Rockwool International A/S v Saudi Rock Wool Factory a Saudi Arabia limited liability company

Case •

[2023] ATMO 140

•

19 September 2023

TRADE MARKS ACT 1995



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

Re:Opposition by Rockwool International A/S to registration of trade mark application 2218007 (17) – SAUDI ROCK WOOL (Figurative) – in the name of Saudi Rock Wool Factory a Saudi Arabia limited liability company

Delegate: Nicholas Smith
Representation: Opponent: Henry Hughes IP
Applicant: Spruson & Ferguson
Decision: 2023 ATMO 140
Trade Marks Act 1995 (Cth) - section 52 opposition: ss 42(b), 44, 58, and 60 considered – none established – trade mark to proceed to registration

Background

  1. This decision concerns an opposition brought by Rockwool International A/S (‘Opponent’) to the registration of the trade mark which is the subject of the application detailed below in the name of Saudi Rock Wool Factory a Saudi Arabia limited liability company (‘Applicant’): 

Application Number:

2218007

Filing Date:[1]

12 October 2021

Goods:

Class 17: Expansion joint fillers; insulating materials; insulating felt; mineral wool (insulator); non-conducting materials for retaining heat; slag wool (insulator); soundproofing materials.

(‘Applicant’s Goods’)

Endorsements

Colour - Registration of the trade mark is limited to the colours BLACK and YELLOW as shown in the representation of the trade mark attached to the application form.

Trade Mark:

(‘Trade Mark’)

[1] Also known in this decision as the ‘relevant date’.

  1. Unless otherwise indicated, any references to sections or regulations in this decision are references to sections or regulations of the Trade Marks Act 1995 (Cth) (‘Act’) or the Trade Marks Regulations 1995 (Cth) (‘Regulations’), respectively.

  2. Following the advertisement of the application’s acceptance for possible registration, the Opponent filed a Notice of Intention to Oppose the registration followed by a Statement of Grounds and Particulars on 10 May 2022 (‘SGP’). The SGP raised grounds of opposition under ss 42(b), 44, 58 and 60. The Applicant filed a Notice of Intention to Defend on 17 June 2022.

    Evidence

  3. The Opponent filed the following evidence in support of its opposition:

    ·Declaration made on 16 September 2022 by Jens Birgersson and Kim Junge Andersen, the Chief Executive Officer and Chief Financial Officer of the Opponent, with Exhibits 1-12 (‘Birgersson-Andersen declaration’).

  4. The Applicant filed the following evidence in answer:

    ·Declaration made on 23 December 2022 by Lan Pham, an Associate employed by Spruson & Ferguson Patent and Trade Mark Attorneys, the representative of the Applicant, with Annexures LP-1 to LP-26 (‘Pham declaration’).

  5. The Opponent filed the following evidence in reply:

    ·Declaration made on 2 March 2023 by Sophia Katsoulis, a trade mark executive employed by Henry Hughes IP, the representative of the Opponent, with Exhibits 13-18 (‘Katsoulis declaration’).

  6. Once the time allowed for filing evidence had ended the parties were given an opportunity to request a hearing in this matter or a decision without hearing.  On 5 April 2023 the Opponent requested an oral hearing.  The matter was set down for a hearing by video conference on 15 August 2023 and the matter was allocated to me.  In line with usual practice, a notice was sent to the parties on 16 June 2023 which contained a schedule for the provision of written summaries of submissions to be filed prior to the hearing.  The Opponent filed written submissions on 1 August 2023 (‘Opponent’s Submissions’).  The Applicant filed written submissions on 8 August 2023.  At the hearing Elena Szentiványi and Jesse Strafford of Henry Hughes IP represented the Opponent and Lan Pham and Francesca Colubriale of Spruson & Ferguson represented the Applicant, appearing by video conference.

  7. I am a delegate of the Registrar of Trade Marks and I am to decide the opposition as required by s 55 which provides that, unless the proceedings are discontinued, dismissed, or have lapsed under s 54A 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. 

    In doing so I take account of the written record comprised of the materials mentioned in the preceding paragraphs and any oral submissions made by the parties.

    The Opponent

  8. The Opponent is a Danish company that has since 1937 produced stone wool, a product used for insulation purposes.  

  9. The Opponent is the owner of the trade marks listed in Annexure A to this decision (‘Opponent’s Trade Marks’) however the most relevant registered trade mark is trade mark number 1913458 for  with a priority date of 23 February 2017 (‘Registered Mark’).  The formal details for the Registered Mark are set out below with the endorsement ‘Colour Claimed: The mark is in RED and WHITE.’. 

Number

Trade Mark

Priority Date

Goods

1913458

23 Feb 2017

Class 6: Building materials of metal, namely, grids of metal; ceiling systems of metal for attaching ceiling panels

Class 17: Insulating materials of mineral wool; packing, stopping and insulating materials; insulants in the form of strips, felt, mats, boards, slatted mats, shaped parts for insulation and sealing against heat, cold, fire, sound, vibrations, air, light and humidity/moisture/damp/vapour, including sound absorbing materials for acoustic regulation; acoustic and thermal insulation products and articles; insulation and vapour barrier products and articles; insulation in the form of floor, wall and roof coverings; ceiling panels of mineral wool fibres; mineral wool fibres in the form of matting for insulation; mineral wool/fibres [insulators]; processed mineral fibres for use in the manufacture of seals, sealants, fillers and gaskets; boards of extruded mineral wool, shells of mineral wool, blankets of mineral wool, mineral wool stucco and mineral wool felt, loose or semi-finished granulated mineral wool and loose or semi-finished mineral wool fibres for manufacture of reinforcing and/or filling materials for insulation; insulating mineral wool fibres for use in sealing and gasketing applications in the automotive and building industry; electrical insulating boards; friction materials; mineral wool boards for ventilated constructions, for facade cladding, roofs, soffits and fascias; insulating building materials of mineral wool; wall, floor and ceiling panels, all made of mineral wool and fibres

Class 19: Building materials for road and track constructions and for fencing; processed mineral fibres for use in the manufacture of cements and plaster for building purposes; processed mineral fibres for use in the manufacture of asphalt sealants and of sealants for road construction and roofing

(‘Opponent’s Goods’)

  1. The relevant claims/statements in the Birgersson-Andersen declaration can be summarised as follows:

    ·     The Opponent has produced stone wool since 1937 and now employs more than 11,900 people across 40 countries with direct sales in 120 countries.  Since 1936 the Opponent has used the mark ROCKWOOL (‘ROCKWOOL Mark’) as a trade mark for its stone wool/mineral wool products.  The ROCKWOOL Mark is used on a variety of products and registered in a variety of jurisdictions.

