Rob Bowra v Industrial Progress Corporation Pty Ltd

[2016] ATMO 48

TRADE MARKS ACT 1995

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

Re:Opposition by Rob Bowra to registration of trade mark application 1578456 (6) - ROOF-SPAN - in the name of Industrial Progress Corporation Pty Ltd

Delegate:	Michael Kirov
Representation:	Opponent: Did not appear or file written submissions Applicant: Cynthia Cochrane of Counsel, assisted by David Larish of Counsel, instructed by Ewa Sarolis of Kanji & Co, Solicitors
Decision:	2016 ATMO 48 Opposition under section 52 of the Trade Marks Act 1995: ss 59, 60 and 62A considered - prima facie presumption of Applicant’s intention to use not displaced and actual use shown – insufficient reputation on which to base s 60 ground – no evidence of bad faith – opposition not established.

Background

1. This is an opposition brought by Rob Bowra (“the Opponent”) pursuant to s 52 of the Trade Marks Act 1995 (“the Act”) to registration of the trade mark subject of the application detailed below in the name of Industrial Progress Corporation Pty Ltd (“the Applicant”):

   Application Number:          1578456

   Filing Date:  4 September 2013

   Goods:Class 6: metal roofing and/or walling material

   Trade Mark:  ROOF-SPAN                  (“the Opposed Mark”)

2. Acceptance of the opposed application for possible registration was advertised in the Australian Official Journal of Trade Marks on 30 January 2014.  The Opponent filed a formal Notice of Intention to Oppose on 27 March 2014, followed by a Statement of Grounds and Particulars (“SGP”) on 27 April 2014 raising opposition grounds corresponding to ss 59, 60 and 62A of the Act. The Applicant filed a Notice of Intention to Defend on 30 May 2014.

3. For their evidence the parties rely on the following declarations made pursuant to the Act and reg. 21.6 of the Trade Marks Regulations 1995 (“the Regulations”):

   Evidence in Support

   ▪ Rob Bowra made 31 August 2014, with Exhibits A to R and Appendixes A1 to A5   (“Bowra 1”)

   Evidence in Answer

   ▪ Anil Kumar made 5 December 2014, with Exhibits A to H (“Kumar”)

   Evidence in Reply

   ▪ Rob Bowra made 21 March 2015 (“Bowra 2”)

4. I will refer as necessary to the parties’ evidence in the discussion below, but for now note the following by way of background.  Anil Kumar has been a Director of the Applicant since 10 September 1998.  He says that the Applicant is based in Western Australia and was incorporated on 23 January 1974 under the name Osborne Metal Industries (Bunbury) Pty Ltd before changing to its current name on 13 December 1984.  As Mr Kumar further explains in his declaration:

   3. [The Applicant] manufactures, markets and distributes steel building products and has done so since 1984.  Through its division known as Roofmart WA it specifically manufactures steel roofing products.  [The Applicant] is a leading manufacturer of steel roofing in Western Australia.

   4. In about 2009 Roofmart/[the Applicant] developed a roll formed, custom-length, high tensile steel profiled roofing and wall sheeting product.  After some deliberation over an appropriate name for the product I came up with the name “Roofspan”.  [The Applicant] commenced manufacturing the product in 2010.

   [Mr Kumar then exhibits, inter alia, relevant pages from price books, brochures and invoices showing use of the Opposed Mark[1] for the years 2010 and 2011, as well as “a spreadsheet showing volume of sales of the ‘Roofspan’ product from December 2010 to December 2013.”]

   [1] Mr Kumar says at paragraph 6 of his declaration that the Applicant “has used the names ‘Roof-Span’ and ‘Roofspan’ to describe the same product.”  I consider these to be substantially identical trade marks and I confirm that this minor inconsistency in usage has no bearing on my decision.

5. As for the Opponent, Rob Bowra has “been a founding Director” of a company named Industrial Panel Australia Pty Ltd (“IPA”) since its incorporation on 10 August 2011.  He says in Bowra 1 that:

   2. [IPA] is an Australian owned company, specialising in supplying lightweight, insulated, fire-resistant panels for use in the construction of buildings and controlled environments such as warehouses, supermarkets, retail outlets and residential developments.  The panels are manufactured by Emirates Industrial Panel (EIP) in a fully automated continuous line production facility in Dubai, UAE.  [IPA] is the sole distributor for the panels in Australia and New Zealand.

