Safety Step (NZ) Limited v Illinois Tool Works Inc

[2007] ATMO 78

TRADE MARKS ACT 1995
DECISION OF A DELEGATE OF THE REGISTRAR OF TRADE MARKS WITH REASONS

Opposition by SAFETY STEP (NZ) LIMITED to Trade Mark Application 991578 (2,6,17,19) - SAFE STEP - in the name of  ILLINOIS TOOL WORKS INC.

Delegate:	Debrett Lyons
Representation:	Opponent: Elisa McCutcheon of IP Gateway, Patent & Trade Mark Attorneys Applicant: Margaret Ryan of Phillips Ormonde Fitzpatrick, Patent & Trade Mark Attorneys
Decision:	2007 ATMO 78 s. 52 opposition: Sections 41, 42, 43, 44, 58, 59, 60 and 62 not establish; Section 41(1) applicable to some overlapping goods however section 44(3)(a) successfully raised by applicant who showed honest concurrent use of the trade marks Costs:  Opponent ordered to pay Applicant’s costs

Background

1. Illinois Tool Works Inc. (‘the applicant’) filed a trade mark application, details of which are set out below:

Application No.:	991578
Priority Date:	2 March 2004
Goods :	Class: 2 Paints, varnishes, lacquers; preservatives against rust; raw natural resins; metals in foil and powder form for painters and decorators; paints, varnishes, lacquers having anti-slip properties; anti-slip sprays and coatings in the nature of paints; primers; epoxy resins for use in covering floors; epoxy resin anti-slip floor coverings; epoxy resins for use in repairing floors and flooring; epoxy resins for use in repairing concrete and asphalt Class: 6 Anti-slip panels, boards, blocks, tiles and tile floorings for building construction; anti-slip stairs, stair treads, and stair inserts; all predominantly of metal Class: 17 Rubber, gutta-percha, gum, asbestos, mica and goods made from these materials and not included in other classes; rubber, gutta-percha, gum, asbestos, mica and goods made from these materials and not included in other classes having anti-slip properties; anti-slip tapes; self-adhesive anti-slip tapes Class: 19 Anti-slip coatings for floors, paths, roads, decks, ramps, stairs; anti-slip panels, boards, blocks, tiles and tile floorings for building construction; anti-slip stairs, stair-treads, and stair tread inserts and anti-slip tread inserts in the form of self-adhesive tapes
Trade Mark :	SAFE  STEP       (‘the trade mark’)
Endorsements :	Provisions of paragraph 44(3)(a) applied

1. The application was accepted for possible registration. Safety Step (NZ) Limited (‘the opponent’) then filed a Notice of Opposition under section 52 of the Trade Marks  Act 1995 (‘the Act’), objecting to registration of the trade mark.  Both parties served and filed evidence in accordance with the Trade Marks Regulations 1995.

2. The parties asked to be heard and the matter was set down before me, Debrett Lyons, a delegate of the Registrar of Trade Marks, for a Hearing on 23 July, 2007 in Brisbane.  The applicant was represented by Margaret Ryan of Messrs. Phillips Ormonde Fitzpatrick and the opponent was represented by Elisa McCutcheon of IP Gateway.

   Submissions and Reasoning

3. At the Hearing, the opponent indicated that it would attempt to establish grounds of opposition under sections 41, 42, 43, 44, 58, 59, 60 and 62 of the Act.

4. The evidence relied on by the parties, all in the form of Statutory Declarations, is tabulated below:

Declarant	Exhibits	Date
Evidence in Support
Steven Graham Quinn	A - G	27 February 2006
Evidence in Answer
James Mungall	JM-1   -   JM5	30 June 2006
James Mungall	1 -  3	2 March 2007

1. The opponent bears the onus of establishing at least one of its grounds of opposition (Registrar of Trade Marks v. Woolworths Ltd (1999) 45 I.P.R. 411; Lomas v. Winton Shire Council [2003] AIPC 91-839 at 36). Having heard the parties, I have determined that my decision is most logically structured by first assessing the claim under section 44 (the trade mark is substantially identical or deceptively similar to an earlier trade mark application or registration), followed by my assay of the opponent’s claim to reputation in that other trade mark, then the remaining grounds.

