Screen Technics Pty Limited v S-TECH Holdings Pty Ltd

[2017] ATMO 1

TRADE MARKS ACT 1995

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

Re:Opposition by Screen Technics Pty Limited to registration of trade mark application 1412564(9, 11) - SCREENTECH - filed in the name of S-TECH Holdings Pty Ltd.

Delegate:	Jock McDonagh
Representation:	Opponent: Andrew Fox instructed by AJ Park IP Applicant: Siobhan Ryan instructed by Armour IP
Decision:	2017 ATMO 1 Trade Marks Act 1995 Section 52 opposition: sections 42, 58, 58A, 44 and 60 pressed – no grounds of opposition established – trade mark to proceed to registration.

Background

1. This matter is an opposition under section 52 of the Trade Marks Act 1995 (‘the Act’) to the registration of a trade mark filed by S-TECH Holdings Pty Ltd (‘the Applicant’). Relevant details of the application are set out below.

Trade mark:  SCREENTECH (‘the Trade Mark’)

Trade mark application no: 1412564

Filing Date:  4 March 2011 (‘priority date’)

Goods:Class 9: Electronic displays and signs, illuminated displays and signs; mobile display screens; displays for advertising, traffic control, sporting events and signalling;

Class 11: Lighting apparatus and accessories; LED lights

Endorsements: Provisions of paragraph s44(3)(a) and/or Reg 4.15A(3)(a) applied. Provisions of subsection s44(4) and/or Reg 4.15A(5) applied.

1. Acceptance of the application for possible registration was published in the Australian Official Journal of Trade Marks dated 9 January 2014. Subsequently Screen Technics Pty Limited (‘the Opponent’) filed a Notice of Intention to Oppose registration followed by a Statement of Grounds and Particulars (‘the Statement’).

2. The Applicant then filed its Notice of Intention to Defend. Thereafter the parties filed evidence in accordance with the provisions of the Trade Mark Regulations 1995 (‘the Regulations’). The Opponent subsequently requested to be heard.

3. I was appointed to hear the opposition in Canberra on 30 March 2016 as a delegate of the Registrar of Trade Marks. The Opponent was represented by Andrew Fox of Counsel, instructed by AJ Park IP. The Applicant was represented by Siobhan Ryan of Counsel, instructed by Armour IP.

4. At the hearing counsel for the Opponent raised issues relating to the standing of the Applicant. Consequently, I adjourned the proceedings until 28 July 2016 to allow the parties to seek instructions and make further submissions on the issue, when the same Counsel resumed the hearing.

5. During the course of the adjournment parties submitted declarations they sought to have admitted under the provisions of reg 21.19 of the Regulations. Such material was relevant, both parties were ultimately aware of it, and the resumed hearing was conducted on the basis that all of the material had been accepted.

Grounds of Opposition

1. The Statement nominated five grounds of opposition under the Act, being under ss, 42, 44, 58A, 58, and 60. In these proceedings, the Opponent elected to rely on all of the grounds. The onus is upon the Opponent to establish one or more of its grounds of opposition. The standard of proof required in these matters is the ordinary civil standard based on the balance of probabilities.[1]

   [1] Telstra Corporation Limited v Phone Directories Company Pty Ltd [2015] FCAFC 156, [133] affirming the approach of Gyles J in Pfizer Products Inc. v Karam [2006] FCA 1663, [26].

Evidence

1. The evidence in these proceedings consists of the following declarations:

Declarant	Position	Date Made	Exhibits
Evidence in Support
Gregory Donovan (‘Donovan 1’)	Managing Director of Opponent	22.07.14	GD-1 to GD-7
Evidence in Answer
Ian Langlands (‘Langlands 1’)	Director of Applicant	1.12.14	1 to 3
Evidence in Reply
Gregory Donovan (‘Donovan 2’)	Managing Director of Opponent	22.07.15
Additional Material
Blair Mark Bevan (‘Bevan’)	Partner AJ Park, Opponent’s attorneys	21.03.16
Ian Langlands (‘Langlands 2’)	Director of Applicant	20.05.16
Gregory Donovan (‘Donovan 3’)	Managing Director of Opponent	13.07.16

1. Each of the Donovan declarations is made by the founder and managing director of the Opponent. Donovan 1 details several trade mark registrations for SCREEN TECHNICS; however only registration 917064 (‘the cited mark’) is relevant in these proceedings as the others were filed after the priority date of the Trade Mark.

