Re: Opposition by Promaz Automotive Pty Ltd to registration of trade mark application number 1869033 (classes 7 and 12) - Billet Pro (Word) in the name of Billet Inco Pty Ltd
[2020] ATMO 152
•8 September 2020
TRADE MARKS ACT 1995
DECISION OF A DELEGATE OF THE REGISTRAR OF TRADE MARKS WITH REASONS
Re:Opposition by Promaz Automotive Pty Ltd to registration of trade mark application number 1869033 (classes 7 and 12) – BILLET PRO (Word) - in the name of Billet Inco Pty Ltd.
Delegate: Kate Doherty Representation: Opponent: Self-represented
Applicant: Spruson & FergusonDecision: 2020 ATMO 152
Trade Marks Act 1995 (Cth) – opposition pursuant to section 52 – Grounds of opposition pursued ss 43, 58, 59, 60 and 62A; None established; trade mark will proceed to registration.Background
1. This is an opposition decision on the written record. I decided the matter as Delegate of the Registrar of Trade Marks for the following trade mark pursuant to the Trade Marks Act 1995 (‘the Act’):
Trade Mark No: 1869033
Trade Mark: BILLET PRO (‘Trade Mark’)
Filing date: 27 August 2017
Applicant: Billet Inco Pty Ltd
Specification of Goods: (at time of filing):
Class 7: Aeroplane engines; Ball bearings for engines; Combustion engines for aircraft; Connecting links (parts of machines, engines or motors); Connecting rods (parts of motors and engines); Connecting rods for machines, motors and engines; Connecting rods for vehicles (parts of motors and engines); Crankcases for land vehicles engines; Crankcases for machines, motors and engines; Cylinder heads for engines; Cylinders for motors and engines; Distributor manifolds being parts of machines, engines or motors; Drive belts for engines of vehicles; Engine housings; Engines for use in powering aircraft; Engines, other than for land vehicles; Exhaust apparatus for internal combustion engines; Exhaust manifold for engines; Exhausts for motors and engines; Filter housings being parts of engines; Filters (parts of machines or engines); Filters being parts of engines; Joints (parts of engines); Liquid filtering apparatus (parts of engines or machines); Manifolds (parts of engines); Oil filtering apparatus for engines; Oil filters for engine lubrication systems; Oil filters for engines; Parts of engines; Pistons (parts of machines or engines); Pistons for engines; Pistons for internal combustion engines; Pistons for land vehicle engines; Pistons for vehicle engines; Spindle shafts (parts of engines); V-belts pulleys (parts of engines)
Class 12: Engines for automobiles; Engines for land vehicles; Engines for motor land vehicles; Housing covers for land vehicle engines; Internal combustion engines for land vehicles; Motor land vehicle engines
2. The Trade Mark was advertised accepted on 15 February 2018. A Notice of Intention to Oppose was filed on 9 April 2018 by Promaz Automotive l Pty Ltd (‘The Opponent’), the Notice was amended on 30 June 2018. On 20 July 2018, the Applicant filed a Notice of Intention to Defend the Opposition. The Statement of Grounds and Particulars (‘SGP’) was deemed adequate on 19 June 2018, and nominates the grounds of opposition ss 43, 58, 59, 60 and 62A.
Evidence
3. Neither party filed evidence in the proceedings. During the process of amending procedural documents, the Opponent forwarded a copy of an ASIC registration as detailed below. On the basis that this is a record of a Commonwealth Register, I am prepared to take notice of the document despite the fact it was not filed as an annexure to a declaration.[1]
[1] Trade Mark Regulations 1995 (Commonwealth), r 21.15(4); Evidence Act 1995 (Commonwealth), s 143.
4. Summary of material received from the parties:
Declarant
Party
Evidence Stage
Date
Decision Reference
N/a
Opponent
EIS
22 May 2018
ASIC letter dated 2 June 2017
5. There is limited material before me which was produced in response to the opposition phase of the Trade Mark, that material was served to the Applicant. Pursuant to the Trade Marks Regulations 1995 (Commonwealth) (‘the Regulations’), r 21.15(4) I will therefore consider the response material which was served, including letters from the legal representatives. However, I note that the probative value of claims that are not formally declared is negligible.
