Sears Brands LLC v Trio Group Australia Pty Ltd

[2014] ATMO 46

TRADE MARKS ACT 1995

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

Re:Opposition by Sears Brands, LLC to registration of trade mark application 1438235(6) - TRIO CRAFTSMAN - filed in the name of Trio Group Australia Pty Ltd.

Delegate:

Heath Wilson

Representation:

Opponent: Spiro Pappas and Myrna Taouil of Chrysiliou IP.

Applicant:  Written submissions from John O’Mahoney of Collison & Co.

Decision:

2014 ATMO 46

Opposition under section 52 of the Trade Marks Act 1995 – grounds of opposition argued under sections 44, 42(b) and 60 of the Act – section 44 established and Trade Mark refused registration.

Background

1. The following trade mark application is the subject of an opposition under section 52 of the Trade Marks Act 1995 (‘the Act’):

   Trade Mark No.: 1438235

   Trade Mark: TRIO CRAFTSMAN (‘the Trade Mark’)

   Specification of Goods:

   Class 6: Hinges, brackets, nails, fittings of metal for buildings, wire, bolts, nuts, washers, rivets, small hardware items made of metal in this class

   Owner: Trio Group Australia Pty Ltd (‘the Applicant’).

2. Following the filing of the above trade mark application on 21 July 2011, the Trade Mark was examined as required under section 31 of the Act. The Trade Mark was advertised as accepted in the Australian Official Journal of Trade Marks on 10 November 2011.

3. After an extension of time that had been granted for the purpose, a notice of opposition to registration was filed on 9 May 2012 by Sears Brands, LLC (‘the Opponent’) nominating every available ground of opposition under the Act.

4. The evidence stages of the opposition commenced. Evidence in support was filed consisting of the statutory declaration of Timothy S. Hickey (Vice President of the Opponent) dated 22 March 2013 with annexures TH-1 to TH-8 and the declaration of Paul Gripske (Director of Roy Gripske & Sons Pty Ltd – an Australian distributor for the Opponent’s goods) dated 5 April 2013 with annexures PG-1 to PG-10 (and exhibit 1).

5. The balance of the evidence in support comprised two statutory declarations, namely that of Myrna Taouil (solicitor for the Opponent) dated 7 March 2013 with annexures MT-1 to MT-7 and of Deann M Bogner (Assistant Secretary of the Opponent) dated 6 March 2013 with exhibits A to C.

6. The evidence in answer comprised the statutory declaration of George Demourtzidis (Business Manager of Trio Hinging Pty Ltd) dated 11 June 2013 with exhibits GD-1 to GD-4. No additional evidence was filed by either party. Trio Hinging Australia Pty Ltd is the former company name of the Applicant.

7. The Opponent requested a hearing which I subsequently heard on 17 April 2014 as a delegate of the Registrar of Trade Marks in Canberra. The Applicant did not appear, relying instead on written submissions previously filed by their attorney. The Opponent was represented by Spiro Pappas and Myrna Taouil of Chrysiliou IP who pressed the grounds of opposition under sections 42(b), 44 and 60 of the Act.

8. The Opponent bears the onus of establishing one of the grounds of opposition stated in the notice of opposition on the balance of probabilities.[1] As a matter of convenience, I will firstly address the ground of opposition under section 44 of the Act.

   [1] See Pfizer Products Inc v Karam [2006] FCA 1663; 237 ALR 787; (2006) 70 IPR 599; [2006] AIPC 92-146; Chocolaterie Guylian N.V. v Registrar of Trade Marks [2009] FCA 891; (2009) 180 FCR 60; (2009) 258 ALR 545; (2009) 82 IPR 13; [2009] AIPC 92-355 at [22] to [26] and NV Sumatra Tobacco Trading Company v British American Tobacco Services Limited [2011] FCA 1051; DC Comics v Cheqout Pty Ltd [2013] FCA 478; (2013) 101 IPR 334 at [13]

Reasons

1. Section 44 of the Act relevantly provides:

44Identical 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).

Note 3:For priority date see 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.

(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.

