Reme Pty Ltd v K and P Hope
[2007] ATMO 67
•10 October 2007
TRADE MARKS ACT 1995
DECISION OF A DELEGATE OF THE REGISTRAR OF TRADE MARKS, WITH REASONS
Re:Opposition by Reme Pty Ltd to registration of trade mark application 983353(31, 44) - THE SOIL MASTER (AUST) - filed in the name of Kenneth and Pauline Hope.
Delegate: | Terry Williams |
Representation: | Opponent: Robert Cumming, sole director Applicant: no appearance |
Decision: | 2007 ATMO 67 S 52 opposition. S59 partly successful. Sections 44(1) and 60 not established for remaining goods. Registration to proceed if applicant restricts goods and deletes services. |
Background
Kenneth and Pauline Hope have applied to register the trade mark THE SOIL MASTER (AUST) in respect of goods and services currently specified as “Agricultural and horticultural products in this class” (class 31) and “Agriculture, horticulture; providing information and consulting horticultural services” (class 44). Their application has a priority date of 24 December 2003, the date on which it was filed.
The application has been examined by the Trade Marks and Designs Group at IP Australia. It should be noted that, as part of the examination process, the examiner of trade marks cited, as grounds for rejection of the application, prior and conflicting trade marks owned by Reme Pty Ltd (“Reme”). For reasons which will emerge, it will be necessary to note the details of this examination process.
The Reme trade marks found and cited by the examiner are as follows:
| Number | Trade mark | Priority date | Services |
| 742892 | 3.9.97 | (class 42) Agricultural services, scientific research | |
| 975698 | SOILMASTER | 24.10.03 | (Class 44) Landscaping, horticultural, gardening, forestry and agricultural services; provision of information (including online) about landscaping, horticultural, gardening, forestry and agricultural services |
| 975700 | SOILMASTER | 24.10.03 | (Class 42) Scientific research[1] |
[1] These services were correctly classified in class 42 at the time Reme filed application 742892. Class 42 has since been divided and refined. That division in turn explains the scope of the services in Reme’s later registrations, in classes 44 and 42 respectively.
The examiner of trade marks was of the view that the existence of the Reme trade marks triggered the terms of sections 44(1) and (2) of the Trade Marks Act 1995 (“the Act”). These, together with an expanded version of the relevant Notes, read
Identical etc. trade marks
44.(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) the applicant's trade mark 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: 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
(2) Subject to subsections (3) and (4), an application for the registration of a trade mark (applicant's trade mark) in respect of services (applicant's services) 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 services or closely related goods; or
(ii) a trade mark whose registration in respect of similar services or closely related goods 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 services is not earlier than the priority date for the registration of the other trade mark in respect of the similar services or closely related goods.
Note 2: For similar services see subsection 14(2): services are similar to other services (a) if they are the same as the other services; or (b) if they are of the same description as that of the other services
The present application was, however, accepted for registration under the provisions of s 44(4), which reads:
(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.The examiner of trade marks was satisfied that this requirement was met and accordingly the application filed by Mr and Mrs Hope was advertised as having been accepted for possible registration. Such registration is, however, opposed by Reme. The applicants and Reme have had the opportunity allowed them by the Trade Mark Regulations to file and serve evidence relevant to their positions. Both parties, indeed, are familiar with the opposition process. The applicants have already used that process to unsuccessfully oppose registration of two of Reme’s trade marks set out above.
In the present matter, when the service and filing of evidence was complete, Reme requested a hearing. The applicants were given the opportunity of attending this hearing, but did not do so. I conducted the subsequent hearing under delegation from the Registrar of Trade Marks and what follows are the reasons for my decision.
Issues: Reme’s grounds
Reme, in its notice of opposition, nominated grounds of opposition under sections 58, 59, 60, 43, and 44. At the hearing, Reme, represented by its sole director, Robert Cumming, relied on written and verbal submissions. The applicants filed a brief written submission which, in effect, urged that the status quo be allowed to continue and that their application be registered.
Mr Cumming conceded that he did not have the benefit of legal advice in the conduct of this opposition. Nor did the applicants, and this has resulted in the evidence being presented in something of a discursive fashion, heavily interlaced with opinions and counter-opinions. However, the applicants have had a very good opportunity, first in their role as a (failed) opponent and now, as applicant for registration, to explain the nature of the business that they conduct. This opportunity has yielded a clearer picture than the one that was put to the examiner of trade marks, whose conclusions were based on evidence that was, at best, brief[2].
