Richard Jelacic v Leafguard Gutter Systems Inc

[2010] ATMO 20

TRADE MARKS ACT 1995

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

Re:Opposition by RICHARD JELACIC to registration of trade mark application 1160896 (3, 37) - LEAFGUARD - filed in the name of LEAFGUARD GUTTER SYSTEMS, INC.

Delegate:	Heath Wilson
Representation:	Opponent: Self-represented. Applicant: Phillips Ormonde Fitzpatrick, Patent and Trade Mark Attorneys by written submissions.
Decision:	2010 ATMO 20 Section 52 opposition – grounds under section 41 and 43 – trade mark LEAFGUARD has only a limited inherent capacity to distinguish its services from those of other traders – trade mark does not contain a connotation likely to mislead or deceive the Australian public – trade mark registration refused for services – may proceed to registration for goods only – no award of costs.

Background

1. On 12 February 2007, Leafguard Gutter Systems, Inc (“the applicant”) applied to register the trade mark “LEAFGUARD” (claiming a convention priority date of 1 February 2007) for the following goods and services:

   Class 6: Metal gutters and parts and fittings therefor; one-piece seamless covered metal gutters; parts and fittings for metal gutters, namely, gutter hoods, metal gutter covers, end caps, elbows, diverters, mitres, outlets, downspouts, hangers and strainers

   Class 7: Power operated machine for use in production of a leaf rejecting seamless gutter

   Class 37: Installation of gutters for commercial and residential purposes

2. A ground for rejection was raised by the trade mark examiner of this application, on the basis that the trade mark possessed a limited inherent capacity to distinguish its goods and services from those of other traders, under section 41(5) of the Trade Marks Act 1995 (“the Act”). With a view to overcoming this objection, the applicant amended its specification to entirely remove class 6 from the application, proceeding to acceptance for the  following classes: 

   Class 7: Power operated machine for use in production of a leaf rejecting seamless gutter

   Class 37: Installation of gutters for commercial and residential purposes

3. The trade mark was then advertised for possible registration in the Australian Official Journal of Trade Marks on 13 March 2008. On 29 May 2008, Richard Jelacic (“the opponent”) filed a notice of opposition, citing sections 41 and 43 of the Act as the grounds of opposition to be relied upon.

4. This matter was set down for hearing on 12 February 2010. However, the hearing was cancelled at the request of the parties involved and I will now decide this matter on the evidentiary material, as a delegate of the Registrar of Trade Marks.  For an opposition to succeed, the opponent bears the onus of establishing at least one of the grounds cited in the notice on the balance of probabilities (Pfizer Products Inc v Karam;[1] Chocolaterie Guylian N.V. v Registrar of Trade Marks[2]). The opponent has filed and served evidence in support (as set out below), and the applicant’s attorney has relied solely on its written submissions in this matter.

   Evidence

   Evidence in Support

   ·     Statutory Declaration of Richard Jelacic dated 29^th October 2008 (with attached Annexures A-E).

   Reasons

   [1] Pfizer Products Inc. v Karam (2006) 70 IPR 599 per Gyles J at [6] to [26].

   [2] Chocolaterie Guylian N.V. v Registrar of Trade Marks (2009) 258 ALR 545 per Sundberg J at [26].

   Section 41: Trade mark not distinguishing applicant’s goods or services

5. Section 41 relevantly provides:

   (2)An application for the registration of a trade mark must be rejected if the trade mark is not capable of distinguishing the applicant’s goods or services in respect of which the trade mark is sought to be registered (designated goods or services) from the goods or services of other persons.

   Note:For goods of a person and services of a person see section 6.

   (3)In deciding the question whether or not a trade mark is capable of distinguishing the designated goods or services from the goods or services of other persons, the Registrar must first take into account the extent to which the trade mark is inherently adapted to distinguish the designated goods or services from the goods or services of other persons.

   (4)Then, if the Registrar is still unable to decide the question, the following provisions apply.