2. Donovan 1 exhibits, at GD-1, a declaration by Mr Donovan made 22 October 2013 (‘Donovan 2013’), which includes over 1,000 pages of material showing use of the Opponent’s trade mark, predominantly in relation to audio/visual projection screens and accessories.

3. Donovan 2 raises the issue of the Applicant being placed under administration, a matter since resolved during the adjournment to the current proceedings. It also raises issues of different business models between the two parties. Donovan 2 exhibits a ‘cease and desist’ letter, in answer to a suggestion in Langlands 1 that the two parties have coexisted for ten years; however, this letter was sent over a year after the priority date.

4. Donovan 2 also includes a number of examples of correspondence to the Opponent in which customers have shortened the Opponent’s name to SCREEN TECH. All examples are after the priority date.

5. Donovan 3 provides examples of the Opponent’s use of SCHREEN TECHNICS in a stylised scripts and a number of invoices and product drawings bearing the company name. Both examples date back to 1990. Donovan 3 demonstrates the Opponent’s business dealing in audio/visual screen projectors and related goods.

6. Bevan related to the issue of the standing of the Applicant raised in the initial hearing of this matter. The issue was resolved in the adjournment period, and Bevan is not relevant to any of the grounds of opposition particularised in the Statement nor was it discussed in submissions made during the resumed hearing.

7. Langlands 1 is made by the founder and director of the Applicant’s predecessor, Screen Tech Pty Ltd, and a director of the Applicant. It annexes two declarations made in the course of examination of the Trade Mark, which evidence the history of the adoption and use of the Trade Mark since 2000 in respect of illuminated signs and displays.

8. Langlands 1 also clarifies the distinction between LED signage as a form of electronic display and LED as used on flat screen televisions and computer monitors. The latter actually being LCD that use LED as backlighting.

9. Langlands 1 provides material showing use of the trade mark in relation to the specified goods in the application. Such material claims use concurrent with the cited mark in relation to projection screens and prior to such use in relation to visual displays.

10. Langlands 2 was made to answer Bevan, and is therefore likewise not relevant to the grounds of opposition.
    Discussion

Section 44 – Identical etc. trade marks

1. Section 44 of the Act relevantly states:

(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 similarsee section 10.

Note 2:       For similar goodssee subsection 14(1).

Note 3:       For priority datesee section 12.

Note 4:       The regulations may provide that an application must also be rejected if the trade mark is substantially identical with, or deceptively similar to, a protected international trade mark or a trade mark for which there is a request to extend international registration to Australia: see Part 17A.

             (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 limitationssee 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 titlesee section 6.

Note 3:       For priority datesee section 12.

1. To found the ground under section 44, the Opponent has to establish the existence of at least one trade mark registration or application for registration of a trade mark that is owned by a person other than the Applicant and which:

   ·        has a priority date earlier than that of the Trade Mark; and

   ·is registered or made in respect of the same or similar goods or closely related services; and

   ·is a trade mark substantially identical or deceptively similar to the Trade Mark.

1. The Opponent relied upon a number of its own registrations; however, as discussed earlier only one – the cited mark – has an earlier priority date. This registration had been cited against the Trade Mark during examination. The cited mark’s details are as follows:

Trade Mark No.	Trade Mark	Goods	Priority Date
917064	Class 9: Projection screens; mounts for projection screens, flat panel displays and projectors; lifting devices for screens, flat panel displays and projectors; control systems for projection screens.	19.06.2002

1. The Opponent argued that the Trade Mark was substantially identical with, or in the alternative, deceptively similar to the cited mark.

2. In submissions regarding the issue of substantial identity, Mr Fox highlighted the similarities between the marks when compared side by side, both including SCREEN and TECH. Mr Fox submitted that the total impression of each mark was the same.

3. In considering the issue of substantial identity, the comments of Windeyer J in Shell Co (Aust) Ltd v Esso Standard Oil (Aust) Ltd[2] set out the relevant test for comparison: 

   [the trade marks] 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…

   [2] (1961) 109 CLR 407 at 414-415.