   Section 44

2. Section 44 of the Act relevantly provides:

   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)the applicant’s trade mark is substantially identical with, or deceptively similar to:

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

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

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

   Note 1:For deceptively similar see section 10.

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

3. To establish this ground the opponent must show to my satisfaction that it ( or indeed, a third party) owns a registered or pending trade mark which:

   ·     has an earlier priority date than the application;

   ·     is substantially identical or deceptively similar to the application;  and which

   ·     has a specification of goods or services which are similar or closely related to that of the application.

4. The opponent is the proprietor of trade mark registration 757965 (‘the registration’), details of which are:

Trade Mark :	SAFETY  STEP
Priority Date:	23 March 1998
Goods :	Class: 19 Building products being antislip treatments for floors, stairs, steps and ladders including stair nosings, ladder nosings, vehicle tread nosings, non-slip plates and treads

1. The registration pre-dates the priority date of the application and the applicant conceded at the Hearing that the trade marks are deceptively similar.  The remaining question is whether the goods are similar.

2. The class 19 goods of the registration do not conflict with all the goods of the application.  Many of those goods would be acceptable for registration without there being any conflict with the opponent’s rights.

3. The applicant submitted that ‘there is some overlap between the goods the subject of the Opponent’s prior registration 757965 and the goods in class 19 of the subject application … however this does not include “anti-slip coatings for floors, paths, roads, decks, ramps, stairs” in class 19 of the subject application which are of a very different nature to “stair nosings, ladder nosings, vehicle tread nosings, non-slip plates and treads” of the Opponent’s registration.  Anti-slip coatings are painted onto a surface whereas stair nosings, etc. are physical items that are attached to a surface.’

4. I need not decide the merits of that submission now since it is clear to me, as it was to the examiner, that section 44(1) is satisfied for at least some of the goods of the application.

   Section 44(3)(a) : Honest Concurrent Use

5. It is noted that the application was accepted under the provisions of section 44(3)(a) of the Act which states:

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

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

   (b)  …

   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.

6. The opponent submits that the application ‘was accepted in error and that the requirements of honest concurrent use were not properly made out.  The evidence does not justify acceptance of the opposed application in connection with the goods claimed.’  Clearly that submission overstates the case for reasons just given.  Nevertheless, it does set in motion a proper train of enquiry into a number of issues which were considered at length in the case of McCormick & Co Inc v McCormick (2000) 51 IPR 102.

7. McCormick re-affirmed that in exercising the discretion given to the Registrar under section 44(3)(a), the principal, but not exhaustive, guidelines for determining whether registration should be permitted were:

   (1)  the honesty of the concurrent use;
   (2)  the extent of the use in terms of time, geographic area and volume of sales;
   (3)  the degree of confusion likely to ensue between the marks in question;
   (4)  whether any instances of confusion have been proved; and
   (5)  the relevant inconvenience that would ensue to the parties if registration were to be permitted.

8. Importantly, McCormick also considered the interrelationship of sections 44 and 60 of the Act, deciding that:

   Within Division 2 of Part 4, s 44(1) provides for a ground for rejecting an application before acceptance by the Registrar. Subsection 44(1) expressly states that it is subject to s 44(3), the honest concurrent user provision. The whole of s 44 is expressed as an interlocking series of subsections. Section 60, which is part of a Division specifically setting out the grounds for opposing registration, is directed to the position after acceptance. Section 60 is not expressed to be subject to s 44(3), any analogous limitation, or even the Act generally: contrast s 89(1). On its face, it is a stand-alone provision. Furthermore, s 60 is apparently intended to afford a ground of opposition that is additional to the grounds set out in Part 4. Section 57 expressly states that the grounds of opposition may be "any of the grounds on which an application for the registration of a trade mark may be rejected under Division 2 of Part 4" (which includes s 44). Sections 58 to 62 add further grounds for opposition. On its face, there is no honest concurrent user exception to s 60.