6. The Opponent relies on the following trade marks (‘Opponent’s Marks’):
Trade Mark No: 1866368
Trade Mark: BILLETPRO
Filing date: 29 August 2017
Owner: Promaz Automotive Pty Ltd
Specification of Goods: (at time of filing): Class 40 Machining; Metal machining
Trade Mark No: 1866367
Trade Mark:
Words: BILLETPRO
Filing date: 29 August 2017
Owner: Promaz Automotive Pty Ltd
Specification of Goods: (at time of filing): Class 40 Machining; Metal machining
7. Neither party provided written submissions. Neither party requested an oral hearing.
Onus and Standard of Proof
8. The relevant standard of proof is the civil standard, or ‘on the balance of probabilities’.0F0F0F[2]
[2] Pfizer Products Inc v Karam (2006) FCA 1663 per Gyles J at [6] to [26].
9. The Opponent bears the onus of proof in an Opposition Hearing.1F1F1F[3] The evidential burden is reversed once sufficient evidence is filed in support of the s 58 ground of opposition, but only for time prior to the filing date.
[3] Food Channel Network Pty Ltd v Television Food Network GP (2010) FCAFC 58 [32].
10. The application will succeed if a nominated ground is established. The rights of the parties are determined at the date of filing the application, the relevant date is 27 August 2018. For the s 58 ground use before this date will be considered.2F2F2F[4] For the purposes of s 60 the relevant date is the priority date which is 27 August 2018.
Grounds of Opposition
Section 58 – Applicant not owner of trade mark
11. 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.
[4] Trade Marks Act 1995 (Commonwealth), s7.
12. Note: For applicant see section 6.4F26F[5]
[5] Section 6 Definitions: applicant in relation to an application, means the person in whose name the application is for the time being proceeding.
12. To establish a ground of opposition pursuant to s 58, the Opponent must establish:
· the respective trade marks of the Applicant and Opponent are either identical or substantially identical27F[6]
· the services for which the trade mark is used are the same kind of thing as the Applicant’s goods28F[7]
· the Opponent has the earlier claim to ownership based on authorship29F[8] and use of their trade mark prior to both the filing of the application and any actual use of the Trade Mark by the Applicant.30F[9]
[6] Carnival Cruise Lines Inc. v Sitmar Cruises Ltd (1994) 120 ALR 495; 31 IPR 375.
[7] Re Hicks’ Trade Mark (1897) 22 VLR 636, 3 ALR 75.
[8] Authorship in that sense involves the origination or first adoption of the word as and for a trade mark Aston v Harlee Manufacturing Company [1960] HCA 47; (1960) 103 CLR 391 [399].
[9] Settef SpA v Riv-Oland Marble Co (Vic) Pty Ltd 10 IPR 402 [413].
13. The test for substantially identical is to compare the trade marks:31F[10]
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.
[10] The Shell Company of Australia Limited v Esso Standard Oil (Australia) Limited (1961) 109 CLR 407 per Windeyer J [414].
14. The respective marks to be compared are as follows:
The Trade Mark
Opponent’s Marks
BILLET PRO
BILLETPRO
The Trade Mark has the plain term ‘BILLET PRO’. I find the essential features are the combination of the two words. One mark has the words combined into one word, and the other mark has the same two words in sequence. The stylised mark belonging to the Opponent is not heavily stylised. I am satisfied that the Trade Mark and the Opponent’s trade marks are substantially identical.
15. The Applicant’s claim in classes 7 and 12 includes a number of engine parts and engines while the Opponent’s marks specify a services class and are described as ‘Machining; metal machining’.[11] I am satisfied the marks as applied to goods in one case and in relation to services in other are not ‘the same kind of thing’.[12]
[11] The SGP claims the goods are the same as detailed at [17] below.
[12] Howe Laboratories Inc v Daemar (1936) IPR 638; Hoyts Corporation Pty Ltd v Hoyt Food Manufacturing Industries Pty Ltd (2003) 61 IPR 334.
16. I will now consider whether the Opponent has the earlier claim to ownership based on authorship and use of their trade mark prior to the filing of the application or any actual use of the Trade Mark by the Applicant. 33F[13]
[13] Authorship in that sense involves the origination or first adoption of the word as and for a trade mark Aston v Harlee Manufacturing Company [1960] HCA 47; (1960) 103 CLR 391 [399].
Prior use of the Relevant Marks before filing.