[2] The Trade Marks Manual of Practice and Procedure has since been amended, and I understand that more detailed evidence is now required of applicants, and that examiners of trade marks are now required to more critically assess claims under s 44(4).
Mr Cumming’s written submission was predicated on the assumption that it was for the applicant to prove its case in the opposition forum. That is not so under the current legislation: s 55 requires me to decide to register the application, or not, “having regard to the extent (if any) to which any ground on which the application was opposed has been established”. The initial evidentiary onus, therefore, is on the opponent, Reme, not the applicants, although this general principle has some unusual twists in the present matter, to which I will come.
It will not assist either party if I review, in full, the evidence since much of it is either irrelevant or tangential to the issues, which I will deal with as set out below.
Section 59 – intention to use
For reasons that will become apparent, I turn first of all to section 59, one of the grounds on which Reme relies. The relevant provision reads:
Applicant not intending to use trade mark
59. 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.
Note: For applicant see section 6.
Applicant’s business
It will not be necessary to set out the full range of the written submissions put by Mr Cumming, whose arguments appear to be predicated on the belief that use as a business name could not also be use as a trade mark. There is, as I suggested to Mr Cumming at the hearing, an area of overlap, though I agree that there appears to be considerable confusion in the applicants’ evidence about the ownership of the relevant business name registrations and company names over time.
Those things, however, simply distract from the substance of the picture put before me by the evidence, to which Mr Cumming pointed. The more expansive evidence before me yields one solid and incontrovertible fact: under the trade mark SOIL MASTER, rendered in various ways, with and without the element AUST, the applicants conduct, and intend only to conduct, the business of a soil yard, selling soil mixes, mulch, sand and gravel to local councils, gardening contractors etc.
There is an obvious mis-match between what the applicant does and intends to do, and the wide scope of the goods and services for which they have applied. Goods and services are classified on the basis of the International (NICE) Classification. Soils, I note, fall in class 1 or class 19 depending on their nature and intended purpose. Soil conditioning compounds fall in class 1, as does compost. Cultures of micro-organisms fall in class 1 or 5 depending on purpose. Goods in class 31 are, broadly, living or formerly-living matter of one sort or another. The class heading reads:
Agricultural, horticultural and forestry products and grains not included in other classes; live animals; fresh fruits and vegetables; seeds, natural plants and flowers; foodstuffs for animals, malt.
The closest that class 31 might come to the business of a soil yard, of all the sands, gravels and so forth sold by the applicants over time, is mulch, peat litter and bark chips. It is clear that these goods are within the scope of the present application, but it is not at all clear to me that there are any other such goods.
The operation of a soil yard falls in class 35 (Registrar’s determination dated 17 April 2002, and consistent with NICE Classification) and is outside the scope of the present application. The applicants do not carry on or intend to carry on any service in the nature of “agriculture, horticulture; providing information and consulting horticultural services”. To the extent that they might be expected to provide incidental advice about the soil, mulch and similar products that they sell, they no more provide horticultural services than a paint store would provide decoration consultancy services as part of its operations in tinting and selling paints.
Accordingly, it will be efficient to say that the s 59 ground is established, with the exception of that portion of the application that relates to “mulches, bark chips and similar materials in this class”, being class 31.
It might appear that I have put the onus on the applicants to establish their intention to use where, in fact, it is for Reme to make out its ground and show, from the evidence, a prima-facie case of non-use and lack of relevant intention to use, assign etc. However, it is to be recalled that the applicants faced, in examination, and again in opposition, the conflicting and directly relevant registrations of Reme. They have relied, on being opposed by Reme, on enhanced material going to both their current use of their trade mark and, critically, their intended future use, rather than the simple assertions that satisfied the examiner of trade marks. Where an applicant for registration faces the citation of a directly relevant registered trade mark, and resorts to the provisions of either s 44(3) or 44(4), either of the subsections in question put such an applicant under an evidentiary onus. Once it becomes clear that an applicant has put its cards candidly on the table as regards its intended future use, the Registrar’s delegates are then entitled to take note of those cards that are absent, just as much as those that are present. There is no point, therefore, in assessing the scope of the present application on the basis of “what if the applicants intend to grow wheat?” or “what if they intend to make dog-food?” That is, from the evidence, simply not so.
Given my conclusion under s 59, I say now that I refuse to register the application in respect of any services, or any goods other than “mulches, bark chips and similar materials in this class”. It will be necessary to decide only if any remaining ground of opposition is established with respect to those surviving goods.