   94 Further, there are pertinent differences between s 44(1) and s 60. Subsection 44(1) requires a comparison of the applicant's mark with the mark of another person and the goods to which they both apply. If the Registrar concludes the marks are deceptively similar and the goods to which they apply are goods of the same description (and par 44(1)(b) is satisfied), then the registration application must be rejected; that is, of course, unless, in an exercise of discretion under s 44(3), the Registrar determines to permit the registration. Section 60 also requires a comparison, this time between the accepted mark and a mark that, before the relevant date, had acquired a reputation in Australia. If the marks are deceptively similar, then the question is whether the use of the mark, which has been accepted, would be likely to deceive or cause confusion, because of that reputation. Under s 60, the new inquiry centres on the reputation of the earlier mark. That reputation is critical to the opposition under s 60: contrast s 28 of the 1955 Act and see Carnival Cruise Lines Inc v Sitmar Cruises Ltd (1994) 120 ALR 495 at 504 per Gummow J.

   95 These differences may reflect the different stages of the registration process at which the questions of deceptive similarity and confusion arise. In this connection the observations of Branson J in Woolworths at 389-390 are apposite. Her Honour said:

   The broad provision contained in s 28(a) of the 1955 Act is now reflected in two separate sections of the Act: ss 43 and 60. Section 43, which is a ground for the rejection of an application for registration of a trade mark, looks to the inherent qualities of the trade mark of which registration is sought for the purpose of identifying whether the use of the trade mark would be likely to deceive or cause confusion. Section 60, which is a ground of opposition to registration, is concerned with whether the use of the trade mark of which registration is sought would be likely to deceive or cause confusion by reason of the reputation in Australia of another trade mark.

   The fact that s 43 is found in Pt 4, Div 2 of the Act, whilst s 60 is found in Pt 5, Div 2, reflects, in my view, an appreciation of the practical reality that before the acceptance for registration and advertising of an application for registration of a trade mark, the information available to the Registrar touching on issues of likely deception and confusion will be limited. The Registrar will be in a position to assess the extent to which the trade mark for which registration is sought resembles a registered trade mark. He or she will also be in a position to appreciate the proper uses which may be made of the registered trade mark on the one hand, and of the trade mark for which registration is sought, should it be registered, on the other. However, the Registrar cannot reasonably be expected to be cognisant of the reputation of registered and unregistered trade marks generally or, indeed, of the extent, for example, to which all Australians, whose circumstances and geographic locations are diverse, may be assumed to be familiar with particular words. As French J has pointed out, the acceptance stage is not the time for detailed adversarial examination of an application.

   The position will change following the filing of a notice of opposition to registration. An opponent is entitled to rely on evidence in support of the opposition and the applicant for registration may rely on evidence in answer to the opposition. By this means, material which could not ordinarily be expected to be available to the Registrar for the purpose of determining whether an application for registration of a trade mark should be accepted, may become available to him or her for the purpose of determining whether the trade mark should be registered.

   The provisions of Part 8, especially s 88(2) and s 89, concerning amendment and cancellation of registration perhaps confirm her Honour's analysis, by showing the new legislative response to the situation considered in NSW Dairy. See also Janice Luck, "Distinctiveness, Deceptive and Confusing Marks under the Trade Marks Act 1995" (1996) 7 Australian Intellectual Property Journal 97 at 100-101.

   96 Whilst I accept, as counsel for Mary McCormick contends, that the doctrine of honest concurrent user is derived from the common law and pre-dates trade mark legislation, I am of the view that s 44(3) of the Act does not provide an exception to s 60.

9. Accordingly, I turn to consider the reputation of the opponent's trade mark before further discussion of the merits of the opposition under section 44 and counter arguments under section 44(3) and separately, too, from any final decision in relation to the section 60 or other claims where the reputation of the opponent’s trade mark is a material consideration.

   Reputation of Opponent’s Trade Mark

10. Mr Steven Quinn is the General Manager of the opponent.  He declares that the opponent specializes in underfoot safety products and that products of that general nature have been sold in Australia under the trade mark SAFETY  STEP since 1997.

11. Sales have been modest.  In 1997, the sales figures given by Mr Quinn are $2,500 to $5000, rising by the priority date of the application to $30,000 to $35,000.  The latter figures are said to represent sales of approximately 500 units per annum.