    ·     The Opponent, its subsidiaries and distributors has used and promoted the ROCKWOOL Mark in Australia for stone wool products and various building materials featuring stone wool since 1990.  The Opponent sells its products through a variety of third-party suppliers.  Sales figures for the Opponent in Australia are significant and the Opponent’s ROCKWOOL product has been used in high profile commercial projects. The Opponent promotes its ROCKWOOL Mark through social media, sponsorship, its website (which since December 2018 has received 3,622 visits from persons in Australia), data sheets and other technical material provided to distributors and users of the Opponent’s ROCKWOOL stone wool products.

    ·     The Opponent has received various awards reflecting its stature in the industry. It has taken various attempts to prevent the use of the term ‘rockwool’ by third-party traders including ensuring that term is deleted from various trade mark picklists and dictionaries and replaced with the descriptive term ‘mineral wool’.

  2. The annexures to the Birgersson-Andersen declaration display various marketing material that bears the ROCKWOOL Mark, both by the Opponent and the Opponent’s distributors/resellers.  I note that much (but not all) of the material displayed either consists of the Registered Mark or the word ‘Rockwool’ alongside the device used in the Registered Mark. 

  3. The Birgersson-Andersen provides evidence of sales in Australia but, as discussed under the s 60 ground of opposition, this evidence is ambiguous. I also note that the Birgersson- Andersen declaration does not provide any evidence of the size of the market in Australia for the Opponent’s Goods, so even if I could determine the level of sales for the Opponent it would not assist me in determining the status of the Opponent in the market for insulation material in Australia.

  4. It is not necessary to summarise the Katsoulis declaration in any detail as it primarily consists of submissions responding to the Pham declaration referring to evidence given in the Birgersson-Andersen declaration and adding additional evidence of use of the Registered Mark and ROCKWOOL Mark to that provided in the Birgersson-Andersen declaration.  The Katsoulis declaration notes that in December 2022/January 2023 the Opponent wrote to the publishers of the Macquarie and Collins Dictionaries, seeking that the dictionary definitions referred to in the Applicant’s evidence be removed, and that the Opponent has taken similar steps, often successfully, with other dictionary publishers.  

    The Applicant

  5. The Applicant is a Saudi Arabian company established in 1992 which provides insulation, construction and industrial materials.  

  6. The Pham declaration commences by providing a series of extracts from the Trade Marks Register showing details of the Trade Mark, the Registered Mark, various other marks containing the word ROCK in respect of goods in classes 17 and 19 and various other marks containing the terms ‘ROCKWOOL’ and ‘ROCK WOOL’.  The Pham declaration also provides extracts from the online edition of the Macquarie and Collins dictionaries which contain the following dictionary definitions of ‘rock wool’:

    ·     ‘an insulating material consisting of wool-like fibres made from molten rock or slag by forcing a blast of steam through the liquid’ (Macquarie Dictionary)

    ·     ‘another name for mineral wool; a fibrous material that looks like spun glass, made from molten rock or slag by passing a blast of steam through the fluid; mineral wool; it is used for insulation, esp. in buildings’ (Collins Dictionary)

  7. At Annexures LP-5 and LP-6 to the Pham declaration the declarant notes that IP Australia uses the term ‘rock wool’ as a picklist item in class 17 and that there are 168 trade marks that have specifications for goods in class 17 that include the term ‘rock wool’ indicating that the term is a widely recognised descriptive term.  Indeed, the Opponent itself holds trade mark1518187 (‘HARDROCK’) for goods including ‘rock wool’.  The Pham declaration annexes various third-party documents, including insulation standards and advertisements by third-party suppliers of insulation materials in Australia which use the term ‘rock wool’ in a descriptive sense.  This includes a guide from the Insulation Council of Australia and New Zealand which defines rock wool as ‘means fibrous product manufactured by a process of blowing or spinning from a molten mass of rock.  In Australia this is usually a mix of basalt and slag.  The resultant fibres are subsequently collected as an engaged matt of fibrous product’.

  8. Paragraphs 21 to 25 of the Pham declaration state that the Applicant has promoted and sold goods by reference to the Trade Mark for some time but that the first sale of goods in Australia was in January 2019.

    Grounds of Opposition, Onus and Standard of Proof

  9. As indicated above, in the SGP the Opponent nominated grounds of opposition under ss 42(b), 44, 58 and 60. To successfully oppose the application the Opponent needs to establish one of the nominated grounds.

  10. The onus of proof in an opposition rests upon the Opponent.[2]  The relevant standard of proof is the ordinary civil standard based on the balance of probabilities.[3] The date at which the rights of the parties are to be determined is the relevant date, which is also the priority date for the purposes of ss 44 and 60.[4]

    [2] Food Channel Network Pty Ltd v Television Food Network GP [2010] FCAFC 58, [32] (Keane CJ, Stone and Jagot JJ).

    [3] Following Pfizer Products Inc v Karam (2006) 70 IPR 599, [6]-[26] (Gyles J), and Telstra Corporation Limited v Phone Directories Company Pty Ltd [2015] FCAFC 156, [133] (Besanko, Jagot and Edelman JJ).

    [4] Southern Cross Refrigerating Co v Toowoomba Foundry Pty Ltd (1954) 91 CLR 592, 595 (Kitto J), see also s 29(1) Trade Marks Act 1995 (Cth).