   …

   4. The panels supplied by [IPA] are identified and branded using three key words – “ROOFSPAN”, “WALLSPAN” and “COLDSPAN”.  The descriptions of each panel type are as follows:

   - “ROOFSPAN”: An FM certified, lightweight, fire-resistant and energy efficient roofing solution suitable for commercial, industrial and residential applications.  The panels are further classified as “ROOFSPAN Durarib”, “ROOFSPAN Megarib” and “ROOFSPAN Flexirib”, the difference being the profile of the panels and the material of the inner facing.

   - “WALLSPAN” – An FM certified, lightweight, fire-resistant and energy efficient solution for external and internal walls suitable for commercial, industrial and residential applications.

   - “COLDSPAN” – An FM certified, lightweight, fire-resistant and energy efficient insulated controlled environment panel system.

   5. The names “ROOFSPAN”, “WALLSPAN” and “COLDSPAN” were adopted as product names following a one month investigation and elimination process by the then Marketing Director and Technical Manager of [IPA].  Both employees put considerable effort into creating various options for product names and researching their availability through numerous online sources.  Several options were discounted due to potential national and international conflicts relating to intellectual property rights.  The remaining product names, being “ROOFSPAN”, “WALLSPAN” and “COLDSPAN”, were identified by the Marketing Director and Technical Manager as not being registered or actively used in Australia or New Zealand, relevant to their function and form.  As a result, the names were adopted and subsequently used to identify and market the variety of panels supplied by [IPA].

   6. In terms of timing, the product names “ROOFSPAN” (including the associated “ROOFSPAN Durarib”, “ROOFSPAN Megarib” and “ROOFSPAN Flexirib” classifications), “WALLSPAN” and “COLDSPAN” were branded in October 2011 and have been strongly marketed since November 2011…

6. Mr Bowra elsewhere explains that “FM certification” refers to the fact that, “on 26 August 2013, [IPA’s] panels received worldwide certification from FM Approvals, a member of the leading commercial insurance body, FM Global”, following “a vigorous testing regime in the USA.”  While such certification has no direct relevance to my decision, it is convenient here to note that it does bear on my assessment of the Opponent’s evidence in one significant regard.  In particular, Bowra 1 exhibits an undated “corporate brochure” (Exhibit C) and undated “formal brochures and information sheets” (Exhibit D), which relate to, inter alia, IPA’s panels offered for sale under the ROOFSPAN trade mark.  Since all of these exhibited materials indicate the panels in question are “FM Approved”, I infer that the exhibited materials were circulated after that approval was obtained on 26 August 2013, being some nine days before the 4 September 2013 filing date of the opposed application (“the Filing Date”).

7. I heard the matter as a delegate of the Registrar of Trade Marks on 17 March 2016 in Canberra.  Cynthia Cochrane of Counsel, assisted by David Larish of Counsel, instructed by Ewa Sarolis of Kanji & Co, Solicitors, appeared for the Applicant via telephone from Sydney.  Ms Cochrane’s oral submissions were supplemented by written submissions emailed to both the Opponent and me on 7 March.  The Opponent had earlier advised me by email on 28 February (with copy to the Applicant’s attorneys) that due to overseas work commitments he would not attend, or be represented at, the hearing and nor would he be filing written submissions.  I nevertheless note that much of Bowra 2, in particular, might be characterized as submissions rather than evidence per se and I confirm that I have treated them as such in deciding the opposition.

   Grounds of Opposition, Onus and Standard of Proof

8. As mentioned, the SGP lists grounds corresponding to ss 59, 60 and 62A of the Act and each of these is discussed below. To succeed, the Opponent bears the onus of establishing at least one of these three grounds and I proceed on the basis that the relevant standard of proof required is the ordinary civil standard based on the balance of probabilities.[2]

   [2] Following Gyles J in Pfizer Products Inc v Karam (2006) 70 IPR 599 at [6] to [26]. See also the recent decision of the Full Federal Court in Telstra Corporation Limited v Phone Directories Company Pty Ltd [2015] FCAFC 156 (4 November 2015) at [132]-[133] affirming Gyles J’s approach.