   (5)If the Registrar finds that the trade mark is to some extent inherently adapted to distinguish the designated goods or services from the goods or services of other persons but is unable to decide, on that basis alone, that the trade mark is capable of so distinguishing the designated goods or services:

   (a)the Registrar is to consider whether, because of the combined effect of the following:

   (i)the extent to which the trade mark is inherently adapted to distinguish the designated goods or services;

   (ii)the use, or intended use, of the trade mark by the applicant;

   (iii)any other circumstances;

   the trade mark does or will distinguish the designated goods or services as being those of the applicant; and

   (b)if the Registrar is then satisfied that the trade mark does or will so distinguish the designated goods or services—the trade mark is taken to be capable of distinguishing the applicant’s goods or services from the goods or services of other persons; and

   (c)if the Registrar is not satisfied that the trade mark does or will so distinguish the designated goods or services—the trade mark is taken not to be capable of distinguishing the applicant’s goods or services from the goods or services of other persons.

   Note 1:For goods of a person and services of a person see section 6.

   Note 2:Use of a trade mark by a predecessor in title of an applicant and an authorised use of a trade mark by another person are each taken to be use of the trade mark by the applicant (see subsections (1) and 7(3) and section 8).

   (6)If the Registrar finds that the trade mark is not to any extent inherently adapted to distinguish the designated goods or services from the goods or services of other persons, the following provisions apply:

   (a)if the applicant establishes that, because of the extent to which the applicant has used the trade mark before the filing date in respect of the application, it does distinguish the designated goods or services as being those of the applicant—the trade mark is taken to be capable of distinguishing the designated goods or services from the goods or services of other persons;

   (b)in any other case—the trade mark is taken not to be capable of distinguishing the designated goods or services from the goods or services of other persons.

   Note 1:Trade marks that are not inherently adapted to distinguish goods or services are mostly trade marks that consist wholly of a sign that is ordinarily used to indicate:

   (a)  the kind, quality, quantity, intended purpose, value, geographical origin, or some other characteristic, of goods or services; or

   (b)  the time of production of goods or of the rendering of services.

   Note 2:Use of a trade mark by a predecessor in title of an applicant and an authorised use of a trade mark by another person are each taken to be use of the trade mark by the applicant (see subsections (1) and 7(3) and section 8).

6. In F. H. Faulding & Son Ltd v Imperial Chemical Industries of Australia and New Zealand Ltd. (1965) 112 CLR 537 (per Kitto J) summarised the initial test for assessing the inherent capability of a trade mark to distinguish its designated goods/services from the goods/services of other persons:

   The question to be asked in order to test whether a word is adapted to distinguish one trader's goods from the goods of all others is whether the word is one which other traders are likely in the ordinary course of their business and without any improper motive, to desire to use upon or in connection with their goods.

7. Under the initial consideration of the inherent capability of a trade mark, the applicant has the benefit of a presumption of registrability. The issue of this presumption balanced with the fact that the opponent bears the onus of establishing a ground of opposition, is discussed in Shanahan’s Australian Law of Trade Marks and Passing Off [3]:

   The opponent must by evidence or other means displace the presumption of registrability. The absence of evidence may of itself tell against an opponent….The opponent should be in the most favourable of positions to obtain persuasive evidence that traders in its field have real and proper motives to use the words.

   [3] Shanahan’s Australian Law of Trade Marks and Passing Off. 4^th Edition (Lawbook Co, 2008) at [50.2005].

8. The opponent must establish through its evidence that (despite the prior removal of class 6 from the applicant’s specification) it nonetheless has a limited capacity to distinguish its remaining goods and services from those of other traders in that field. In support of the ground of opposition under section 41, the declaration of Richard Jelacic includes a number of assertions about the trade mark’s lack of capacity to distinguish its goods and services from those of other traders. Firstly, these assertions are supported through examples of the use of the words “leaf guard” in descriptions of patents from the United States Patents Office from 1988 and 1990. While these examples do not establish that “Leaf guard” is a term that has been “in use for decades” (Paragraph 2, Jelacic declaration) in Australia, it does at the very least indicate the word had a descriptive meaning to U.S. traders in 1988.