Section 44
I have already set out the provisions of the legislation, of which now only s 44(1) need be initially considered. The applicants’ trade mark is comprised of the words THE SOIL MASTER (AUST). The word SOILMASTER is, equally, either the sole or the most significant portion of Reme’s registered trade marks. The competing trade marks are at least deceptively similar, therefore, and all of Reme’s registrations set out in the background portion of this decision pre-date that of the applicants. It will be seen, accordingly, that s 44(1) is triggered if and only if the goods “mulches, bark chips and similar materials in this class”, being class 31, are “closely related” to any of Reme’s services.
The latter are described in wide terms and I am required to give regard to their full scope. I am to compare the scope of “Landscaping, horticultural, gardening, forestry and agricultural services” with the applicants’ surviving goods.
Reme’s registration does not extend to the retailing of products used by agriculturalists and horticulturists, as, for example, the retailing of mulches and bark chips. The services specified by Reme in class 44 would extend most relevantly to the growing and cultivation of plants and crops, and to gardening and landscaping services.
There is very little to connect these businesses with the ordinary trade in bark chips and mulches etc. The latter is ordinarily conducted in bulk by a local soil yard, or in lesser quantities by a department store or a gardening centre. The services would involve farming and the goods are, in one sense or another, farm products. However, mulches and bark chips are not typically the main product of a farm so much as by-products or leftovers. It would be a false analogy to compare that situation with, for example, poultry farming on one hand and eggs on the other. It is by no means common – or if it is, I am unaware of it and the evidence of Reme is silent on the question – for mulches etc to be identified with the trade mark of the farm from whence they came, much less of the contract farmer who produced them. The people who farm and the people who sell the mulches do not appear to be the same, nor are the customers typically in common.
The same is true of mulches etc vis a vis gardening services and landscaping, both of which fall in class 44. Gardening involves the maintenance of gardens and lawns belonging to others, and upon which a gardener would work. Thus, the gardener is performing labour, either under a fixed price contract or for an hourly rate, aimed at the ongoing cultivation of property. This largely entails maintaining what is already there, as by weeding, edge trimming, pruning and so forth. If the gardener’s work is to include the provision of mulch, as opposed to using that which is supplied by the customer, the customer would, I expect, be aware that this would entail the payment for such goods and, in consequence, the knowledge that these came from a third-party source. I think the ultimate customer would always retain a clear view of the fact that the person maintaining the garden was essentially providing skilled labour in tending land belonging to the customer, even if using materials supplied by some third-party.
Landscaping services are of a somewhat closer connection, perhaps, in that they typically might involve the creation of a garden from wilderness of one sort or another, and might more directly involve the moving of earth and the provision of mulch and bark chips, the applicants’ goods. However, there is not the direct function of the services with respect to the goods that is typically observable where the goods and services are closely related for the purposes of s 44(2)[3]. In short, the services may involve the goods, but the goods are neither the essence of the service nor otherwise connected in any direct way. In the lack of any further submissions from Reme, or any evidence relevant to the matter, I will conclude that these goods and services, too, are not closely related.
[3] See the various examples conveniently set out in Shanahan’s Law of Trade Marks and Passing Off at [8.25] and [8.30]: curtains and the making thereof, clothes and tailoring, televisions and television repair etc.
A similar conclusion would emerge for comparable reasons where the scope is the professional “scientific services” covered by registration 975700. I find, therefore, that the goods that survive the s 59 ground are not closely related to any of the services specified in Reme’s registrations. Accordingly, s 44(2) does not catch the narrowed scope of the application left after the s 59 ground was partly established. The section 44 ground therefore cannot be established and it will not be necessary to consider s 44(4).
Section 60
This reads:
Trade mark similar to trade mark that has acquired a reputation in Australia
60. The registration of a trade mark in respect of particular goods or services may be opposed on the ground that:
(a) it is substantially identical with, or deceptively similar to, a trade mark that, before the priority date for the registration of the first-mentioned trade mark in respect of those goods or services, had 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.
Note 1: For deceptively similar see section 10.
Note 2: For priority date see section 12.
In simple terms, would use of the applicant’s trade mark in respect of the restricted class 31 goods be liable to deceive or confuse because of the reputation of Reme as established at 24 December 2003?