    Discussion

    Section 44

  11. The relevant provisions of s 44 are reproduced below:

    Section 44 - Identical etc. trade marks

    (1)Subject to subsections (3) and (4), an application for the registration of a trade mark (applicant's trade mark) in respect of goods (applicant's goods) must be rejected if:

    (a)it is substantially identical with, or deceptively similar to:

    (i)            a trade mark registered by another person in respect of similar goods or closely related services; or

    (ii)           a trade mark whose registration in respect of similar goods or closely related services is being sought by another person; and

    (b)the priority date for the registration of the applicant's trade mark in respect of the applicant's goods is not earlier than the priority date for the registration of the other trade mark in respect of the similar goods or closely related services.

    Note 1: For deceptively similar see section 10.
    Note 2: For similar goods see subsection 14(1).

    (2)…

    (3)If the Registrar in either case is satisfied:

    (a)that there has been honest concurrent use of the 2 trade marks; or

    (b)that, because of other circumstances, it is proper to do so;

    the Registrar may accept the application for the registration of the applicant's trade mark subject to any conditions or limitations that the Registrar thinks fit to impose. If the applicant's trade mark has been used only in a particular area, the limitations may include that the use of the trade mark is to be restricted to that particular area. 

    Note:  For limitations see section 6.

    (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.

    Section 10 - Definition of deceptively similar

    For the purposes of this Act, a trade mark is taken to be deceptively similar to another trade mark if it so nearly resembles that other trade mark that it is likely to deceive or cause confusion.

  12. To successfully oppose the application pursuant to s 44 the Opponent must establish the requirements of s 44(1). That is, at least one of the trade marks upon which it relies, being a trade mark registered or sought to be registered by a person other than the Applicant:

    ·     has a priority date which is earlier than that of the Trade Mark (‘the first requirement’);

    ·     is substantially identical with or deceptively similar to the Trade Mark (‘the second requirement’); and

    ·     is in respect of similar goods, and/or services which are closely related to, the Applicant’s Goods (‘the third requirement’).

  13. In the event that each of these requirements is satisfied by the Opponent it may still be possible for the Registrar to accept the application (or allow it to proceed to registration) if the Registrar is satisfied, pursuant to ss 44(3) and 44(4), that there has been honest concurrent use of the Trade Mark, other circumstances which would make registration of the Trade Mark proper, or that the Applicant has continuously used the Trade Mark beginning before the priority date of the Opponent’s relied upon mark.

  14. The Opponent has particularised the ground of opposition in the SGP by reference to the Opponent’s Trade Marks however it is only necessary to consider the Registered Mark for the purpose of the ground. In the event that I find s 44(1) not established for the Registered Mark, I would reach the same conclusion for the other Opponent’s Trade Marks, which all are significantly less similar to the Trade Mark then the Registered Mark.[5]  The Registered Mark has a priority date that is earlier than the priority date of the Trade Mark and is registered for similar goods, being insulating products, to the Applicant’s Goods.  The first and third requirements are satisfied.

    Substantially identical and/or deceptively similar

    [5] For completeness, I find that none of the other Opponent’s Trade Marks are substantially identical or deceptively similar to the Trade Mark as all the marks contain significant visual, aural and conceptual differences, indeed the only shared element between the marks is the term ‘rock’ which in the context of insulation material is descriptive.

  15. I will now consider whether the Trade Mark is substantially identical to the Registered Mark.  When considering ‘substantial identity’ in Shell Co of Australia Ltd v Esso Standard Oil (Australia) Ltd Windeyer J said:

    In considering whether marks are substantially identical they should, I think, be compared side by side, their similarities and differences noted and the importance of these assessed having regard to the essential features of the registered mark and the total impression of resemblance or dissimilarity that emerges from the comparison.[6]

    [6] [1963] HCA 66, [12].

  16. The Trade Mark and the Registered Mark are set out below:

  17. On a side-by-side comparison there are clear differences which mean that a total impression of dissimilarity emerges from a comparison of the Registered Mark and the Trade Mark being the separate devices, and the additional term ‘Saudi’.  The Opponent submits that I should discount all differences between the respective marks and limit my comparison to the terms ‘rock wool/rockwool’ as essential features.  I do not agree.  Neither of the devices are descriptive in any way and thus they are not elements that should be discounted in any way for the purposes of comparison.  I move then to consider whether the Trade Mark and Registered Mark are deceptively similar.

  18. The principal authority for guidance in determining whether trade marks are deceptively similar also comes from the judgment of Windeyer J in Shell Co (Aust) Ltd v Esso Standard Oil (Aust) Ltd:

    On the question of deceptive similarity a different comparison must be made from that which is necessary when substantial identity is in question. The marks are not now to be looked at side by side. The issue is not abstract similarity, but deceptive similarity. Therefore the comparison is the familiar one of trade mark law. It is between, on the one hand, the impression based on recollection of the plaintiff’s mark that persons of ordinary intelligence and memory would have; and, on the other hand, the impressions that such persons would get from the defendant’s [trade mark].[7]

    [7] Ibid [13].

  1. Justice Jacobson in Millennium & Copthorne International Limited v Kingsgate Hotel Group Pty Ltd summarised the principles of deceptive similarity with reference to the authorities as follows:

    Without seeking to reformulate the various statements of principle stated in the Full Court authorities, it is sufficient for present purposes to identify the critical elements which seem to me to inform the issue of deceptive similarity in the present case. There are nine elements.

    First, the judgment of likelihood of deception is a practical one. It requires an assessment of the effect of the challenged mark on the minds of potential customers: Woolworths[8] at [49]; Australian Woollen Mills[9] at 658.

    Second, the question of deceptive similarity is not to be decided by a side-by-side comparison. It is to be determined by a comparison of the impression based on recollection of the opponent’s mark that persons of ordinary intelligence and memory would have, and the impression that those persons would get from the opposed trade mark: Crazy Ron’s[10] at [73]; Shell Company of Australia Ltd v Esso Standard Oil (Australia) Ltd [1963] HCA 66; (1963) 109 CLR 407 at 415 per Windeyer J.