9. The relevant date for assessing the registrability of the Opposed Mark is the Filing Date.[3]

   Discussion

   [3] Southern Cross Refrigerating Co v Toowoomba Foundry Pty Ltd (1954) 91 CLR 592, per Kitto J at 595.

   Section59

10. Section 59 of the Act, (which reflects the requirements of s 27(1)(b) of the Act), is set out below:

    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.

11. Section 27(1) of the Act is as follows:

    Application—how made

    27(1) A person may apply for the registration of a trade mark in respect of goods and/or services if:

    (a) the person claims to be the owner of the trade mark; and
    (b) one of the following applies:

    (i) the person is using or intends to use the trade mark in relation to the goods and/or services;
    (ii) the person has authorised or intends to authorise another person to use the trade mark in relation to the goods and/or services;
    (iii) the person intends to assign the trade mark to a body corporate that is about to be constituted with a view to the use by the body corporate of the trade mark in relation to the goods and/or services.

    Note:  For use see section 7.

12. The ground based on s 59 of the Act is indicated in the SGP as follows:

    Applicant not intending to use the trade mark - Section 59

13. The ground is further particularised in the SGP as follows:

    [The Opponent] is opposing registration of trade mark number 1578456 as it is believed that [the Applicant] (and their operating companies) have no intention of using the word “Roof-Span” in their course of business.  A letter dated 5 September 2013 was written by [the Applicant’s] legal representative to IPA, requesting that IPA cease from using the word “Roofspan” for reasons relating to “misrepresentation” and “passing off”.  The letter states that [the Applicant] has been manufacturing a product called “Roof-Span” for more than 10 years that is “remarkably similar” to IPA’s “Roofspan” products.  Please refer to Appendix A for further detail.

14. Insofar as it relates to the s 59 ground, Appendix A to the SGP continues:

    Upon receipt of the letter, no response or communication was made by IPA to the legal representative of [the Applicant]. Instead, IPA discovered that an application had recently been made by [the Applicant] to register the term “Roof-Span” as a trade mark. Based on the contents of the letter and the information and knowledge IPA has acquired to date, the following points are considered relevant to [the Opponent’s] opposition under section 59:

    [The Applicant’s] product “Roof-Span” is not considered to be similar to IPA’s “Roofspan” product.  As stated in the letter, [the Applicant’s] product is a “uniformly profiled, roll formed steel roofing and wall sheeting”.  In contrast, IPA’s product is an insulating roofing panel system that contains a PIR foam core.  The manufacturing process and overall function of the products is considered substantially different.

    Prior to branding IPA’s products as “Roofspan”, “Wallspan” and “Coldspan”, a thorough search and considerable effort was made to ensure that the chosen words were not subject to intellectual property rights, relevant to their form and function.  To date, an online search for the term “Roof-Span”, and in particular its use by [the Applicant] and its operating companies, has provided nil results.  It is believed that there is limited market awareness, both online and offline, of the product term “Roof-Span” associated with [the Applicant] and its operating companies.

    [The Applicant] has allegedly been manufacturing the “Roof-Span” product for “more than 10 years”.  Only now, when IPA has created market awareness of their products “Roofspan”, “Wallspan” and “Coldspan”, invested a substantial amount of money in branding and advertising, and established successful commercial relationships, has [the Applicant] made the decision to apply for registration of the word “Roof-Span”.

    Based on the above points, it is argued that the application to register the word “Roof-Span” as a trade mark should be refused on the basis that [the Applicant] and its operating companies have no intention of using the word “Roof-Span” for purposes relating to the ordinary course of their business.  As outlined in the following section, IPA believes that the application was instead made in bad faith.