4. On a side by side comparison, the differences between the trade marks are such that they are not substantially identical. These differences can be summarized as follows:

• The cited mark is visually distinguished by the shield device;

• Within the device there is a separation of the word elements ;

• Within the device the contrasting white on black/black on white presentation of the word elements;

• The word TECHNICS is different to the suffix ‘-TECH’; and

• The marked difference in pronunciation of the word elements of both trade marks.

1. I find that the Trade Mark is not substantially identical with the cited mark.

2. Deceptive similarity is defined in section 10 of the Trade Marks Act as follows:

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.

1. Deceptive similarity is to be assessed according to the tests set out in Shell Company of Australia Ltd v Esso Standard Oil (Australia) Ltd[3] at paragraph 13 per Windeyer J:

   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 television exhibitions. To quote Lord Radcliffe again: "The likelihood of confusion or deception in such cases is not disproved by placing the two  marks  side by side and demonstrating how small is the chance of error in any customer who places his order for goods with both the  marks  clearly before him . . . . It is more useful to observe that in most persons the eye is not an accurate recorder of visual detail, and that marks are remembered rather by general impressions or by some significant detail than by any photographic recollection of the whole": de Cordova v. Vick Chemical Co (1951) 68 RPC, at p 106. And in Australian Woollen Mills Ltd v. F.S. Walton & Co. Ltd. (1937) 58 CLR 641 Dixon and McTiernan JJ. said: "In deciding this question, the marks ought not, of course, to be compared side by side. 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 impression or recollection which is carried away and retained is necessarily the basis of any mistaken belief that the challenged mark or device is the same" (1937) 58 CLR, at p 658.

   [3] (1963) 109 CLR 407

2. I am to estimate the effect of the trade marks on the minds of potential customers – in other words, the assessment is to take place in the context of the marketplace for the goods.  This contextual comparison was stressed in Re Application by the Pianotist Co Ltd[4] at 380, where Parker J said: 

   You must take the two words. You must judge of them, both by their look and by their sound. You must consider the goods to which they are to be applied. You must consider the nature and kind of customer who would be likely to buy those goods. In fact, you must consider all the surrounding circumstances; and you must further consider what is likely to happen if each of those trade marks is used in a normal way as a trade mark for the goods of the respective owners of the marks.

   [4] (1906) 1A IPR 379

3. The elements relevant to the assessment of whether the trade marks are deceptively similar were stated by French J in Registrar of Trade Marks v Woolworths[5]  at paragraph 50:

   [5] [1999] FCA 1020; (1999) 45 IPR 411

   In Southern Cross Refrigerating Co v Toowoomba Foundry Pty Ltd (1954) 91 CLR 592 at 594-5, which concerned the 1905 Act, Kitto J set out a number of propositions which have frequently been quoted and applied to the 1955 Act. The essential elements of those propositions continue to apply to the issue of deceptive similarity under the 1995 Act. Applied also to service marks and absent the imposition of an onus upon the applicant they may be restated as follows:

   (i) To show that a trade mark is deceptively similar to another it is necessary to show a real tangible danger of deception or confusion occurring. A mere possibility is not sufficient.

   (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.

   (iv) The rights of the parties are to be determined as at the date of the application.

   (v) The question of deceptive similarity must be considered in respect of all goods or services coming within the specification in the application and in respect of which registration is desired, not only in respect of those goods or services on which it is proposed to immediately use the mark. The question is not limited to whether a particular use will give rise to deception or confusion. It must be based upon what the applicant can do if registration is obtained.

   In respect of the last proposition, Mason J observed in Berlei Hestia Industries Ltd v The Bali Company Inc [1973] HCA 43; (1973) 129 CLR 353 at 362:

   “...the question whether there is a likelihood of confusion is to be answered, not by reference to the manner in which the respondent has used its mark in the past, but by reference to the use to which it can properly put the mark. The issue is whether that use would give rise to a real danger of confusion."

4. Taking into account the tests outlined above, the submissions of the parties and the doctrine of imperfect recollection, I do consider that the marks in question are deceptively similar. In coming to this conclusion I have noted the degree of visual and aural resemblance of the word elements of each trade mark.

5. I have also determined that the cited trade mark is registered in respect of the same or similar goods as those of the Trade Mark. While the evidence shows that the parties are currently applying their trade marks to quite different goods, I am (in accordance with Woolworths above) required to consider the notional use of the respective trade marks to the full extent of the respective specifications of the goods. Both trade marks overlap in Class 9 electronic screens and displays.