    Third, allowance must be made for imperfect recollection: Crazy Ron’s at [74].

    Fourth, the effect of the spoken description must be considered: Woolworths at [49]; Crazy Ron’s at [75]; Australian Woollen Mills at 658.

    Fifth, it is necessary to show a real tangible danger of deception or confusion: Woolworths at [43] and [50]; Crazy Ron’s at [76]; Southern Cross Refrigerating[11] at 594 – 595.

    Sixth, a trade mark is likely to ‘cause confusion’ if the result of its use will be that a number of persons are ‘caused to wonder’ whether the two products come from the same source: Woolworths at [50]; Southern Cross Refrigerating Co at 595. This test sets a lower threshold than that which is required to establish that conduct is likely to mislead or deceive under s 18 of Schedule 2 of the Competition and Consumer Act 2010 (Cth): see McWilliam's Wines Pty Ltd v McDonald's System of Australia Pty Ltd [1980] FCA 159; (1980) 33 ALR 394 at 398 per Smithers J.

    Seventh, all surrounding circumstances must be taken into consideration. The circumstances include those in which the marks will be used, and in which the goods or services will be bought and sold, as well as the character of the probable acquirers of the goods and services: Woolworths at [50]; Crazy Ron’s at [86] – [89]; Southern Cross Refrigerating at 595.

    Eighth, the question of whether there is a likelihood of confusion is not to be answered by reference to the manner in which a party has used the mark, but by reference to what an applicant can do. That is to say, the use to which it can properly put the mark if registration is obtained: Woolworths at [50]; Berlei Hestia Industries Ltd v The Bali Company Inc [1973] HCA 43; (1973) 129 CLR 353 at 362 per Mason J.

    Ninth, if a registered trade mark includes words which can be regarded as an ‘essential feature’ of the mark, another mark that incorporates those words may cause a tangible danger of deception or confusion by reason of consumers retaining an imperfect recollection of those words: Crazy Ron’s at [79]. However, care must be taken to not too readily characterise words in a composite trade mark as an ‘essential feature’ because to do so may effectively convert a composite mark into something different: Crazy Ron’s at [100].[12]

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

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

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

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

    [12] [2012] FCA 1022, [37]-[46].

  2. In the recent High Court case of Self Care IP Holdings Pty Ltd v Allergan Australia Pty Ltd, the Court noted the following:[13]

    In considering the likelihood of confusion or deception, "the court is not looking to the totality of the conduct of the defendant in the same way as in a passing off suit"[14]. In addition to the degree of similarity between the marks, the assessment takes account of the effect of that similarity considered in relation to the alleged infringer's actual use of the mark[15], as well as the circumstances of the goods, the character of the likely customers, and the market covered by the monopoly attached to the registered trade mark[16]. Consideration of the context of those surrounding circumstances does not "open the door" for examination of the actual use of the registered mark, or, as will be explained, any consideration of the reputation associated with the mark[17]

    [13] Self Care IP Holdings Pty Ltd v Allergan Australia Pty Ltd [2023] HCA 8, [33] (Kiefel CJ, Gageler, Gordon, Edelman and Gleeson JJ).

    [14] New South Wales Dairy Corporation v Murray-Goulburn Co‑operative Co Ltd [1989] FCA 124; (1989) 86 ALR 549 at 589 (emphasis added), approved in Henschke (2000) 52 IPR 42 at 62 [44], Hashtag Burgers [2020] FCAFC 235; (2020) 385 ALR 514 at 532 [64], Combe International Ltd v Dr August Wolff GmbH & Co KG Arzneimittel [2021] FCAFC 8; (2021) 157 IPR 230 at 238 [27], PDP Capital Pty Ltd v Grasshopper Ventures Pty Ltd (2021) 285 FCR 598 at 622 [97] (see also 626 [111]) and Swancom (2022) 168 IPR 42 at 56 [73].

    [15] Act s 68.

    [16] New South Wales Dairy Corporation v Murray-Goulburn Co‑operative Co Ltd [1989] FCA 124; (1989) 86 ALR 549 at 589.

    [17] Swancom (2022) 168 IPR 42 at 59 [89]. See also Henschke (2000) 52 IPR 42 at 62 [44].

  3. As stated above, for the purposes of considering deceptive similarity, the reputation of the Registered Mark is not a relevant factor.[18]

    [18] See Swancom Pty Ltd v The Jazz Corner Hotel Pty Ltd [2022] FCAFC 157, [93] (Yates, Abraham and Rofe JJ) and, albeit in the s 120(1) context, Self Care IP Holdings Pty Ltd v Allergan Australia Pty Ltd [2023] HCA 8, [49] (Kiefel CJ, Gageler, Gordon, Edelman and Gleeson JJ).

  4. In the present case the key similarity between all the marks is the element ‘rock wool/rockwool’.  I am satisfied by the EIA that in the context of the goods for which the Trade Mark and the Registered Mark are registered/sought to be registered and have in common (being insulation material) the word(s) ‘rock wool’/ ‘rockwool’ are descriptive of the goods, being terms that are used in dictionaries in Australia, in the market more generally (including official standards relating to insulation material released by industry bodies) and even by this office in the picklist of goods in class 17 for which a trade mark can be registered.  Notwithstanding the Opponent’s efforts in other jurisdictions to register the word ROCKWOOL as a trade mark and amend various dictionary definitions, I am not satisfied that in Australia, at the relevant date, the element shared between the marks is anything other than a descriptive term that is common to the trade.[19]  In such circumstances the presence of the common element ought to be given less weight in considering whether the respective marks are deceptively similar. 

    [19] See Deckers Outdoor Corporation v B&B McDougal [2006] ATMO 5, [34] (Hearing Officer Thompson).