15. I discussed the relevant case law and principles applicable to consideration of the s 59 ground of opposition generally at some length in Foxtel Management Pty Ltd v 111Pix.com Limited[4] and I do not believe it is necessary to repeat that all here.  It is sufficient in this case to confirm that I agree with the following submissions of Ms Cochrane and Mr Larish that (with Counsels’ original footnotes retained):

    23. The requisite intention for the purpose of section 59 is to be assessed at the [Filing Date].[5]  The threshold is a low one…[6]

    24. The filing of the application for the [Opposed] Mark is prima facie evidence of an intention to use the mark, such that Mr Bowra has the burden of rebutting this presumption.[7]  Genuine use in Australia acts as evidence of the requisite intention.[8]

    25. In this case the low threshold has clearly been met.  There is evidence of actual use by the Applicant of the [Opposed] Mark, both before and after the [Filing] Date…  For these reasons, this ground of opposition should be rejected.

    [4] [2012] ATMO 29 at [23]-[39].

    [5] See eg Food Channel Network Pty Ltd v Television Food Network GP (2010) 185 FCR 9 at [32].

    [6] See eg Food Channel Network Pty Ltd v Television Food Network GP (2010) 185 FCR 9 at [67].

    [7] Aston v Harlee Manufacturing Co (1960) 103 CLR 391 at 401; Suyen Corp v Americana International Ltd (2010) 187 FCR 169 at [27]-[28].

    [8] Suyen Corp v Americana International Ltd (2010) 187 FCR 169 at [211].

16. I would only add that, (as discussed in more detail in connection with the Opponent’s s 62A ground), there is no evidence before me suggesting the opposed application was “made in bad faith” as suggested in the SGP quoted above. Indeed, I am satisfied on the evidence before me that the Applicant has continuously used the Opposed Mark in Australia for relevant goods since at least December 2010, being some considerable time before IPA was incorporated on 10 August 2011 and well before IPA’s adoption of the trade mark Roofspan in October 2011.

17. In summary, as indicated in the decisions cited by Ms Cochrane and Mr Larish, the very filing of application 1578456 is prima facie evidence that the Applicant intended to use, or authorize use of, the Opposed Mark.  The unsupported allegation contained in the SGP does not upset this presumption and nor is there anything contained in the Opponent’s evidence which does so.

18. The Opponent’s s 59 ground is accordingly not established.

    Section 60

19. Section 60 of the Act is reproduced below:

    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.

    Note:  For priority date see section 12.

20. The ground based on s 60 of the Act is indicated in the SGP as follows:

    Trade mark is similar to a trade mark which has acquired a reputation in Australia - Section 60

21. The ground is further particularised in the SGP as follows:

    [The Opponent] is opposing registration of trade mark number 1578456 as the proposed word “Roof-Span” is identical to the terminology used by IPA for a number of products that have gained a reputation in Australia since November 2011.  IPA is a West Australian based company which specialises in supplying lightweight, insulated, fire-resistant panels for use in the construction of buildings and controlled environments, such as warehouses, supermarkets, retail outlets and housing developments.  Please refer to Appendix A for further detail.

22. As far as it relates to the s 60 ground, Appendix A to the SGP continues:

    The panels are manufactured using G300 grade steel and contain polyisocyanurate (PIR) foam cores, making them one of the highest rated panels in terms of insulation and fire­resistance.  All panels are certified by FM Global and have undergone vigorous testing at the approval laboratories in the United States of America.

    The panels have been branded and marketed since November 2011 via the IPA website (available at: in print and at four (4) architectural industry exhibitions across Australia.  The names and descriptions of each panel are as follows:

    Roofspan: An FM certified, lightweight, fire-resistant and energy efficient roofing solution suitable for commercial, industrial and residential applications.  The panels are further classified as “Roofspan Durarib”, “Roofspan Megarib” and “Roofspan Flexirib”, the difference being the profile of the panels and the material of the inner core.

    Wallspan: An FM certified, lightweight, fire-resistant and energy efficient solution for external - internal walls suitable for commercial, industrial and residential applications.

    Coldspan: An FM certified, lightweight, fire-resistant and energy efficient insulated controlled environment panel system.