Reme conducts a business in soil analysis as part of an agricultural and horticultural advisory consultancy business. Reme has been in existence since 1988, but did not begin to publicly use the SOILMASTER trade mark until 1994 at the earliest. There is unsupported assertion by Mr Cumming that the “current aim” of his firm is to produce a range of soil and seed additives, but there is no evidence that this was widely known or publicly anticipated in 2003, the date at which the extent and character of Reme’s reputation is to be tested. What emerges, instead, from the opponent’s evidence, is a picture of a skilled soil scientist and agronomist who advises farmers etc on questions of soil structure and fertility, crops, plants, livestock and water usage. While the company is prepared to provide its services widely and has rendered them to local councils and to the mining industry, I infer from the evidence that most of Reme’s customers are farmers and graziers.
Material in evidence shows that in 1997, in connection with the examination of its own earlier trade mark 742892, Reme asserted the existence of 6,500 to 7,000 clients, and the evidence shows that these would all have been familiar with the trade mark. Mr Cumming, in preparing his evidence, has not indicated how many clients his firm may have had in 2003 but, by May 2005 Reme had “over 7000” clients. Aside from direct promotion to those clients, and word of mouth, which I expect would have been significant over time, promotion has been primarily via field days. Mr Cumming has listed his contributions to academic writings in his field but it is not clear from the evidence if the trade mark was exposed to the public via this source at anything except the 2002 National Soils Conference in Perth. There has also been one direct mail-out, of 30,000 brochures in the years 1996 to 1998.
It is hard to gauge the full extent of the reputation from the evidence before me but I think that it would be fair to say that Reme, while not being by any means ubiquitous or a household word in farming circles, was certainly not a complete unknown. However, those that would have known of Reme’s work up to 2003 would also have known of the specialist niche that Reme occupied. The company does technical, analytical work that is highly skilled.
This, to come to the point, is where the s 60 ground fails. The trade mark SOILMASTER, while being quite capable of distinguishing, is not what I would call a strongly distinctive mark. It is the sort of trade mark that might, and I stress the word “might”, be arguably adopted as a trade mark by any trader wishing to allude to having some connection with the soil or with earthworks. It is thus a word that does not particularly impress as being a unique trade mark. An ordinary customer, buying mulch etc from the applicants or from a local garden centre, a department store or produce merchant, and encountering the trade mark SOIL MASTER (AUST) would have no reasonable basis for speculation, for being caused to wonder at a connection with Reme. Among the 7000 or so customers of Reme, the coincidence of trade marks would be viewed as just that in view of the lack of any probable connection between the trade in mulches and the work actually conducted on a day-to-day basis by Reme.
Remaining grounds
None of these are established. There are, it is true, a considerable number of loose ends in the applicants’ evidence, to which Mr Cumming pointed in his evidence in reply. From this evidence it is not possible to sort out, as between the applicants and the various corporate vehicles that they have used or been involved with over time, the administrative arrangements by which Mr and Mrs Hope propose to use, and/or control the usage of, their trade mark. The final position is as follows.
Section 58: The making of an application is prima facie equivalent to use of a trade mark as far as establishing a claim to ownership. The s 58 ground, as noted in Shanahan’s Australian Law of Trade Marks and Passing Off, 3rd Edition at [3.30], involves a claim of usage, by another, of “the same mark for the same kind of thing”. The applicants’ claim, made by the filing of the application, can thus be upset by prior use, by another, of the trade mark THE SOIL MASTER (AUST), or any substantially identical trade on relevant class 31 goods. In the present matter, there is no such usage that could upset the claim. Reme has not established its own usage on relevant class 31 goods prior to the filing date. The various actions set out in the applicants’ evidence in answer are either their own acts - or at worst are not those of an arms-length third party - or are not the use of a trade mark, or both.
Section 43: There is nothing inherently deceptive or confusing in the trade mark SOIL MASTER (AUST). Section 43 does not deal with deception or confusion that might arise from conflicting reputations in deceptively similar trade marks. See, in this respect, Pfizer Products Inc v Karam[4].
[4] [2006] FCA 163
Conclusion and costs
I have already refused to register the application as it stands. The applicants should request that the goods of the application be restricted to “mulches, bark chips and similar materials in this class”, and that the class 44 services be deleted, within the next 21 days. If so restricted, the trade mark application may proceed to registration after 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 unless either the appeal is discontinued or the Court so orders.
I award costs against the applicants, to the extent of the opposition and hearing fees
and Mr Cumming’s appropriate travelling expenses to attend the hearing.
Terry Williams
Hearing Officer
Trade Marks Hearings
10 October 2007
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