9. Secondly, the newspaper advertisements and internet examples provided by the opponent feature other traders’ use of the words, such as “At last a Leaf Guard that works!” (Annexure A), “Leaf Guard specials” (Annexure B), and “The installation of a Leaf Guard system attempts to avoid problems such as blockages, rust, overflows…” (Annexure C). These advertisements include either an Australian address, website or an Australian Business Number (ABN), and I am therefore satisfied on the balance of probabilities that they are examples from Australian businesses and tradespersons. While the opponent declares that one of these companies has existed since the early 90’s, this does not establish that it has been using the expression “Leaf guard” since that time. Additionally, the applicant is critical of the fact that the majority of the examples accompanying the opponent’s declaration are undated.

10. The attorney for the applicant submits that LEAFGUARD’s inherent capacity to distinguish should be determined at the filing date of the application. The required assessment under sections 41(3) and 41(5) of the Act has been described as a test of “fitness for a future role”[4]. It is also true that “…it is commonplace of the law of evidence that later events may cast light upon the true position at an earlier date”.[5] Relevantly, Justice Sundberg in the Guylian[6] case made the following comments:

    In assessing as at the priority date the “likelihood” that other traders will behave in a certain way in the future, evidence of how they have in fact come to behave will be relevant, although close attention should be paid to whether such rival behaviour has been “actuated only by proper motives”. In the absence of evidence of improper motive, however, it seems to me logical and appropriate that post priority date events should, where appropriate, be taken into account by decision makers in exercise of the “evaluative judgment” (see French J in Kenman Kandy 122 FCR 494 at [47]) required under s41(3).

    [4] Ocean Spray Cranberries Inc v Registrar of Trade Marks (2000) 47 IPR 579 at 586.

    [5] Conde Nast Publications Pty Ltd v Virginia Taylor (1998) 41 IPR 505 (at 509) per Burchett J.

    [6] Chocolaterie Guylian N.V. v Registrar of Trade Marks. Supra [at 54].

11. Given the number of traders using the words in the ordinary course of their business (and the fact that the words are not particularly inventive in themselves), I do not find the instances highlighted by the opponent to be actuated by improper motives. As most of the opponent’s examples are undated, it is difficult to assess whether the trade mark possessed the ability to distinguish precisely on 12 February 2007. Regardless, the above comments indicate that an assessment under section 41(3) may take into account events occurring after this date.

12. As a result, (despite the absence of clear dates within the opponent’s evidence) the opponent has indicated that “Leaf Guard” is a word used, or likely to be used, in Australia to describe an addition to a roof gutter designed to keep leaves out, or to guard against blockages caused by leaves. In addition, this definition was identified earlier during examination of the trade mark[7] and the specification was subsequently amended by the applicant.  

    [7] The first adverse examination report was generated on 22 February 2007, the same month in which this application was filed. 

13. The fact that the words LEAF and GUARD are conjoined in the opposed trade mark, does not alter my consideration under section 41, as it is only a minor alteration. The opponent further asserts that “Leaf Guard” is a generic term used to describe products and services in the Leaf Guard Industry. The evidence to support this assertion consists of internet searches on the Google™ search engine indicating a number of hits for the term “Leaf Guard”.

14. The applicant has argued that the opposed trade mark LEAFGUARD is analogous to the trade mark “SIZZLE & STIR”[8], an expression which was determined as not naturally used to describe the characteristics of its goods in class 29. As the term LEAFGUARD clearly describes a particular product, I am not convinced that the two cases are comparable.  

    [8] Effem Foods Pty Ltd v Unilever Plc (2000) 50 IPR 627

15. The paramount consideration is whether other traders in the guttering industry are likely to desire to use it in connection with the goods and services currently in the opposed application. In the first instance, regarding the goods claimed in class 7, it is difficult to see how other traders would ordinarily need to use the expression “LEAFGUARD” in relation to “machines used to produce leaf rejecting seamless gutters”. While it alludes to the end product created by the machine, it cannot reasonably be seen as an expression that other traders (acting without improper motive) would ordinarily desire to use for those particular goods. Additionally, the evidence submitted by the opponent is not sufficient to indicate that the expression is used in relation to this particular type of machinery.