12. Mr Quinn declares that in 2003 – 2004, 60% of all sales were via the opponent’s website.  A limited selection of product brochures, said to be in use in Australia by the opponent or its agent or distributor before the priority date, are in evidence but of themselves they are not indicative of any significant local marketing activity.

13. Mr Quinn describes the opponent as ‘a small New Zealand company’ with ‘limited resources for brand promotion’ which at certain times has suffered ‘low sales activity’ and resultant local agency substitutions.

14. Even bearing in mind the specialized nature of the opponent’s products, there is nothing in this evidence which would cause me to think that the opponent enjoyed a reputation in its trade mark in Australia at 2 March 2004. As such, I return to the applicant’s section 44(3)(a) claim and to an assessment of the criteria set out in paragraph 16 above.

    The Honesty of the Applicant’s Use

15. In the United Kingdom case of In Re Parkington & Co Ltd's Application (1946) 63 RPC 171, Romer J said of an equivalent provision, at 181-182:

    [T]he circumstances which attend the adoption of a trade mark in the first instance are of considerable importance when one comes to consider whether the use of that mark has or has not been a honest user.

16. The mere fact that the applicant may have known of the opponent’s trade mark does not preclude a finding of honesty: see Baume & Co Ltd v Moore (A H) Ltd [1958] RPC 226 at 235; [1958] Ch 907 at 921 and Joseph Rodgers & Sons Ltd v W N Rodgers & Co (1924) 41 RPC 277 at 291.

17. The applicant does not adduce any direct evidence that it was unaware of the opponent or the opponent’s trade mark.  Nonetheless, there is relevant inferential evidence in the declarations of James Mungall.

18. Mr. Mungall is the General Manager of ITW Polymers & Fluids, a division of ITW Australia Pty Ltd (‘ITWA’), itself a wholly owned subsidiary of the applicant.  He has held that position since 1999.  In a declaration dated 11 April 2005[1] he states that ‘in my time at ITW there has never been any objection from Safety Step (NZ) Limited … to ITW and/or ITWA’s use of the trade mark SAFE STEP in Australia.  Mr. Mungall adds that goods bearing the SAFE STEP marks have been sold in Australia since August 1998 without any third party objection or instances of confusion.

    [1] Sworn and filed during the prosecution of the application in aid of acceptance by the examiner under section 44(3)(a).

19. For the most part, the exhibits to the Mungall declarations showing use of the applicant’s trade mark, bear the maker’s name, Rocol, or are printed from the website, Mr. Mungall explains in his 2007 declaration that Rocol Site Safety Systems is a division of the applicant operating in the United Kingdom.  He states that the trade marks ROCOL and SAFE STEP and ROCOL SAFE STEP have been used in the United Kingdom since August 1990.

20. The 2007 declaration exhibits a copy of United Kingdom trade mark registration 1474582 for ROCAL SAFE STEP.  I note that this mark was registered on 23 August 1991.  I also note that the original proprietor was Rocol Limited.  Mr. Mungall gives no explanation of the relationship between that company and Rocol Site Safety Systems.  Instead, he explains that Rocol Limited was a wholly owned subsidiary of another company, The Morgan Crucible Company PLC.  He goes on to state that ‘all rights in Rocol Limited have since been assigned from The Morgan Crucible Company PLC to ITW’ (the applicant).  Mr. Mungall purports to exhibit information from the UK Trade Marks Office website indicating that registration 1474582 was assigned from Rocol Limited to the opponent but from my examination of the relevant evidence no such thing is shown.

21. It is within my powers to make limited enquiries into matters of public record.  Despite the patent inadequacy of the evidence just described, my own consultation of online records of the UK Trade Marks Office shows that registration 1474582 was assigned to the applicant on 7 April 1999.

22. The 2007 Mungall Declaration also exhibits a copy of a statutory declaration of George Tinker, Finance Director and Company Secretary of Rocol Limited, which attests to the first use of the trade mark ROCOL SAFE STEP in the UK in August 1990.