    It is estimated that approximately $250,000 has been spent by IPA on online and offline branding and marketing of the panels.  Market awareness has further been created by the establishment of relationships with key customers in the building and development sector.  For example, IPA has been successful in securing the insulated roofing panel system (“Roofspan”) as the specified roofing system for Coles for all their new shopping centres throughout Australia.

    Based on the stated facts, it is argued that IPA has developed a reputation and strong market awareness in Australia with respect to the commercially available “Roofspan”, “Wallspan” and “Coldspan” products, such that the word “Roof-Span” should not be eligible for registration in the name of [the Applicant].

    Further to this, it is noted that a company called “Roofspan” currently exists in Western Australia (refer: and has been in operation since 1969.  Whilst it is understood that a company name does not provide automatic protection in terms of intellectual property, the company has communicated their concern about the subject trade mark application to IPA.

23. I will for convenience refer hereafter to the Roofspan mark used by IPA since November 2011 (also referred to in Mr Bowra’s evidence on occasions as “ROOFSPAN”), which underpins the Opponent’s s 60 ground, as “IPA’s Mark”.

1. What I must consider in the case of s 60 is the fair notional use the Applicant might make of the Opposed Mark in relation to the “metal roofing and/or walling material” covered by the opposed application. The issue is whether such use would be likely to deceive or cause confusion amongst, as it is often put, a “significant” or “substantial” number of potential consumers of the relevant Class 6 goods as at the Filing Date in light of the then reputation in Australia of IPA’s Mark. As Heerey J noted in Le Cordon Bleu B.V. v Cordon Bleu International Ltee:[9]

   …the reputation contended for by the [opponent] would have to be one of which a significant or substantial number of persons were aware: ConAgra at FCR 346.[10]  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.

   [9] (2000) 50 IPR 1 at [91]. His Honour’s observation was in the context of s 28(a) of the Trade Mark Act 1955 which, in the circumstances of that case, also required reputation to be established.

   [10] ConAgra Inc v McCain Foods (Aust) Pty Ltd (1992) 23 IPR 193.

2. In the present case I proceed on the basis that the target market for the Applicant’s Class 6 goods would in the main be professionals in the building trade, including architects and possibly structural engineers, roofing installers or repairers, carpenters, and builders generally.

3. As far as assessing the reputation of the Opponent’s Mark in the relevant market is concerned, as Ms Cochrane and Mr Larish noted, Kenny J said the following in McCormick & Co Inc v McCormick:[11]

   In practice, it is commonplace to infer reputation from a high volume of sales, together with substantial advertising expenditures and other promotions, without any direct evidence of consumer appreciation of the mark, as opposed to the product: see, eg, Isuzu-General Motors Australia Ltd v Jackeroo World Pty Ltd(1999) 47 IPR 198; Marks & Spencer Plc v Effem Foods Pty Ltd (2000) AIPC 91-560; Photo Disc Inc v Gibson(1998) 42 IPR 473; and RS Components Ltd v Holophane Corp(1999) 46 IPR 451.  This court has followed this approach as well, acknowledging that public awareness of and regard for a mark tends to correlate with appreciation of the products with which that mark is associated, as evidenced by sales volume, among other things.  Thus, in Toddler Kindy Gymbaroo Pty Ltd v Gymboree Pty Ltd(2001) 51 IPR 1, Moore J accepted at [94] that the applicant had established a reputation for the purposes of s 60 solely on the basis of use and promotion of the relevant mark. Another example of this approach is Nettlefold Advertising Pty Ltd v Nettlefold Signs Pty Ltd(1997) 38 IPR 495 (Nettlefold), in which Heerey J relied upon the public visibility of the applicant's marks over approximately two decades as well as a $100,000 promotional campaign in finding that a reputation for the purposes of s 28 of the 1955 Act existed.

   [11] (2002) 51 IPR 102 at [86].