1. In pursuit of this ground of opposition, the Opponent referred to its own eight trade mark registrations comprising the word CRAFTSMAN in plain text claiming goods in classes 7, 8, 9 and 12.  One of those trade marks was filed as early as July 1956 and they all have earlier priority dates to the Trade Mark. Those trade mark registrations are: 128524, 369512, 435253, 702459, 722475, 758904, 769979 and 800645. I note that the goods of the Trade Mark are, essentially, small hardware items of metal in class 6.

Similarity of Goods

1. Some of the Opponent’s trade marks are registered for goods which are quite dissimilar to the goods of the Trade Mark. Others contain a specification that is replicated in a latter trade mark registration. I will address only those trade mark registrations with goods which are arguably similar to the applied-for goods. To that end, I have compared the goods of the Trade Mark with the goods in the specification for trade mark registrations 722475 and 769979 (CRAFTSMAN). The question is whether the following goods:

   Class 6: Hinges, brackets, nails, fittings of metal for buildings, wire, bolts, nuts, washers, rivets, small hardware items made of metal in this class

are similar[2] to any of the following goods in either of the classes below:

Class 7: Tools in this class including bench and stationary power tools and portable electric tools

Class 8: Hand tools and implements (hand-operated)

[2] See section 14 of the Act which defines ‘similar goods’ as those which are the same or of the same description as the other goods.

1. Mr Pappas argued that the applied-for goods are of the same nature, of similar uses and are bought and sold largely through the same trade channels[3] as hand tools and implements and electric (or power) tools. Mr Pappas elaborated further:

   The nature and characteristics of both parties’ goods are very similar. Both sets of goods are the types of goods traditionally found in the toolboxes of handymen. They are also traditionally found in a designated section in most families’ garages around Australia.

   …

   The purpose of both parties’ goods is the same. They are both used in the building industry and for repair and maintenance of other goods…. Nails go hand-in-hand with hammers, nuts and bolts go hand-in-hand with drills, spanners and screwdrivers and rivets go hand-in-hand with riveters.

   Both parties’ goods are sold in the same stores, and within those stores, in very close proximity to each other.  

   [3] See Re an Application by John Crowther & Sons (Milnsbridge) Ltd (1948) 65 RPC 369 (at 372).

2. Generally speaking, the NICE classification is no criterion as to whether or not two sets of goods are similar. The fact that goods reside in the same (or even in a different) class does not determine whether or not they similar. In addition, I am not in this case considering whether a raw material in class 6 (such as steel) is of the same description as tools (of steel) in class 8.[4] The particular goods under consideration before me in classes 6 and 8 are closer in similarity - but are they close enough?

   [4] In the Matter of Applications by Darwins Ld (1946) 63 RPC 1 (‘MOREX’ and ‘REX’ were found not to be deceptively similar).

3. While no single consideration (whether it be the nature of the goods, their respective uses or the trade channels through which they are bought and sold) is conclusive in itself whether goods are similar,[5] neither is it essential that all of those three criteria be fulfilled.[6] On closer analysis, the question becomes whether any small metal hardware item in class 6 is a similar good to the kind of tools used in their application. On that point, Mr Pappas submitted that hammers are sometimes sold in packs with nails and that rivet guns are often sold with packs of rivets. The latter example is perhaps more commonplace and it is also easy to envisage a scenario where a consumer with a simple DIY task at home purchases a hammer featuring a certain trade mark which is closely followed by the purchase of a packet of nails bearing another similar trade mark.  In such a situation a consumer is likely to have cause to wonder whether there is a business association between the two brands. While the nature of these goods is different, their purposes do coincide and both products would be sold via the same trade channels to the same class of customer. If the trade marks are deceptively similar, that is where the deception or confusion between the trade marks is likely to occur.

   [5] Jellinek’s Application (1946) 63 RPC 59.

   [6] George Weston Foods Ltd v Peerless Holdings Pty Ltd (1999) 48 IPR 145.

4. With reference to the Opponent’s specific arguments extracted earlier I am not convinced that considering the items in designated sections of garages or the toolboxes of handymen is appropriate here. There may be completely disparate types of goods found in such places depending on the personal organization of the handyman. In any event, the likelihood of deception or confusion should be assessed as at the time of purchase without necessarily having the other brand before the consumer for comparison. Therefore, I am not convinced that the scenario outlined by Mr Pappas answers the appropriate test. Having said that, I am satisfied (for the reasons given earlier) that the goods in classes 6 and 8 are similar.  