  5. Justice Stephen observed[20] in Hornsby Building Information Centre Pty Ltd v Sydney Building Information Centre Ltd that:

    There is a price to be paid for the advantages flowing from the possession of an eloquently descriptive trade name. Because it is descriptive it is equally applicable to any business of a like kind, its very descriptiveness ensures that it is not distinctive of any particular business and hence its application to other like businesses will not ordinarily mislead the public. In cases of passing off, where it is the wrongful appropriation of the reputation of another or that of his goods that is in question, a plaintiff which uses descriptive words in its trade name will find that quite small differences in a competitor’s trade name will render the latter immune from action (Office Cleaning Services Ltd. v. Westminster Window and General Cleaners Ltd. (1946) 63 RPC 39, at p 42, per Lord Simonds). As his Lordship said (1946) 63 RPC, at p 43, the possibility of blunders by members of the public will always be present when names consist of descriptive words - “So long as descriptive words are used by two traders as part of their respective trade names, it is possible that some members of the public will be confused whatever the differentiating words may be.” The risk of confusion must be accepted, to do otherwise is to give to one who appropriates to himself descriptive words an unfair monopoly in those words and might even deter others from pursuing the occupation which the words describe.[21]

    [20] Albeit in relation to trade practices.

    [21] 140 CLR 216, 229.

  6. There are numerous differences between the respective marks, including the presence of the word ‘Saudi’, the different device elements, differing typefaces and the different colours for which the marks are registered (noting that each mark is subject to an endorsement limiting its mark to the colour claimed). While each of these differences is not by themselves particularly significant (noting that, for example, the word ‘Saudi’ may be descriptive of the origin of the Applicant’s Goods), taken collectively they render the respective marks not deceptively similar. Furthermore, the nature of the goods, which are goods used in significant home and commercial building products and are thus purchased with some care, suggests that purchasers will be less likely to fall into error as a result of the similarity between the particular marks. A finding of deceptive similarity in this case would in effect infer that the Opponent has a monopoly on the use of the term ‘rockwool/rock wool’ in respect of insulation material and similar goods. The Opponent does not have such a monopoly. Any confusion that might occur stems from the use of the descriptive term in the respective marks and not from the deceptive similarity of the parties’ trade marks within the meaning of the Act.

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

    Section 58 – Applicant not owner of trade mark

  8. Section 58 is reproduced below:

    Section 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.

    Note:For applicant see section 6.

  9. The owner of a trade mark is the person who first uses it in Australia, or first files a trade mark application in Australia, whichever is the earlier.  It is now well established at law that in order to succeed under this ground of opposition the Opponent must establish three factors.  These are:

    · that the Trade Mark is identical, or substantially identical, to the trade mark(s) relied upon by the Opponent (‘the first factor’);[22]

    · that the Applicant’s Goods are the ‘same kind of thing’ as the goods for which the trade mark(s) relied upon by the Opponent was used (‘the second factor’);[23] and

    ·     that a person other than the Applicant has the earlier claim to ownership of the Trade Mark based on use of the trade mark(s) relied upon by the Opponent prior to whichever is the earlier of: (a) the application to register; or (b) any actual use of the Trade Mark by the Applicant (‘the third factor’).[24]

    [22] Carnival Cruise Lines Inc. v Sitmar Cruises Limited (1994) 31 IPR 375.

    [23] Re Hicks’ Trade Mark (1897) 22 VLR 636 , 640 (Holroyd J).

    [24] Settef SpA v Riv-Oland Marble Co (Vic) Pty Ltd (1987) 10 IPR 402, 413 (McGarvie J).

  10. The ground based on s 58 was particularised in the SGP by being limited to the Opponent’s Trade Marks. I have already found in paragraphs 24 and 27 above that none of the Opponent’s Trade Marks are substantially identical to the Trade Mark. As the Opponent has failed to establish the first factor (and must establish all three factors to succeed in the s 58 ground of opposition), I find that the Opponent has failed to establish the ground of opposition pursuant to s 58.

  11. The Opponent, in its written submissions, appeared to rely on the use of the ROCKWOOL Mark as a basis for establishing the ground of opposition under s 58, which was not particularised in the SGP. At the hearing I raised this issue with the Opponent who confirmed that the s 58 ground was limited to the Opponent’s Trade Marks.

    Section 60

  12. Section 60 is reproduced below:

    Section 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.

  13. To establish a ground of opposition under s 60, an opponent must demonstrate that as at the relevant date there was another trade mark which had acquired a reputation in Australia amongst a significant or substantial number of persons in the relevant market such that use of the trade mark would be likely to deceive or cause confusion.

  14. Some of the relevant principles of s 60 are summarised in the recent case of Ragopika Pty Ltd v Padmasingh Isaac trading as Aachi Spices and Foods as follows:

    The first of these elements calls for a factual inquiry into the extent and nature of the reputation that had been acquired by the existing trade mark – here, the Aachi mark – in Australia. The second element calls for an assessment of the likelihood of deception or confusion arising from use of the new trade mark as a consequence of that reputation.

    The existing trade mark need not even be registered for s 60 to be engaged (Fry Consulting Pty Ltd v Sports Warehouse Inc [2012] FCA 81; 201 FCR 565 (Fry Consulting) at [121] (Dodds-Streeton J); Qantas Airways Ltd v Edwards [2016] FCA 729 (Qantas Airways) at [144] (Yates J)). The classes of goods and/or services in respect of which the existing trade mark has been used, and those in which the new trade mark is intended to be used, may be very relevant to the likelihood of confusion (see Qantas Airways at [143] and GAIN Capital UK Limited v Citigroup Inc (No 4) [2017] FCA 519 at [148] (Markovic J)), but the fact that the classes are not the same cannot be determinative. The reputation of the existing trade mark need not relate specifically to the goods or services that are the subject of the proposed application (Qantas Airways at [143]; Rodney Jane Racing Pty Ltd v Monster Energy Company [2019] FCA 923 (Rodney Jane Racing) at [87] (O’Bryan J)). The question is simply whether the reputation of the existing trade mark in Australia is such that the use of the new trade mark is “likely” to be deceptive or cause confusion.[25]

    [25] [2023] FCA 487, [20]-[21], (Kennett J).