6. Ms Ryan submitted that if s44(1) was established, the evidence established that the Trade Mark is registrable under ss 44(3) and 44(4). I am satisfied that this is the case.

7. As to ss 44(4), Langlands 1 shows that the Trade Mark has been continuously used in Australia since late 2000 in respect of electronic displays and signs, illuminated displays and signs; mobile display screens; displays for advertising, traffic control, sporting events and signalling. This use pre-dates the priority date of the Cited Mark (19 June 2002) and also the date of the Opponent’s first use in relation to visual displays, which appears to be at the earliest 2009: Donovan 1 at [19].

8. As to ss 44(3), there is evidence of use of the Opposed Mark concurrent with the use or registration of the Cited Mark in the Langland declarations.

9. The criteria in McCormick & Company Inc. v. McCormick (2000) 51 IPR 102 at [30] apply. As to these:

The honesty of the concurrent use

1. At the time of adoption of the trading name/trade mark SCREENTECH, Mr Langlands had no knowledge of the operation of any other businesses under a similar name: Langlands 1, Exhibit IDL-2 at [2].

Extent of use

1. The Trade Mark Applicant’s goods have been available throughout Australia since 2000, over 10 years prior to lodgment of the Opposed Application. Annual sales figures for the ten years preceding lodgment of the Opposed Application are set out at Langlands 1 at [10]. Annual advertising expenditure for the ten years preceding lodgment of the Opposed Application are set out at Langlands 1 at [11].

Degree of confusion likely to ensue

1. While the Trade Mark was found to be deceptively similar, for the reasons for not finding substantial identity and in the absence of any relevant and substantiated confusion over a long period of concurrent use, the degree of likely confusion is not unreasonably high.

Whether any instances of confusion have been proved

1. While the Opponent alleges instances of actual confusion in Donovan 1 and 2, such evidence is not particularly probative. The evidence largely post-dates the priority date and I give it little weight.

2. Additionally, the remaining instances do not actually show confusion in a trade mark sense. The instances show the opponent’s business name abbreviated to SCREEN TECH in correspondence correctly addressed to the Opponent.

Relevant inconvenience if registration were to be permitted

1. The Trade Mark is the Applicant’s house mark according to Langlands 1. It contends that it will be greatly inconvenienced if it is unable to protect it and control use of it. Further, the Opponent has alleged that the Applicant’s use infringes the cited mark registration.

2. The Opponent has already obtained registration for the cited mark and derivatives, including in relation to electronic displays and signs, illuminated displays and signs; mobile display screens; LED and LCD display screens and signs; displays for advertising, traffic control, sporting events and signalling.

3. Therefore, I am not satisfied that the Opponent has established this ground of opposition.

Section 58 – Applicant not owner of trade mark

1. Section 58 of the Act is reproduced below:

   The registration of a trade mark may be opposed on the ground that the applicant is not the owner of the trade mark.

2. The applicable law regarding ownership of a trade mark in Australia is well known.  As eloquently put by Hearing Officer Michael Kirov in L.T. Overseas Limited v Chemico Pty Ltd[6]  at [18]:

   The word “owner” is not defined in the Act, although there are numerous decisions where courts have considered its meaning. It is well established that in the absence of fraud the owner of a trade mark in Australia for particular goods is taken to be the first person to use it in the course of trade in Australia in relation to those goods[7] (or in relation to goods considered to be “the same kind of thing” or to apply to register it).[8]

   [6] [2008] ATMO 44

   [7] Seven Up Co v OT Ltd (1947) 75 CLR 203.

   [8] Re Hicks’ Trade Mark (1897) 22 VLR 636.

3. The reference to a trade mark includes one that is at least substantially identical to it[9]. As discussed above, the cited trade mark and the Trade Mark are not substantially identical.

   [9] Carnival Cruise Lines Inc v Sitmar Cruises Ltd [1994] FCA 936; (1994) 120 ALR 495; (1994) 31 IPR 375; [1994] AIPC 91-049

4. I am not satisfied that the Opponent has established this ground of opposition.

Section 58A – Opponent's earlier use of similar trade mark

1. A trade mark that has been accepted for registration with an endorsement under s 44(4), can be opposed on the provisions of s 58A of the Act on the basis that the owner of the earlier mark, first used the similar trade mark in respect of similar or closely related goods before the owner of the application accepted under s 44(4).