4. As Ms Cochrane and Mr Larish said, s 60 “envisages some substantial likelihood of deception or confusion and thus more than a minimal reputation for the prior mark.”[12]  Counsel also highlighted the observation of the Hearing Officer in Sara Lee Corporation v Bali Blue Pty Ltd:[13]

   The reputation in Australia cannot be assumed – it must still be established as a question of fact – per Lockhart J in ConAgra Inc v McCain Foods (Aust) Pty Ltd (1992) 33 FCR 302; 106 ALR 465; 23 IPR 193.

   [12] Citing Shanahan’s Australian Law of Trade Marks and Passing Off, 5^th Edition, Lawbook Company.

   [13] (2003) 59 IPR 619 at [25].

5. In the present case the Opponent relies on the evidence of use contained in Bowra 1 to establish IPA’s Mark had the requisite reputation.  Much of this evidence of use, it must be said, is undated or clearly shows use after the Filing Date, 4 September 2013.  The weight I might reasonably give other parts of the evidence relied on is otherwise uncertain because much of it appears to relate to activity in both Australia and New Zealand collectively and to not only IPA’s panels sold under the ROOFSPAN, WALLSPAN and COLDSPAN trade marks, but also to its range of building products generally.  That said, the most relevant information in Bowra 1 pertaining to use of IPA’s Mark which I am satisfied occurred before the Filing Date may be summarized as follows:

   (a) IPA’s relevant insulated building panels (“IPA’s Panels”) were first “branded [with IPA’s Mark] in October 2011 and have been strongly marketed since November 2011.”

   (b) IPA’s Panels received “FM certification” on 26 August 2013;

   (c) Brochures and product literature (Exhibits C and D to Bowra 1) “were created and finalised by IPA in October 2011.”  (As mentioned in paragraph 6 above, these exhibited materials are undated; however, given they refer to IPA’s Panels being “FM Approved”, I infer that they were not publicly circulated before 26 August 2013);

   (d) “IPA’s website (available at was formally registered in August 2011.  Since November 2011, the product names, including the relevant brochures and information sheets, have been clearly identified and marketed through operation of the website.”

   (e) “…‘Exhibit G’ is a copy of an email sent by a potential client to IPA on 22 November 2011, clearly identifying the product names ‘ROOFSPAN’ and ‘WALLSPAN’.”

   (f) Exhibit H “is a copy of one of IPA’s original price lists, dated 1 December 2011, which was sent to potential clients and stakeholders at the time.”

   (g) “Since formally adopting the product names in October 2011, a significant amount of time, effort and capital expenditure has been allocated to branding, marketing and advertising.  To be specific, it is estimated that approximately $250,000 has been spent on various online and offline strategies and events.”

   (h) “IPA has actively participated in numerous trade exhibitions across Australia.  Notably, IPA has been a member of Architectural Information Services (AIS) since January 2012.  AIS is an Australian based company that assists industry professionals in developing valuable networks and introducing products to the market (refer to their website at: of the major events organised by AIS is called ‘Equinox’ – a highly regarded trade event held across Australia and New Zealand.  Between March and May 2012, IPA attended and exhibited at 4 of the 12 ‘Equinox’ events, including Perth, Sydney, Melbourne and Brisbane.  As part of the exhibits, IPA displayed and strongly marketed the branded products ‘ROOFSPAN’, ‘WALLSPAN’ and ‘COLDSPAN’.  Several large advertising devices identifying the product names were set up in the display area, and a considerable amount of brochures and information was distributed to attendees.  The display attracted hundreds of people over the course of the four events, and a significant amount of awareness and understanding of IPA’s products was created.  The cost of participating in the events, not including the set up costs associated with each display area, or the travel expenses, was $13,000.”

   (i) “Since June 2013, IPA has maintained a permanent display area at a building and renovation centre called ‘Home Base’ in Subiaco, Perth.  Home Base is the largest centre of its kind, open seven days a week to the public and featuring three levels of the latest building, renovating and design related products and services (refer to their website at: of 28 August 2014, IPA has submitted 177 quotes to over 80 companies in Australia and New Zealand for the various panel products.  ‘ROOFSPAN’ products account for 82 of the total 177 quotes.  The total value of all quotes equates to approximately $56 million, incorporating $29 million for ‘ROOFSPAN’ products alone.  All companies that have been issued quotes are aware of the specific names of the panels, as referenced in the quote itself.  Attached to this declaration and marked ‘Exhibit M’ is a detailed summary of the internal quote register maintained by IPA.  As you can see, most quotes remain active at this time.”