  15. In McCormick & Co Inc v McCormick,[26] Kenny J considered what is intended by the word ‘reputation’ as used in s 60. Her Honour consulted the Macquarie Dictionary and on the basis of the definition provided concluded that it was ‘the recognition of the [trade mark] by the public generally’.[27]  Her Honour quoted with approval the following words of Lockhart J in Re ConAgra Inc v McCain Foods (Aust) Pty Ltd:

    [R]eputation within the jurisdiction may be proved by a variety of means including advertisements on television or radio, or in magazines and newspapers within the forum. It may be established by showing constant travel of people between other countries and the forum, and that people within the forum (whether residents there or persons simply visiting there from other countries) are exposed to the goods of the overseas owner …[28]

    [26] [2000] FCA 1335.

    [27] Ibid [81].

    [28] (1992) 33 FCR 302, 343.

  16. On the subject of reputation, Kenny J also referred to Hugo Boss AG v Jackson International Trading Co Kurt D Bruhl GmbH & Co KG , where the Registrar’s delegate observed:

    [I]t is true that the assessment of the reputation of a trade mark goes far beyond mere examination of sales or turnover of goods sold under that trade mark and contemplation of the advertising and promotional figures.

    As regards a trade mark, its reputation derives both from the quantum of sales under that mark and also its esteem, or image, projected by that trade mark. The quantum of sales, advertising and promotion contributes to the ‘recognition’ component of the trade mark’s reputation. The credit, image and values projected by a trade mark attaches to the ‘esteem’ component of the reputation as do the public events and other trader’s marks with which [the] owner of the trade marks in question chooses to associate the trade marks via sponsorships, cross-promotions, ‘contra deals’ and so forth.

    It follows that a trade mark used in relation to goods with comparatively low sales may have a high and strong reputation by virtue of the high credit or esteem in which it is held, or, conversely, that a trade mark which has very high sales may have a strong reputation notwithstanding the lack of esteem that attaches to it. The particular popular images, or sets of values, that attach to the trade mark are also, therefore, important parts of the reputation of the trade mark and may be as strong an associative force in the minds of the public as the association of the trade marks with the goods or services themselves.[29]

    [29] (1999) 47 IPR 423, 436.

  17. As stated above, in assessing reputation under s 60, what constitutes a significant or substantial number of persons in the relevant market must be considered. The case of Le Cordon Bleu BV v Cordon Bleu International Ltee[30] was decided under s 28(a) of the (now repealed) Trade Marks Act 1955 (Cth). That provision did not refer to ‘reputation’ at all, only that use of the impugned trade mark would be ‘likely to deceive or cause confusion’. Nevertheless, the words of Heerey J provide some guidance:

    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 … We are here concerned with foodstuffs sold in supermarkets, delicatessens, milk bars and other retail outlets. The relevant market is virtually the entire Australian population from early teenage years onwards.[31]

    [30] [2000] FCA 1587.

    [31] Ibid [91] (emphasis in original). Justice Heerey’s decision was overturned on appeal to the Full Federal Court, although not on the point quoted. Indeed the court specifically noted that his approach contained no error; see Renaud Cointreau v Cordon Bleu International Ltee [2001] FCA 1170, [75] (Moore, Tamberlin and Goldberg JJ).

  18. The Opponent has particularised the ground of opposition in the SGP in the manner set out below: 

    13. Contrary to Section 60 of the Act, the Applicant’s Mark is similar to the Opponent’s Trade Marks which have acquired a reputation in Australia prior to the filing date of the Application and, because of the reputation in the Opponent’s Trade Mark, use of the Applicant’s Mark would be likely to deceive or cause confusion.

    14. The Opponent is the world's leading producer of stone wool. The Opponent is the original creator, adopter and user of the trade mark ROCKWOOL which was adopted in 1936 and is in continuous global use ever since. It is pertinent to mention that the trademark ROCKWOOL is an arbitrary word resulting from juxtaposition of two ordinary English words of the dictionary; ‘ROCK’ and ‘WOOL’.

    15. The Opponent has used, and/or authorised the use of, and promoted the Opponent’s Trade Marks and the goods and services provided under those trade marks continually in Australia since at least 1990.

    16. The Opponent’s Trade Marks have been used in Australia on and in relation to a broad range of goods and services, including but not limited to:

    Building materials; insulating materials, including insulation materials for acoustic, fire, thermal and moisture control; cavity wall insulation; wall insulation; party wall fire stops; curtain wall insulation boards; curtain wall fire blocks; mineral wool; mineral wool mats; mineral wool wire mats; roofing boards; roofing insulation; infill; loose fill; cryogenic loose fill; pipe insulation materials; insulation core for sandwich panels; ceiling panels; coloured ceiling panels; acoustic ceiling panels; ceiling baffles; soffit panels; knives; and scientific and technological consultancy in the field of computer software and computer hardware regarding industrial and building construction; calculation tool.

    17. In addition to the Opponent’s Trade Marks, it uses and/or authorises the use of the trade mark ROCKWOOLTM in Australia in relation to a broad range of goods and services, including but not limited to those listed in paragraph 16 above. It also uses and/or authorises the use of the trade marks SEAROXTM and ROCKTECHTM in Australia in relation to mineral wool insulation materials.

    18. As a result of these activities, the Opponent has built up a valuable goodwill and reputation in the Opponent’s Trade Marks.

    19. The Applicant’s Mark is visually, aurally and conceptually virtually identical to the Opponent’s Trade Marks including the trade marks listed in paragraph 17 above. The Applicant’s Mark is substantially identical with or deceptively similar to the Opponent’s Trade Marks including the trade marks listed in paragraph 17 above.

    20. Any use of the Applicant’s Mark would be likely to cause deception or confusion because of the reputation which exists in the Opponent’s Trade Marks including the trade marks listed in paragraph 17 above.