2. However, this section does not apply where the registration has been accepted under s44(3). In any event, the Opponent cannot establish first use.

3. This ground has not been established.

Section 60 - Trade mark similar to a mark that has acquired a reputation in Australia

1. Section 60 of the Act provides:

   60Trade 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

2. Concerning a trade mark’s reputation, in McCormick & Co Inc v McCormick[10] (‘McCormick’) Kenny J said at [81]:

   What is intended by the word “reputation” in s 60? The word is defined in The Macquarie Dictionary as follows:

   reputation ... 1. the estimation in which a person or thing is held, esp. by the community or the public generally; repute ... 2. favourable repute; good name ... 3. A favourable and publicly recognised name or standing for merit, achievement, etc. ... 4. The estimation or name of being, having done, etc, something specified.

   Cf. The Oxford English Dictionary. In s 60, the word is, I think, apt to refer to “the recognition of the McCormick & Co marks by the public generally”.

and Heerey J in Le Cordon Bleu B.V. v Cordon Bleu International Ltd[11] said (albeit in relation to paragraph 28(a) of the now superseded Trade Marks Act 1955) that the reputation required to be demonstrated was:

one of which a significant number of persons were aware…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.

[10] [2000] FCA 1335; (2000) 51 IPR 102; [2000] AIPC 38-192

[11] [2000] FCA 1587; (2000) 50 IPR 1

1. The reputation may be assessed by evidence of sales revenue and advertising expenditure provided by an Opponent.  In McCormick, Kenny J said at [86]:

   In practice, it is commonplace to infer reputation from a high volume of sales, together with substantial advertising expenditures and other promotions, without any direct evidence of consumer appreciation of the mark, as opposed to the product: see, e.g., Isuzu-General Motors Australia Ltd v Jackeroo World Pty Ltd (1999) 47 IPR 198; Marks & Spencer plc v Effem Foods Pty Ltd (2000) AIPC 91-560; Photo Disc Inc v Gibson (1998) 42 IPR 473; and RS Components Ltd v Holophane Corp (1999) 46 IPR 451. This Court has followed this approach as well, acknowledging that public awareness of and regard for a mark tends to correlate with appreciation of the products with which that mark is associated, as evidenced by sales volume, amongst other things. Thus, in Toddler Kindy Gymbaroo Pty Ltd v Gymboree Pty Ltd [2000] FCA 618 (“Gymboree”), Moore J accepted at [94] that the applicant had established a reputation for the purposes of s 60 solely on the basis of use and promotion of the relevant mark. Another example of this approach is Nettlefold Advertising Pty Ltd v Nettlefold Signs Pty Ltd (1997) 38 IPR 495 (“Nettlefold”), in which Heerey J relied upon the public visibility of the applicant’s marks over approximately two decades as well as a $100,000 promotional campaign in finding that a reputation for the purposes of s 28 of the 1955 Act existed.

2. Donovan 1 and 3 show that the Opponent has sold and displayed its goods since the early 1990s and has substantial sales figures for them. Donovan 1 attributes sales to the cited mark and words SCREEN TECHNICS since about 2009, while Donovan 3 attributes sales to the words SCREEN TECHNICS and the following  fancy script mark:

1. Ms Ryan submitted that the reputation demonstrated was not of the Opponent’s trade marks, rather of its business name; however, having examined the exhibited evidence in some detail, I am satisfied that trade mark use and the significant reputation of the various SCREEN TECHNICS marks has been demonstrated in the audio/visual screen and projector market, especially for home theatre and educational/training and/or corporate presentation use.

2. The real issue for this ground is whether or not the use of the Trade Mark is likely to cause confusion. I am not satisfied that this issue has been established by the Opponent.

3. The theoretical likelihood of confusion has been canvassed in the section 44 ground; however, there the principles have been applied to the notional use of the respective trade marks to the full extent of the respective specifications of the goods.

4. Under this ground of opposition, the evidence goes to the actual trade mark reputation demonstrated in the market place where the parties’ goods are being bought and sold. The evidence demonstrates to me that the parties were catering to quite distinct markets as at the priority date.