23. Based on these pieces of information, the conclusion I reach is that the applicant honestly adopted the trade mark and made honest use of it in the UK since both the UK registration and the UK use both significantly predate the first use the opponent’s trade mark in 1997 as declared by Mr. Quinn and the priority date of the opponent’s registration, 23 March 1998.  I make this finding notwithstanding the fact that the UK registration and first use of the trade mark was in conjunction with the word ROCOL.

1. Nonetheless, the honesty of the applicant’s use of the trade mark in Australia still requires examination.

2. Mr. Mungall declares that he was not aware of any other party using the same or a similar mark to SAFE STEP at the time Rocol began exporting goods to ITW Polymers & Fluids.

3. He declares that ‘Rocol has exported goods under the trade marks ROCOL or SAFE STEP or a combination of both since late 1997 early 1998 to ITW Polymers & Fluids’.  That statement is unsatisfactory for obvious reasons.  I note, however, that the 2005 Mungall Declaration carries evidence of two early sales of ROCOL SAFE STEP products in Australia, occurring on 13 and 14 August 1998.  In each case, two units are sold with a value of $115 and $96 respectively.

4. In that same 2005 declaration, this is some evidence of Australian trade magazine advertisements from 1998, introducing the new range of SAFE STEP products.  Virtually contemporaneous advertisements refer to the products as coming from Rocol on the one hand, and from The Morgan Crucible Company, on the other.

5. Some of the remaining product brochures in evidence showing the trade mark refers to another, unexplained manufacturer by the name of Epirez.

6. Notwithstanding the vagrancies of the evidence which I have highlighted, I am on balance satisfied that the applicant honestly adopted the trade mark for use in Australia.

7. The argument sometimes run that the honesty of the applicant under section 44(3)(a) is a factor of greater weight than others has been discredited (PB Foods Ltd v Malanda Dairy Foods Ltd [1999] FCA 1602 (17 November 1999)) and so I turn to consider the remaining issues with equal care.

   Extent of Applicant’s Use

8. Mr. Mungall declares that the applicant distributes a range of products under the trade mark SAFE STEP to many countries.  Details of those products are in evidence and can be catagorised as the goods of the application.

9. ITWA first sold anti-slip coatings and finishes in Australia under the trade mark on or about 5 August 1998 (2005 Mungall para 4).  Since then it has continued to sell those goods under the trade mark in all States and Territories of Australia.  There is evidence of the applicant’s customers throughout Australia. 

10. The goods are sold to a specialist audience and, against that setting, sales have been substantial.  In the first year, 1998, sales exceeded $93,000, increasing to $160,000 by the priority date of the application.  It is fair to say that sales by the applicant have far exceeded sales by the opponent.

11. Admittedly, by the priority date, the applicant’s goods had not yet been on the Australian market five years but as Carr J. noted in PB Foods Ltd v Malanda Dairy Foods Ltd (supra):

    …Lord Hanworth MR observed in Pirie at 212:

    "It would be impossible to say that in all cases a particular span of time must be accomplished before it can be treated as justifying a user within section 21" (the then equivalent in the United Kingdom of s 34(1) of the 1955 Act).

    Confusion from the Resemblance of the Trade Marks

12. In McCormick (supra), it was said that:

    The very existence of an honest concurrent use exception implies a toleration of a degree of confusion: see, e.g., In Re Alex Pirie & Sons Ltd's Application (1932) 49 RPC 195 at 206; 49 RPC 207 at 213-4 and In Re `Buler' Trade Mark [1975] RPC 275 at 289. Registration has proceeded where there has been little evidence of actual or extensive confusion. In Jean Patou Parfumeur v Crisena Corp Pty Ltd (1990) 20 IPR 660 at 664-5, for example, it was held that the likelihood of confusion arising from the concurrent use of the marks in question was not particularly high, given that one mark was directed to the expensive and exclusive end of the market and the other to the inexpensive end enjoyed by the general public. See also Aromas at 88 and Emdon Investments Pty Ltd v Shell International Petroleum Co Ltd (1988) 12 IPR 525 at 534. Registration has also been permitted where the likelihood of confusion was extremely high: see No Name Restaurants Pty Ltd v No Name Restaurants (Cesare) Pty Ltd (1996) 36 IPR 488 at 497. In Buler, Graham J observed at 289:

    [T]he degree of likely confusion is relatively unimportant ... provided the honesty of the applicant [for registration] is established and it is otherwise just in all the circumstances that his mark should be registered.