17. The Trade Mark must be used as a trade mark with actual dealing in the goods to establish local use.12F34F[14] The Opponent states in the SGP that their marks were used prior to the filing date. This use would predate the priority date of the Trade Mark application. This use would be use of a Trade Mark pursuant to s 7, but I am unable to find a bare assertion in the SGP determinative of ownership without further evidence. Although I consider that the rule in Jones v Dunkell means that the Applicant may not have been able to produce evidence which would have refuted this claim, I do not find it is necessary to reach this rule because the Opponent has not discharged the burden of proof required to displace the presumption of registrability.
[14] Moorgate Tobacco Co. Limited v Phillip Morris Limited and Another (1984) 156 CLR 415 [23].
18. There is no evidence of the Applicant using the mark prior to the filing day.
19. In the absence of any evidence whatsoever, I am required to rely on the filing dates as recorded on the Register. I am satisfied that the Applicant is the first user of the Trade Mark in Australia. and I find that the s 58 ground of opposition has not been established.
Section 43 – Trade mark likely to deceive or cause confusion
20. Section 43 of the Act provides:
43 Trade mark likely to deceive or cause confusion
An application for the registration of a trade mark in respect of particular goods or services must be rejected if, because of some connotation that the trade mark or a sign contained in the trade mark has, the use of the trade mark in relation to those goods or services would be likely to deceive or cause confusion.
21. The Opponent has particularised this ground of opposition in the SGP as follows [sic]:
Both Ourselves Billetpro and Billet inco manufacture the same product, if for some reason they are to Have The Billet pro name it will deceive the Purchaser to what company is providing the product
22. For this ground to be established, the manner or extent of use, reputation, and any similarity to other marks are not relevant. Only the inherent qualities of the Trade Mark are relevant here. The connotation must relate to a geographic location or association that the mark does not have, for example endorsement by a sportsperson or well-known actor, the ‘connotation’ must exist before s 43 will apply.[15] Similarity, even where the Trade Marks and the Opponent’s Marks are found to be substantially identical is not sufficient to prove a connotation which is relevant for this ground of opposition.[16]
[15] Scotch Whisky Association v De Witt (2007) FCA 1649 [390].
[16] See finding of substantially identical above at [15].
23. Any claim in relation to passing off or misleading and deceptive conduct, would only be relevant pursuant to the s 42(b) ground of opposition which has not been nominated in this application.
24. Although the Opponent’s Mark and the Trade Mark are almost identical, the applications nominate different classes of goods and services. A bare assertion made in the SGP that the ‘products’ are the same in these circumstances without supporting evidence does not enable an assessment for risk of confusion. In the absence of evidence the presumption of registrability requires that discretion is exercised in favour of the Trade Mark being registered.
25. I find that the s 43 ground of opposition has not been established.
Section 62A – Application made in bad faith
26. Section 62A of the Act provides:
62A Application made in bad faith
The registration of a trade mark may be opposed on the ground that the application was made in bad faith.
27. This ground is not a catch-all provision for any unscrupulous behavior which may have occurred between the parties. Only bad faith, fraud, misconduct or deception in relation to the Trade Mark application will be relevant.
28. Section 62A is discussed in Fry Consulting Pty Ltd v Sports Warehouse Inc (No 2) per Kenny J:3F18F39F[17]
By September 2004, Mr Fry, a director of Fry Consulting, was well aware of Sports Warehouse’s online retail store and the fact that Sports Warehouse sold goods to Australia through that website. His visits to that online retail store led him to cause Fry Consulting, in September 2004, to register the business name “Tennis Warehouse”; to register the domain name and to set up an online tennis retail store at that domain name in competition with Sports Warehouse. Mr Fry adopted the name knowing that it would cause confusion between Fry Consulting’s and Sports Warehouse’s online stores. Indeed, the potential for such confusion was why he chose the name. Furthermore, in developing the Fry Consulting website, Mr Fry took images from the Sports Warehouse website.
[17] [2012] FCA 81 [62].
29. The Opponent has particularised this ground of opposition in the SGP as follows [sic]:
We Had a trade display of our product in Brisbane on the 26/27 August, on the 27th Billet inco applied for our name Billet Pro That is BAD faith
30. No evidence has been provided in relation to this claim. I do not know where or when the product was displayed, to whom or whether the mark was used as a trade mark at that time.[18] In the absence of any evidence I would be forced into conjecture to determine any of these issues. A finding of bad faith impugns character, I would require evidence to support this ground which is cogent.[19]
[18] s 7.
[19] Briginshaw v Briginshaw.