    21. Registration of the Applicant’s Mark would be contrary to section 60.

  1. The SGP is confusingly drafted as it does not clearly specify which marks the Opponent seeks to claim a reputation in.  Paragraphs 13, 15, 16, 18 and 20 are particularised solely by reference to the Opponent’s Trade Marks (being the marks set out in Annexure A) while paragraph 17 refer to the use of the ROCKWOOL Mark and the SEAROX and ROCKTECH marks.  Paragraph 19 of the SGP also refers to both the Opponent’s Trade Marks and the ROCKWOOL, SEARROX and ROCHTECH marks and hence makes the, on its face quite extraordinary, claim that the Trade Mark is ‘visually, aurally and conceptually virtually identical’ to each of the trade marks referred to in the SGP, the effect of which is that the Opponent appears to assert that the trademarks SEAROX and  are virtually identical.

  2. The function of a SGP is to clearly set out the particulars of the case an Applicant has to meet and in the present case the SGP does not clearly do that. No efforts to amend the SGP to clarify these issues have been raised and the Opponent has made submissions on both the ss 60 and 42(b) grounds on the basis of the reputation of the ROCKWOOL Mark notwithstanding the that this has not been consistently and explicitly set out in the SGP. In the hearing I raised the matter with the Opponent who confirmed that its intention was to confine the case under s 60 (and s 42(b)) to the Opponent’s Trade Marks while submitting that evidence of use of the ROCKWOOL Mark (and other variants) could go to showing reputation in the Opponent’s Trade Marks, and in particular the Registered Mark. I proceed on this basis.

  3. In reviewing the evidence of use of the Registered Mark, I consider that there is some evidence of use of the term ROCKWOOL (as the Registered Mark, plain word mark and as a word mark in combination with the device element in the Registered Mark) in respect of the Opponent’s Goods and am satisfied that the Opponent has a considerable esteem in the field of stone wool and a significant global reputation with a long trading period in Australia.  However, the evidence before me indicates that the Opponent’s marketing in Australia is very limited as evidenced by the miniscule number of visitors to the Opponent’s website from Australia on an annual basis.   Much of the Opponent’s marketing consists of a sponsorship of a sailing ship in a single event in Sydney, which may have provided temporary awareness but it is unclear to what extent it assisted the Opponent in generating a reputation at the relevant date.

  4. The Opponent’s evidence is ambiguous about the level of sales figures in Australia.  The Birgersson-Andersen declaration describes the sales of ROCKWOOL products to Australia using the following notation (noting these are example figures – the exact figures are confidential) – 2019 1.111 mil EUR.  After I raised this issue in the hearing the Opponent submitted that I should read this figure as being 1.1 billion EUR while the Applicant submitted that I should read this figure as being 1.1 million EUR.  While, noting the use of the Opponent’s products on large scale projects, I am inclined to consider the former figure to be more likely, such an ambiguity should not arise on evidence presented before this office.

  5. I have also not been provided with any evidence as to the size of the Australian market for the insulation products provided by the Opponent under the Registered Mark and the likely purchasers[32] such that I can determine, based on the limited evidence provided, whether the Opponent had any reputation in the Registered Mark and how significant that reputation is.   

    [32] The Opponent’s Submissions at paragraphs 114 to 117 and 140 speculate as to the likely purchasers but no evidence suggesting, for example whether the purchasers would be more likely to be members of the public or professional and sophisticated consumers is provided.

  6. Even if I was satisfied that the Registered Mark had, before the relevant date, reputation in Australia for insulation products, sufficient for the requirements under s 60(a) I would not be satisfied that by reason of the reputation of the Registered Mark, the use of the Trade Mark would be likely to deceive or cause confusion. Discussions and decisions on the subjects of deception and confusion are legion and a good number provide relevant comments in relation to a consideration of deception and confusion for the purposes of s 60. In a case concerning infringement and passing off, Australian Woollen Mills Limited v F S Walton and Company Limited, Dixon and McTiernan JJ said the following:

    An attempt should be made to estimate the effect or impression produced on the mind of potential customers by the mark or device for which the protection of an injunction is sought. … The usual manner in which ordinary people behave must be the test of what confusion or deception may be expected.  Potential buyers of goods are not to be credited with any high perception or habitual caution.  On the other hand, exceptional carelessness or stupidity may be disregarded.  The course of business and the way in which the particular class of goods are sold gives, it may be said, the setting, and the habits and observation of men considered in the mass affords the standard.[33]

    [33] (1937) 58 CLR 641, 658.

  7. In Registrar of Trade Marks vWoolworths Ltd French J highlighted the following further matters concerning confusion:

    (ii) A trade mark is likely to cause confusion if the result of its use will be that a number of persons are caused to wonder whether it might not be the case that the two products or closely related products and services come from the same source. It is enough if the ordinary person entertains a reasonable doubt.

    It may be interpolated that this is another way of expressing the proposition that the trade mark is likely to cause confusion if there is a real likelihood that some people will wonder or be left in doubt about whether the two sets of products or the products and services in question come from the same source.

    (iii) In considering whether there is a likelihood of deception or confusion all surrounding circumstances have to be taken into consideration. These include the circumstances in which the marks will be used, the circumstances in which the goods or services will be bought and sold and the character of the probable acquirers of the goods and services.[34]

    [34] [1999] FCA 1020, [25]. These considerations by French J are based on principles set out by Kitto J in Southern Cross Refrigerating Co v Toowoomba Foundry Pty Ltd (1954) 91 CLR 592, 594-5.

  8. In Pottle Productions Inc v Rute Ithalat Ve Ihracat Anonim Sirketi the delegate observed that:

    The assessment of the likelihood of deception or confusion under section 60 is informed by the strength of the reputation of the Opponent’s trade mark(s), the inherent distinctiveness thereof, the degree of similarity between the trade marks under consideration and the nexus or connection between the goods and/or services of the parties. Each of these is a variable and it is possible that a trade mark’s reputation might be sufficiently strong and the degree of similarity to an opposed trade mark be so great (particularly where the trade marks are inherently distinctive) that confusion or deception will be a likelihood where very little, if any, nexus or connection exists between the goods and/or services under consideration.[35]

    [35] [2012] ATMO 124, [40] (Hearing Officer Thompson).