5. For completeness, I find that power tools and portable electric tools in class 7 are not goods that are the same or of the same description as the particular small items of metal hardware that reside in class 6. The requisite nexus of similarity between the goods is absent as the nature, purpose and trade channels through which such goods are sold, generally differ. I will now assess and determine whether the Trade Mark is substantially identical with, or deceptively similar to, the Opponent’s CRAFTSMAN trade mark.  

‘Substantially Identical/Deceptively Similar’ Trade Marks

1. In relation to the first consideration (and on a side-by-side comparison) I find that the trade marks TRIO CRAFTSMAN and CRAFTSMAN are not substantially identical. The presence of the word TRIO is sufficient to preclude a ‘total impression of resemblance’[7] between the two.

   [7] Shell Co (Aust) Ltd v Esso Standard Oil (Aust) Ltd (1961) 109 CLR 407 (at 415).

2. Whether two trade marks are deceptively similar is a different comparison. It is no longer a side-by-side comparison but rather an estimation of the impression produced in the minds of potential consumers.[8] Mr Justice Parker in the Pianotist Co.'s Application[9] commented:

   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. If, considering all those circumstances, you come to the conclusion that there will be confusion - that is to say, not necessarily that one man will be injured and the other will gain illicit benefit, but that there will be a confusion in the mind of the public which will lead to confusion in the goods - then you may refuse the registration, or rather you must refuse the registration in that case.

   [8] See Australian Woollen Mills Ltd v F.S. Walton and Company (1937) 58 CLR 641 (at 658).

   [9] Pianotist Co.'s Application (1906) 23 RPC 774 (at 777)

3. The word TRIO would be perceived by consumers of these goods as it is defined in the Macquarie Dictionary, namely, “any group of three persons or things”. I further note that the definition of ‘a Craftsman’ is “A man who practices a craft; an artisan; or a person skilled in the fine arts, especially one displaying great technical competence.”[10]

   [10] The Macquarie Dictionary Online, (October 2013).

4. The Opponent’s trade mark consists wholly of the word CRAFTSMAN absent any embellishments. It is encompassed in the Trade Mark and forms a large part of it. Lord Radcliffe in Cordova v Vick Chemical Co[11] after discussing the identification of an essential feature within a trade mark, said:

   The likelihood of confusion or deception in such cases is not disproved by placing 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, for orders are not placed, or are often not placed, under such conditions. It is more useful to observe that in most persons the eye is not an accurate recorder of visual detail, and that marks are often remembered rather by general impressions or by some significant detail than by any photographic recollection of the whole.

   [11] Cordova v Vick Chemical Co (1951) 68 RPC 103 (at 106).

5. Along with any visual and aural similarities, any meaning within the trade marks should also be assessed.  For example, in Chris Kingsley v David Scott[12], I found that the trade mark ‘Soul Rebellion’ was not deceptively similar to the word ‘Rebellion’ by itself. In that decision, I decided that despite the two words (‘Soul’ and ‘Rebellion’) not having any readily discernible meaning in relation to the goods and services, the expression ‘Soul Rebellion’ as a whole created a different impression in the mind of the consumer than would the word ‘Rebellion’ by itself.

   [12] Chris Kingsley v David Scott [2011] ATMO 20 at [13-15].

6. The Applicant’s attorney highlighted other decisions from the Office including the ‘Throttle Jockey’[13] decision. That was a decision where the differing connotations of ‘Jockey’ and ‘Throttle Jockey’ was a decisive factor in the determination that the particular trade marks were not deceptively similar. However, I am not of the view that the facts before me in this matter are analogous.

   [13] Wilkinson v Jockey International Inc [2010] ATMO 22; (2010) 86 IPR 612.