31. I am not satisfied that at the date of application for the Trade Mark the Applicant’s conduct fell short of the standards of acceptable commercial behaviour observed by reasonable and experienced persons.23F44F[20]
[20] DC Comics v Cheqout Pty Ltd [2013] FCA 478; 212 FCR 194 [77].
32. I find that the s 62A ground of opposition is not established.
Section 60 – Trade mark is similar to a trade mark which has acquired a reputation in Australia
Section 60 of the Act is applicable and provides:
60 Trade mark similar to trade mark that has acquired a reputation in Australia
The registration of a trade mark in respect of particular goods or services may be opposed on the ground that:
(a) another trade mark had, before the priority date for the registration of the first mentioned trade mark in respect of those goods or services, acquired a reputation in Australia; and
(b) because of the reputation of that other trade mark, the use of the first mentioned trade mark would be likely to deceive or cause confusion.
Section 60 is discussed in McCormick & Company Inc v McCormick (‘McCormick’) per Kenny J:4F[21]
[21] (2000) 51 IPR 102 [81].
Reputation is “the recognition of the [trade] marks by the public generally”.
Reputation is often proven by a high volume of sales, as well as substantial advertising and promotional expenditures. Direct evidence for consumer appreciation of a mark is often not required.5F[22]
[22] Ibid. [86].
For this ground to succeed the Opponent must show their marks were well recognised by the Australian public generally before 29 August 2017, and that the Trade Mark would be likely to cause public confusion with their marks. In ConAgra it was stated that reputation cannot be assumed it must be established as a question of fact:6F[23]
[23] ConAgra Inc v McCain Food (Aust) Pty Ltd (1992) 33 FCR 302.
It is one thing to sell goods, it is quite another to show that they have amassed a reputation which is sufficient to lead consumers into deception or confusion and to satisfy the requirements of s 60.7F[24]
[24] Sara Lee Corp v Bali Blue Pty Ltd (2003) 59 IPR 619.
The Applicant has provided no evidence in relation to use. There is a bare assertion that the Trade Mark was used at a trade fair in Brisbane in the two days prior to the Trade Mark being filed. Consumer appreciation is not paramount, or even required due, to the considerations in McCormick.14F[25] But in the absence of sales figures, or any other material it is not possible to establish the requisite significant reputation for this ground.
[25] McCormick & Company Inc v McCormick (2000) 51 IPR 102 [86].
While the marks in this application are identical, without any evidence before me which demonstrates a reputation, similarity alone cannot support the s 60 ground of opposition.
I find the ground of opposition under s 60 is not established.
Section 59 – Applicant not intending to use trade mark
Section 59 of the Act provides:
59 Applicant not intending to use trade mark
The registration of a trade mark may be opposed on the ground that the applicant does not intend:
(a) to use, or authorise the use of, the trade mark in Australia; or
(b) to assign the trade mark to a body corporate for use by the body corporate in Australia;
in relation to the goods and/or services specified in the application.
The mere action of filing an application evidences some intention to use a trade mark.36F[26] I find the intention is not diminished by the failure to continue to participate in the Opposition proceedings.
[26] Aston v Harley Manufacturing Co (1960) HCA 47, [401].
Despite the paucity of evidence, I find it would be unreasonable in the Wednesbury sense to find there is no intention to use the Trade Mark where the application has been duly filed, a business name was registered, and the Applicant is a commercial entity.
I am unable to construe that there is no intention to use the Trade Mark and the s 59 ground is not established.41F[27]
[27] Trade Marks Act 1995 (Cth), s 17; Virgin Enterprises Limited v Virgin International Pty Ltd [2010] ATMO 38.
Decision
43. The Opponent has not established a ground of opposition. Pursuant to section 55(1), the Trade Mark number 1869033 will proceed to registration.
44. The parties may appeal this decision to the Federal Court in accordance with s 56 of the Act. If the Registrar has been served with notice of appeal, I direct that the Trade Mark shall not be removed from the Register until the appeal has been decided or discontinued.
Costs
45. Costs ordinarily follow the event for an Opposition Hearing. Due to the fact evidence has not been filed in the proceedings there is nothing before me to show that costs have been incurred.
46. I therefore direct no direction as to costs pursuant to s 221 of the Act in the relevant amounts prescribed by Schedule 8 of the Trade Mark Regulations 1995 (Cth).
Kate Doherty
Hearing Officer
Oppositions and Hearings
Trade Marks and Designs
8 September 2020
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