  9. While it is not necessary to show that the marks are deceptively similar for the purposes of an opposition under s 60, as stated in Qantas Airways Limited v Edwards, ‘the degree of similarity between the allegedly conflicting marks will be a relevant consideration to be taken into account when considering the likelihood of confusion resulting from use of the opposed mark’.[36]

    [36] [2016] FCA 729, [142] (Yates J).

  10. In the present case, to the extent that the trade mark and Registered Mark are similar, it is due to the presence of the common elements ‘rock wool’ which are descriptive in respect of the Applicant’s Goods and the goods for which the Registered Mark may have a reputation.  I refer to the statements made by Stephen J in Hornsby Building Information Centre Pty Limited v Sydney Building Information Centre Limited[37] extracted at paragraph 33 above regarding the risk of confusion that must be accepted as a price to be paid for the advantages of a descriptive trade name.  In the present case I am not satisfied that any confusion that could arise between the Trade Mark and the Registered Mark would arise because of any reputation of the Registered Mark, as opposed to the shared use of the descriptive term ‘rock wool’ in respect of insulation products.

    [37] (1978) 140 CLR 216, 229.

  11. I find that the Opponent has failed to establish the ground of opposition pursuant to s 60.

    Section 42

  12. Section 42 is reproduced below:

    42 - Trade mark scandalous or its use contrary to law

    An application for the registration of a trade mark must be rejected if:
    (a) the trade mark contains or consists of scandalous matter; or
    (b) its use would be contrary to law.

  13. The Opponent pressed this ground of opposition solely on the basis that the use of the Trade Mark would be contrary to law (s 42(b)).  The onus is on the Opponent to establish that use of the Trade Mark by the Applicant would be, rather than could be, contrary to law on the balance of probabilities.[38]  The relevant time for assessing whether an application is contrary to law is at the relevant date but ‘looking forward to prospective conduct after registration’.[39]

    [38] Advantage Rent-a-Car Inc v Advantage Car Rental Pty Ltd [2001] FCA 683, [28] (Madgwick J).

    [39] Time Warner Entertainment Co LP v Stepsam Investments Pty Ltd [2004] 59 IPR 343, 353 (Wilcox J).

  14. The Opponent has particularised the ground of opposition in the SGP by repeating the same paragraphs as extracted under the s 60 ground above (and hence raising the same issues regarding proper particularisation) and then stating that:

    24 As a result of these activities, use of the Applicant’s Mark by the Applicant would be contrary to the Competition and Consumer Act 2010.

    25 As a result of these activities, use of the Applicant’s Mark by the Applicant would amount to the common law tort of passing off.

    26 Registration of the Applicant’s Mark would be contrary to section 42(b).

  15. I assume, though it is not particularised, that the reference to the Competition and Consumer Act 2010 (Cth) refers to s 18 of the Australian Consumer Law (‘ACL’) as this is what is reflected in the Opponent’s Submissions. As previously stated, the Opponent has failed to establish a ground of opposition under s 60. The test for misleading or deceptive conduct under s 18 of the ACL is a more stringent one than that for deception or confusion under s 60,[40] and consequently I find that the Opponent has also failed to establish that the Applicant’s use of the Trade Mark would be contrary to s 18 of the ACL.

    [40] See, e.g.: Ownit Homes Pty Ltd v Ownit Conveyancing Pty Ltd [2005] ATMO 47, [36] (Hearing Officer Williams); Parkdale Custom Built Furniture Pty Ltd v Puxu Pty Ltd (1982) 149 CLR 191, 198 (Gibbs CJ).

  16. Justice Hill in Re Equity Access Pty Ltd v Westpac Banking Corporation also addressed the relationship between s 52 of the Trade Practices Act 1974 (Cth) (the equivalent provision to s 18 of the ACL) and passing off. His Honour considered that:

    The scope for the operation of s.52 will thus be broader than that involved in the tort of passing off so that in a case such as the present where the claim is for the protection of the reputation in a name against the use of that name by another, failure to succeed under s.52 or s.53 will invariably mean that proceedings for passing off would likewise fail.[41]

    [41] [1989] FCA 506, [40] (citations omitted).

  17. For these reasons I am not satisfied that use of the Trade Mark by the Applicant would be contrary to law. Therefore, the Opponent has failed to establish the ground of opposition under s 42(b).

    Decision and Costs

  18. The Opponent has failed to establish any of the grounds of opposition it nominated in the SGP.  Trade mark application number 2218007 may proceed to registration not less than one month from the date of this decision.  If the Registrar is served with a notice of appeal before that time, I direct that registration shall not occur until either the appeal is withdrawn or discontinued.  Otherwise, the disposition of the application should be in accordance with the Court’s order or direction.

  19. The Applicant has sought an award of costs in its favour. I see no reason to depart from the general rule that costs follow the event. I accordingly award costs against the Opponent under s 221 in the relevant amounts under Schedule 8 of the Regulations.

    Nicholas Smith
    Hearing Officer
    Delegate of the Registrar of Trade Marks
    19 September 2023

    Annexure A – Opponent’s Trade Marks

Number Mark Classes Priority date
980559 ROCKFON 17, 19 9 October 2003
1445734 ROCKASSIST 42 10 January 2011
1503104 CurtainRock 17, 19 7 December 2011
1503126 RoofRock 17, 19 7 December 2011
1503127 ThermalRock 17, 19 7 December 2011
1503128 RockSafe 17, 19 7 December 2011
1518187 HARDROCK 17, 19 15 August 2012
1519292 CONROCK 17, 19 15 August 2012
1913458 6, 17, 19 23 February 2017
1920441 Hydrorock 6, 17, 19 17 April 2018
2150113 Spanrock 17, 19 20 January 2021
2150125 Lamrock 17, 19 20 January 2021

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  • Intellectual Property

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Cases Citing This Decision

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Cases Cited

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Food Channel Network Pty Ltd v Television Food Network GP [2010] FCAFC 58
Food Channel Network Pty Ltd v Television Food Network GP [2010] FCAFC 58
Registrar of Trade Marks v Woolworths [1999] FCA 1020