    In assessing the likelihood of confusion, one must assume the use of the marks in a normal and fair manner: see Simac at 84, Bali Trade Mark (No 2) [1978] FSR 193 at 219, and Woolworths at 383 and 391. One must therefore consider what use the parties could make of their marks.

13. There is no evidence of actual confusion in the time that the two product ranges have been sold in Australia.  Mr. Quinn does not point to any confusion and Mr. Mungall states that the trade mark has been used since August 1998 without any third party objection or any reported instances of confusion.  The opponent itself has not objected to use of the trade mark other than in these proceedings.

14. It is admitted by the applicant that the two trade marks are deceptively similar and that there is an overlap between the goods of the registration and the goods of the application.  The applicant argues, however, that the trade marks are not substantially identical.  I accept that argument (see Shell Co of Australia Ltd v Esso Standard Oil (Australia) Ltd (1963) 109 CLR 407 at 414-415). The applicant states that its goods are safety products, designed to produce anti-slip flooring and are selected with care by purchasers to ensure their suitability for purpose.

15. The opponent made much of the applicant’s admission that the trade marks are deceptively similar.  The proper enquiry before me however is the degree of confusion likely to ensue between the trade marks.  The applicant’s acceptance that the trade marks themselves are deceptively similar is not determinative of that enquiry; there is sometimes actual confusion although two marks are not deceptively similar and conversely there are occasions when in spite of the deceptive similarity of the marks themselves, there is no confusion.

16. Confusion between these trade marks is possible, but under section 44(3)(a) it is one factor to be considered and, as already noted, that possibility is not of itself necessarily fatal to the application (Canon Kabushiki Kaisha v Brook (1994) 30 IPR 525 at 532).

    Balance of Convenience

17. The rights of the parties are to be determined as at the priority date of the application (Southern Cross at 594-95; In Re Simac S p A Macchine Alimentari's Application (1987) 10 IPR 81 ("Simac") at 90-91; Aromas Pty Ltd v Aroma Coffee & Tea Co Pty Ltd (1997) 40 IPR 75 ("Aromas") at 86; and Trepper v Miss Selfridge Ltd (1991) 23 IPR 335 at 346).

18. The inconvenience to the applicant if the mark is not registered is not inconsiderable.  Its Australian sales are substantial and increasing. It has established a market since 1998 without objection from the opponent or any other party.  Its goods are sold under the trade mark in many countries and the consequences of re-branding for one jurisdiction are significant. 

19. No inconvenience to the opponent has been shown.  It has its registration and its ability to continue using its trade mark is preserved.  It has not shown that there is actual confusion and that appears to be so in spite of the fact that the evidence does not indicate to me that the Australian market has been penetrated by the parties in different geographical areas.  Moreover, the risk of possible confusion has in previous cases been tolerated.

20. Taking all these factors into account, I decide to exercise my discretion in favour of the applicant who has in my appraisal of the evidence made out a case for registration under section 44(3)(a) of the Act by showing honest concurrent use of the trade mark.

21. The ground of opposition premised on section 44(1) of the Act is therefore not established.

    Section 60

22. At the priority date of the application, section 60 of the Act provided:

    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)it is substantially identical with, or deceptively similar to, a trade mark that, before the priority date for the registration of the first‑mentioned trade mark in respect of those goods or services, had acquired a reputation in Australia; and

    (b)because of the reputation of that other trade mark, the use of the first‑mentioned trade mark would be likely to deceive or cause confusion.

    Note 1:For deceptively similar see section 10.

    Note 2:   For priority date see section 12.

23. To establish its ground under section 60, the opponent must prove a reputation in Australia in its trade mark. I have previously found that reputation did not exist on 2 March 2004 and accordingly this ground of opposition can not be established.

    Section 42

24. Section 42 of the Act provides:

    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.