16. The second consideration of whether LEAFGUARD is needed by other traders in the industry for the services of Installation of gutters for commercial and residential purposes is, perhaps, more difficult. As leaf guards can be attached to roof gutters, or part of the gutters themselves, the above services essentially encompass the installation of leaf guards. The relevant question is not whether the term “LEAFGUARD” is descriptive of the specific service per se, but whether other traders would ordinarily desire to use the trade mark LEAFGUARD in relation to these services. The examples provided in the opponent’s evidence indicate that a tradesperson in this industry does refer to “leaf guard” when describing/offering their gutter installation service.

17. Given the above factors, the trade mark “LEAFGUARD” has a limited inherent adaptation to distinguish the services in class 37, and I am unable to decide whether the trade mark is capable of distinguishing those services. The onus has, therefore, shifted to the applicant to provide evidence of the trade marks capacity to distinguish Installation of gutters for commercial and residential purposes from the services of other traders via use, intended use or other circumstances. As the applicant has elected not to provide any evidence for these proceedings, I am therefore unable to apply the provisions of subsection 41(5)(b) of the Act.

18. On the balance of probabilities, I find that the ground of opposition under section 41 of the Act has been established for the services in class 37 only.

    Section 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.

19. The opponent’s remaining ground of opposition is that the applicant’s trade mark contains an inherent connotation which would be likely to, if used on the claimed goods and services, cause confusion in the Australian marketplace. To establish this ground, there must be an inherent connotation within the trade mark itself,[9] rather than a connotation as a result of any external factors.

    [9] As per Gyles J in Pfizer Products Inc v Karam (2006) 70 IPR 599 at [53].

20. The opponent has declared that the use of the applicant’s trade mark would cause confusion in the marketplace as “an unsuspecting person could be manipulated to believe the wrong things about a product and statements that are made about that product.” (Paragraph 5 of the Jelacic Declaration) However, the opponent does not specify why the Australian public would be misled if the trade mark was used on these goods/services. Merely stating that because the trade mark consists of a description is not sufficient for deception or confusion to be likely. “The probability of deception or confusion must be finite and non-trivial. There must be a real and tangible danger of it occurring.”[10]

    [10] Registrar of Trade Marks v Woolworths Ltd (1999) 45 IPR 411at 426 per French J.

21. The only relevant connotation would be an association with Leaf Guards and whether this connotation would result in confusion when used on the particular goods and services in the above application. In this case, use of the trade mark on: Power operated machine for use in production of a leaf rejecting seamless gutter would be unlikely to deceive or cause confusion as the public would not confuse a leaf guard with the machine used to produce it. In addition, the opponent’s evidence is not sufficient[11] to support a proposition that consumers would be confused if use of the mark in relation to Installation of gutters for commercial and residential purposes misled an Australian consumer into believing that the applicant installed Leaf Guards, when in reality it did not offer that service.

    [11] See Bavaria NV v Bayerischer Brauerbund eV (2009) 81 IPR 279.

22. In summary, while the expression “LEAFGUARD” does carry the aforementioned connotation, I do not find that the use of the trade mark on the current goods and services would be likely to deceive or cause confusion in the Australian marketplace. Consequently, the opponent has not discharged the onus of establishing this ground on the strength of the evidence. On the balance of probabilities, I find that the ground of opposition under section 43 of the Act has not been established.

    Decision

    Section 55: Decision

    (1) Unless the proceedings are discontinued or dismissed, 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.

    Note:  For limitations see section 6.

23. A ground of opposition under section 41 has been established. I will allow the applicant one month from the date of this decision to request the following amendment to the specification of goods and services:

24. As trade mark application no. 1160896: “LEAFGUARD” is refused registration for the services of Class 37: Installation of gutters for commercial and residential purposes these services should be removed from the opposed application. The trade mark may then proceed to registration for the goods in Class 7 being: Power operated machine for use in production of a leaf rejecting seamless gutter.

1. In the event that no request for an amendment is received, the opposed application will be refused registration in its entirety. If the above amendments are made, the application may proceed to registration. If the Registrar has been served with a notice of appeal before that time, I direct that registration shall not occur until the appeal has been withdrawn or discontinued, or a court so orders.

   Costs

2. The opponent and the applicant have been partially successful in this matter. As a result, I decline to award costs and find that any legal costs should be borne by the respective parties.

   Heath Wilson
   Hearing Officer
   Trade Marks Hearings
   9 March 2010