5. The Opponent’s reputation in its trade mark is limited to the audio/visual screen projector market for home theatres, boardroom presentations, and educational and training facilities. The Applicant produces and markets electronic signage that is typically used outdoors or in public places.

6. As discussed earlier, the Opponent’s purported evidence of confusion did not actually amount to confusion resulting from use as the badge of origin for relevant goods.

7. This ground of opposition has not been established.

Section 42(b): Trade mark’s use contrary to law

1. Section 42 of the Act relevantly provides:

   42 Trade mark scandalous or its use contrary to law

   An application for the registration of a trade mark must be rejected if:

   (b)       its use would be contrary to law.

2. The Opponent nominated section 18 of the Australian Consumer Law (‘ACL’), which is contravened when a party engages in conduct in trade or commerce that is misleading or deceptive, or is likely to mislead or deceive customers. There must be a ‘real but not remote chance or possibility’ of misleading or deceiving regardless of whether it is less or more than 50 percent.[12]

   [12] Global Sportsman Pty Ltd v Mirror Newspapers Ltd (1984) 55 ALR 25 at 34, per Bowen CJ, Lockhart and Fitzgerald JJ.

3. The Opponent also nominated a breach of section 29(1)(g), that the Applicant’s use of the Trade Mark would be a contravention of the ACL and amount to passing off at common law.

4. However, in the circumstances of this matter, where the Opponent has not established that the use of the trade mark would be likely to deceive or cause confusion in terms of section 60, it follows that neither can it establish that the use of the trade mark would ‘mislead or deceive’ under the ACL (or its common law equivalent), which is a higher standard. In Parkdale Custom Built Furniture Pty. Limited v Puxu Pty Limited[13], Gibbs C.J. said at [8]:

   The words of s. 52 require the court to consider the nature of the conduct of the corporation against which proceedings are brought and to decide whether that conduct was, within the meaning of that section, misleading or deceptive or likely to mislead or deceive . . . . . The words “likely to mislead or deceive”, which were inserted by amendment in 1977, add little to the section; at most they make it clear that it is unnecessary to prove that the conduct in question actually deceived or misled anyone. In McWilliams v. McDonalds [1980] FCA 159; (1980) 33 A.L.R. 394 it was rightly held by Smithers J. and by Fisher J. that to prove a breach of s. 52 it is not enough to establish that the conduct complained of was confusing or caused people to wonder whether two products may have come from the same source, and that Southern Cross Refrigerating Co. v. Toowoomba Foundry Pty Ltd (1954) 91 C.L.R. 592, a decision on the Trade Marks  Act 1905 (Cth) as amended, is distinguishable: I need not add to what their Honours said on this subject (33 A.L.R.) at 397-8 and 412-3. I agree too with those learned judges that the court must decide objectively whether the conduct is misleading or deceptive or likely to mislead or deceive, and that evidence that members of the public have actually been misled is not conclusive: see at 399-400 and 413-4. I would add that evidence that members of the public were misled, not by any conduct of the defendant, but by other circumstances for which the defendant was not responsible, would be quite irrelevant.”

   [13] [1982] HCA 44; (1982) 149 CLR 191.

5. In the same case Mason J. said at [30]:

   “. . . the onus is on the plaintiff to show that the conduct is likely to mislead or deceive. Therefore conduct which merely causes some uncertainty in the minds of relevant members of the public does not breach s. 52.”

6. Concerning the allegation of passing off: Hill J in Re Equity Access Pty Ltd v Westpac Banking Corporation[14] addressed the relationship between section 52 of the TPA 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.

   [14] [1989] FCA 506; (1989) 16 IPR 431; [1990] ATPR 40-994 at [40]

7. I am not satisfied that this ground of opposition has been established.

Decision & Costs

1. Subsection 55(1) of the Act requires me to decide either to refuse to register the trade mark, or 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.

2. The Opponent has not established any of its grounds of opposition.

3. The trade mark application may then proceed to registration one month from the date of this decision.  If the Registrar has been served with a notice of appeal before that time, I direct that registration shall not occur until the appeal has been dismissed or discontinued. Otherwise, the disposition of the application should be in accordance with the Court’s order or direction.

4. Both parties sought their costs. Costs may follow the event and I award costs against the Opponent at the scale set out in the Trade Mark Regulations 1995.

Jock McDonagh
Hearings Officer
Trade Marks Hearings
6 January 2017