed, or have lapsed under s 54A) the Registrar must, at the end of the opposition proceedings, decide:

(a)to refuse to register the trade mark; or

(b)to register the trade mark (with or without conditions or limitations) in respect of the goods and/or services then specified in the application;

having regard to the extent (if any) to which any ground on which the application was opposed has been established.  In doing so I take account of the written record comprised of the materials mentioned in the preceding paragraphs, which in this case consists of the SGP.

The Parties

5.  As neither party has provided any evidence, I cannot provide any information about the parties other than what is set out on the Register and the documents filed with IP Australia, namely that the Applicant is a company based in the United States of America and the Opponent is a company based in Italy. 

Grounds of Opposition, Onus and Standard of Proof

6. As indicated above in the SGP the Opponent nominated grounds of opposition under ss 44 and 59 of the Act. To successfully oppose the application the Opponent needs to establish at least one of those grounds.

7.  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 9 June 2017 (‘relevant date’), being the filing date and also the priority date of the application in Australia.[3]

[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) s 29(1).

8. With the exception of s 44 (discussed below), as the Opponent has filed no evidence and provided no submissions I have no hesitation deciding that the Opponent has not discharged the onus on it and has consequently not established the other ground of opposition nominated in the SGP, namely s 59 of the Act. The mere filing of the Notice of Opposition (which is done by filing a Notice of Intention to Oppose and a SGP[4]), without any supporting evidence or submissions does not serve to place the onus on the Applicant to defend its application.[5]

[4] Trade Marks Regulations 1995 (Cth) reg 5.5.

[5] Medley Distilling Co v Croakers Gully Australia (2000) 53 IPR 430, 433.

9.  In Self Care Corporation Pty Ltd v Johnson & Johnson[6] the Registrar’s delegate Mr Kirov observed:

[…] to the extent that the Opponent believes that merely nominating the s 59 ground in its Notice, without any evidence to support the allegation, is sufficient to shift the onus to the Applicant to respond, its reliance on s 59 is misconceived in any event. This issue was addressed in some detail in two decisions issued by the Federal Court in 2010, firstly by the Full Court (Keane CJ, Stone and Jagot JJ) in Food Channel Network Pty Ltd v Television Food Network GP (“Food Channel”), followed by Dodds-Streeton J in Suyen Corporation v Americana International Limited (“Suyen”).

It has long been accepted that the very filing of an application to register a trade mark is prima facie evidence of an applicant’s intention to use that mark for the goods or services of the application. As Dodds-Streeton J put it in Suyen at [193], “an application for registration of a trade mark has given rise to a presumption that the requisite intention to use the mark exists”. Noting that “a number of recent authorities have...endorsed its continuing application”, (“most significantly” Food Channel), her Honour continued at [197]:

The presumption was first recognised under legislation which cast on the applicant the burden of establishing entitlement to registrability. Although the applicant no longer bears that burden, nothing in the language of s 27 or any other relevant provision of the present Act suggests a legislative intention to depart from the long-established presumption of intention to use recognised under previous legislation. To the contrary, as possession of the requisite intention is a pre-condition of entitlement to apply, it may readily be presumed from the fact of application.

[6] [2015] ATMO 27, at [56]-[57] (citations omitted)

1. The ground under section 59 of the Act is not established.

Discussion

Section 44

1. The relevant provisions of the Act with respect to the ground of opposition pursuant to s 44 of the Act 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).

1. …

2. 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.

3. 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.

1. To successfully oppose the application pursuant to s 44 of the Act the Opponent must establish the requirements of s 44(1), i.e. that the Opponent’s Trade Mark, being registered by another person:

   ·     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 Applicant’s Goods (‘the third requirement’).

2. In the SGP, the Opponent cited the trade mark listed below (‘Opponent’s Trade Mark’) in particulars for the s 44 ground.

Mark	Priority Date	Opponent’s Goods
1639276	3 April 20014	Class 19: Ceramic materials, ceramic tiles; tiles of porcelain stoneware; ceramic slabs; porcelain stoneware slabs; building materials (non-metallic); non-metallic tiles; wall tiles not of metal; wall tiles for bathrooms, not of metal; wall tiles for kitchens, not of metal; tiles of porcelain stoneware, assembled and not assembled; all the aforesaid goods also with adhesive fibreglass mesh

1. Both the Opponent’s Trade Mark and the Trade Mark are registered or sought to be registered in respect of Class 19 non-metallic tiles.  The Opponent’s Trade Mark has a priority date that is earlier than the priority date of the Trade Mark.  The first and third requirements are prima facie satisfied. 

Substantially identical or deceptively similar

1. I will now consider whether the Trade Mark is substantially identical to the Opponent’s Trade Mark.  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.[7]

   [7] (1963) 109 CLR 407, [12].

2. The Trade Mark and the Opponent’s Trade Mark are set out below:

CON-TACT                  

1. The trade marks are dissimilar, with the Opponent’s Trade Mark comprising three words with device elements, while the Trade Mark is a single hyphenated word with only the prefix ‘CON’ and suffix ‘ACT’ being shared with the Opponent’s Trade Mark. The differences between the respective trade marks are sufficient for me to conclude that the respective trade marks are not substantially identical.  I move then to consider whether the Trade Mark and Opponent’s Trade Mark are deceptively similar.

2. 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].[8]

   [8] Ibid [13].

3. 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[9] at [49]; Australian Woollen Mills[10] at 658.

   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[11] 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.

   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[12] at 594 – 595.

   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].[13]

   [9] Registrar of Trade Marks v Woolworths Ltd [1999] FCAFC 1020.

   [10] Australian Woollen Mills Ltd v FS Walton & Co Ltd [1937] HCA 51; (1937) 58 CLR 641.

   [11] Crazy Ron’s Communications Pty Ltd v Mobileworld Pty Ltd [2004] FCAFC 196; (2004) 209 ALR 1.

   [12] Southern Cross Refrigerating Co v Toowoomba Foundry Pty Ltd (1954) 91 CLR 592.

   [13] [2012] FCA 1022, [38]-[46].

4. Following the principles summarised above, I find that the trade marks are not deceptively similar.  The impression of the respective trade marks, whether visually, aurally or conceptually, is very different.  Although the word CONTRACT is the dominant feature of the Opponent’s Trade Mark, the mark taken as a whole, considering its globe device element for the letter ‘O’ and the additional words ‘BY MIRAGE’ imparts a different context.

5. Further, there is a significant aural difference between CONTRACT and CON-TACT, and the words CONTRACT and CONTACT are known words with different meanings with which consumers would be familiar.

6. It would be very unlikely that, even allowing for imperfect recollection, 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 Mark.

7. I find that the Opponent has failed to establish the ground of opposition under s 44 of the Act.

Decision

1. The Opponent has failed to establish any of the grounds of opposition it raised.  Trade mark application no. 1851067 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 that time, I direct that registration shall not occur until either the appeal is withdrawn or discontinued.  Otherwise the disposition of the application should be in accordance with the Court’s order or direction.

Costs

1. The Applicant sought its costs. As the successful party, the Applicant is entitled to its costs and I accordingly award costs against the Opponent in accordance with Schedule 8 of the Trade Mark Regulations 1995 (Cth).

Jock McDonagh

Hearing Officer

Oppositions and Hearings

Trade Marks and Designs

16 June 2020