6. I concur, in the main, with Ms Cochrane and Mr Larish’s principal criticisms of the Opponent’s evidence going to the reputation of IPA’s Mark.  Firstly, as they noted:

   …the Opponent has not adduced evidence of any sales made before the [Filing] Date of a product featuring [IPA’s Mark].  The obvious inference to draw is that there were no such sales.

7. As regards the number and value of quotes issued by IPA (mentioned in paragraph (j) above) and listed in Exhibit M to Bowra 1, Counsels’ submission was that:

   This evidence indicates that [IPA] issued only a limited number of quotes before the [Filing] Date for products with name of [sic] [IPA’s Mark].

   There is no documentary evidence of what was contained on those quotes, including whether they feature [IPA’s Mark].

   There is no evidence that any of these quotes were accepted; indeed, the inference is that they were not, otherwise Mr Bowra would have given evidence to that effect.

   In the circumstances, the evidence is of no, or at best, exceedingly minimal weight in proving a reputation in [IPA’s Mark] at the [Filing] Date.

8. By my own reckoning Exhibit M lists some 118 quotes apparently issued before the Filing Date, of which I accept 45 were likely to have mentioned IPA’s Mark, (or that mark in combination with the trade marks Megarib or Durarib).  These 45 quotes cover the period 15 November 2011 to 23 July 2013 and, although Mr Bowra does not explain the significance of these designations, 45 are marked as “Active”, with two others “Pending” and one “Complete”.  Whether or not any of the quotes were accepted is not in my view of particular relevance here in my assessment of the likely reputation IPA’s Mark might have enjoyed at the Filing Date.  Nevertheless, while it is apparent from Bowra 1 that there may have been more awareness of IPA’s Mark in the relevant industry after the Filing Date, I do agree with Ms Cochrane and Ms Larish that merely issuing some 45 quotes over the period from 15 November 2011 to the Filing Date in September 2013, roughly two quotes per month, is not very cogent evidence that awareness was high before the Filing Date.

9. I agree with the Applicant’s Counsel, too, that “the Opponent has adduced very limited documentary evidence of any use of [IPA’s Mark] before the [Filing] Date.”  As mentioned, much of the publicity material relied upon appears to post-date “FM certification” having been obtained some nine days before the Filing Date and, in any event, Mr Bowra does not say in what quantities any of this material may have been distributed in Australia before the Filing Date.  As to the Opponent’s website, Mr Bowra does not mention the amount of traffic it actually received from potential Australian customers before the Filing Date (or at all).  While Mr Bowra “estimate[s] that approximately $250,000 has been spent on various online and offline strategies and events”, (see paragraph (g) above), it is not possible for me to say how much of this sum was spent before the Filing Date, how much relates to Australia, or how much was spent specifically on advertising and promoting goods bearing IPA’s Mark.

10. I do note IPA’s attendance at four trade exhibitions in Australia between March and May 2012 and that its display apparently “attracted hundreds of people over the course of the four events.”  Nevertheless, given the strength of the Opponent’s evidence generally, attendance at one exhibition in each of four cities over such a brief period some 18 months before the Filing Date is not sufficient, in my estimation, to take the issue of IPA’s Mark’s reputation much further.  Without more information it is likewise impossible to assess with any certainty what contribution IPA’s permanent display at a large building and renovation centre in Perth since June 2013 might have made to the reputation of IPA’s Mark as at the Filing Date.  I do however note that Mr Bowra does not mention any instances of apparent confusion between IPA’s Panels and the Applicant’s ROOF-SPAN branded goods amongst attendees of the four trade exhibitions mentioned or IPA’s permanent display in Perth.

11. In summary, I cannot be satisfied on the evidence before me that IPA’s Mark had sufficient reputation amongst actual or potential consumers of the Applicant’s “metal roofing and/or walling material[s]” as at the Filing Date for the Opponent successfully to rely on s 60 of the Act. The Opponent has accordingly not established its ground of opposition under s 60.