25. The opponent submits that use of the opposed trade mark would be contrary to law on the basis that it is likely to cause deception or confusion in contravention of the consumer protection provisions relating to misleading and deceptive conduct under sections 52, section 53(c) and (d) of the Trade Practices Act 1975.  It is argued that use of the trade mark would, by reason of the opponent’s prior use and reputation in its trade mark, cause or be likely to cause consumers to believe that the applicant’s goods have a sponsorship, approval, or license they do not have, or are in some other way connected to the opponent.

26. Once again, in the absence of a proven reputation in the opponent’s trade mark, this ground is not established.

    Section 43

27. Section 43 of the Act provides:

    43  Trade mark likely to deceive or cause confusion

    An application for the registration of a trade mark in respect of particular goods or services must be rejected if, because of some connotation that the trade mark or a sign contained in the trade mark has, the use of the trade mark in relation to those goods or services would be likely to deceive or cause confusion.

28. This ground of opposition was not helpfully articulated at the Hearing and I refer to what was said by Gyles J. in Pfizer Products Inc v Karam [2006] FCA 1663 (1 December 2006):

    ‘Connotation’ is a secondary meaning implied by the mark. The likelihood of deception or confusion must flow from the secondary meaning inherent in the mark itself. It is apparent that the underlying purpose of s 43 is a similar purpose to that lying behind ss 52, 53 and 55 of the Trade Practices Act 1974 (Cth). It is to prevent the public being deceived or confused as to the nature of the goods offered by reason of a secondary meaning connoted by the mark in question, rather than, for example, deception by reason of similarity with other marks (TGI Friday’s Australia Pty Ltd v TGI Friday’s Inc [2000] FCA 720; (2000) 100 FCR 358 at [43]; McCorquodale v Masterson [2004] FCA 1247; (2004) 63 IPR 582; at [25]–[26]).

29. This ground is not established since there is no evidence that there is any inherent secondary meaning implied by the trade mark.

30. The remaining grounds of opposition are almost entirely lacking in merit and I will deal with them summarily.

    Section 41

31. Section 41 of the Act provides a scheme for the assessment of the inherent capacity of a trade mark to distinguish the goods of one trade from the similar goods of another trader. If the trade mark is found to lack inherent capacity to distinguish, section 41 also provides a scheme for the assessment of whether the trade mark has acquired capacity to distinguish the goods through its use in trade.

32. The opponent submits that the opposed trade mark is not capable of distinguishing the goods of the application because the trade mark is distinctive of the goods of the opponent. Consumers would associate the goods with the opponent and would incorrectly infer that the goods carrying the trade mark are associated with, or in some way connected with, the goods of the opponent.

33. There is no foundation for that argument in view of my other findings.

    Section 58

34. Section 58 of the Act provides that the registration of a trade mark may be opposed on the ground that the applicant is not the owner of the trade mark.

35. The opponent submitted that the applicant is not the first user of the trade mark in Australia, that the trade marks are substantially identical, and that the trade marks are applied to the same kind of goods.

36. I have previously indicated that the trade marks are not substantially identical and so this ground of opposition is not established.

    Section 59

37. The opponent claimed that the Mungall declarations do not support an intention to use or authorize use of the trade mark in Australia in relation to the breadth of the goods claimed in the application.

38. There is nothing in the Mungall declarations to support that conclusion and I find that this ground of opposition is not established.

    Section 62(b)

    62  Application etc. defective etc.

    The registration of a trade mark may be opposed on any of the following grounds:

    (a)…

    (b)that the Registrar accepted the application for registration on the basis of evidence or representations that were false in material particulars.

39. The opponent submits that the application should not have been accepted on the basis of honest concurrent use under section 44(3)(a).

40. That aspect of the matter has been analysed in detail above and I find nothing in the evidence or representations made to the Registrar to suggest a material falsity.  This ground of opposition is not established.

    Decision

41. Section 55 of the Act provides:

    Decision

    55. 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.

42. No ground of opposition has been established and so I direct that the application be registered 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 discontinued, or in the event of a decision from the Court, that the application be subject to its orders.

    Costs

43. Both parties requested their costs in the matter. The opposition having not been established, I order that the opponent pay the applicant’s costs according to the official scale.

    Debrett Lyons
    Hearing Officer
    Trade Marks Hearings
    27 November 2007