    Section 62A

12. Section 62A of the Act is reproduced below:

    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.

13. The ground based on s 62A of the Act is indicated in the SGP as follows:

    Application made in bad faith - Section 62A

14. The ground is further particularised in the SGP as follows:

    [The Opponent] is opposing registration of trade mark number 1578456 as it is believed that the application was made in bad faith. As outlined in section 59 above, [the Applicant] has allegedly been manufacturing the “Roof-Span” product for “more than 10 years”. Only now, when [the Opponent] has created market awareness of their products “Roofspan”, “Wallspan” and “Coldspan”, invested a substantial amount of money in branding and advertising, and established successful commercial relationships, has [the Applicant] made the decision to apply for registration of the word “Roof-Span”. Please refer to Appendix A for further detail.

15. As far as it relates to the s 62A ground, Appendix A to the SGP continues:

    Furthermore, an online search for the term “Roof-Span”, and in particular its use by [the Applicant] and its operating companies, has provided nil results.  It is believed that there is limited market awareness, both online and offline, of the product term “Roof-Span” associated with [the Applicant] and its operating companies.  [The Opponent] considers that the application was made by [the Applicant] in direct response to the awareness and success that [the Opponent] has created since November 2011 for the “Roofspan”, “Wallspan” and “Coldspan” products, despite the inherent differences in function and form between [the Applicant’s] and [the Opponent’s] products.

16. The Opponent’s reliance on s 62A for the reason indicated in its SGP is on the face of it misconceived. As set out in paragraph 11 above in connection with the Opponent’s s 59 ground, s 27(1) says that a person may apply for the registration of a trade mark in respect of goods and/or services if the person claims to be the owner of the trade mark and if, inter alia, it is using or intends to use the trade mark in relation to those goods and/or services, or if it has authorized or intends to authorize another person to do so.  As already indicated, I am satisfied the Applicant has continuously used, or authorized use of, the Opposed Mark for relevant goods since well before IPA commenced use of IPA’s Mark and that it is accordingly the owner of the Opposed Mark for the goods covered by the opposed application.

17. The application of s 62A was discussed in some detail by Dodds-Streeton J of the Federal Court in Fry Consulting Pty Ltd v Sports Warehouse Inc (No 2) (“Fry”)[14] and again more recently by Bennett J in DC Comics v Cheqout Pty Ltd.[15]  In Fry, Dodds-Streeton J noted, inter alia, that:

    The formulation in United Kingdom authority of bad faith as falling short of the standards of acceptable commercial behaviour observed by reasonable and experienced persons in a particular area is, in my view, an apt touchstone.

    [14] (2012) 94 IPR 551.

    [15] (2013) 101 IPR 334.

18. On the evidence before me I could not characterise the Applicant’s behavior in filing the opposed application as falling within this description.  In this regard I agree with the submission by Ms Cochrane and Mr Larish that, based on the evidence:

    …it is clear that the Applicant saw registration of the [Opposed] Mark as a means of protecting its proprietary rights, which, given the burgeoning size of sales of the [Applicant’s relevant Class 6 goods], was a commercially sensible approach. … In these circumstances, and in the absence of any evidence to the contrary, any suggestion that registration occurred [sic, “that application was made” was obviously intended] in bad faith must be rejected.

19. To conclude, I am satisfied the Opponent’s allegation of bad faith is without merit and I thus find that the Opponent has not established its s 62A ground of opposition.

    Decision

20. Section 55(1) of the Act relevantly provides that, 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.

21. I have found the Opponent has not established any of the grounds nominated in its SGP.  Application 1578456 may accordingly proceed to registration 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 the appeal has been decided or discontinued.

    Costs

22. In the event of success Ms Cochrane and Mr Larish requested an award of costs in the Applicant’s favour. As the successful party, the Applicant is so entitled and I accordingly award costs against the Opponent as per Schedule 8 of the Regulations.

    Michael Kirov
    Hearing Officer
    Trade Marks Hearings
    12 July 2016