7. The placement of the word TRIO at the beginning of the Trade Mark is slightly unusual. If (as the Opponent submits) the word TRIO was simply interpreted as a group of three hardware items under the Opponent’s CRAFTSMAN brand – then CRAFTSMAN TRIO would be the more likely construction. However, the effect of the placement of the word is twofold. On one hand it may be seen to emphasise the word ‘TRIO’ over the word CRAFTSMAN. On the other hand, CRAFTSMAN forms the majority of the Trade Mark. Additionally, the inclusion of the word TRIO does not alter any understanding of the word CRAFTSMAN solus to create a point of appreciable difference with the Opponent’s trade marks. The unlikely grammatical construction has the result that the words are disjointed in nature and would be read and understood separately.

8. The Applicant’s argument that TRIO is a distinctive trade mark in its own right does not diminish the presence of ‘CRAFTSMAN’ and I mention that the Opponent made a similar argument about the reputation existing in its trade mark ‘CRAFTSMAN’.

9. All of the above considerations lead me to the conclusion that the word CRAFTSMAN in the Trade Mark is important from a visual and aural standpoint; it is a significant element of the Trade Mark and its presence is not diminished or altered by the presence of the word TRIO at the beginning of the Trade Mark. Accordingly, I find that there is a real and tangible danger of confusion between the Trade Mark and the Opponent’s trade mark. On an overall impression, I am satisfied that they are deceptively similar.

10. Section 44(1) of the Act is subject to the provisions of subsections 44(3) and 44(4) which provide exceptions that may allow a trade mark to proceed to registration if prior use, honest concurrent use or other circumstances is established on the strength of the Applicant’s evidence.

The Applicant’s Evidence

1. Once the Opponent makes out the case under section 44 that there is a prior existing trade mark which is deceptively similar and has similar goods, the onus shifts to the Applicant to provide evidence of prior continuous use, honest concurrent use or other circumstances in order to avoid the registration of the Trade Mark being refused. The Applicant concedes that the use of the Trade Mark in Australia has only been since 2011 and I therefore find that it is of no assistance to applying the provisions of s44(4) and of little relevance to the application of s44(3).

2. The Applicant, via the Demourtzidis declaration, places particular weight on use of the brand TRIO by itself. ‘TRIO’ has apparently been in use by the Applicant in Australia since the early 1970s. From 2010 the Applicant began to identify its particular ranges of products under names such as TRIO REVIVE, TRIO GUARDIAN, TRIO FIRE RATED and later, TRIO CRAFTSMAN. However, the example of use given at exhibit GD-1 to the declaration in relation to a different Trade Mark. It appears as follows:

1. In the above example, the word TRIO is accompanied by stylized kangaroo logo and followed by the word CRAFTSMAN in a different (and larger) font. The separation of the two words (due to the size, font and logo) only serves to enhance the disconnection between the words TRIO and CRAFTSMAN I discussed earlier. I also note that the examples of use of TRIO GUARDIAN and TRIO FIRE RATED have similar device elements and are not use of the words by themselves.

2. Mr Pappas argued that any use to date by the Applicant of the Trade Mark has included use of CRAFTSMAN in a descriptive or generic sense. While I am not convinced by that argument after viewing the evidence, I am nonetheless unconvinced that the Applicant’s evidence demonstrates use of the Trade Mark as applied for. As a side note, if the word CRAFTSMAN is not being used (or intended to be used) as a badge of origin in the Trade Mark, the filing of the Trade Mark would be of little value because the trade mark TRIO (with the kangaroo device) is already registered in the Applicant’s name in class 6 (793458) and the word TRIO by itself in class 6 (1581351) has also been advertised as accepted for possible registration.

1. Any further examples provided in the Demourtzidis declaration is not evidence of use of the Trade Mark, but of TRIO and the kangaroo device. Such use is clearly on the applied-for goods, but it simply does not demonstrate use of the Trade Mark. I therefore accord such evidence little weight in the consideration of the exceptions allowed under section 44 of the Act.

2. Taking into account all relevant factors before me I find that there has not been sufficient evidence of prior use, honest concurrent use or other circumstances placed before me that could allow the Trade Mark to proceed to registration. Consequently, I am satisfied that the ground of opposition under section 44(1) of the Act has been established.

3. As a ground of opposition has been established in relation to the Applicant’s goods, it is not necessary for me to consider the remaining grounds of opposition pressed by the Opponent at the hearing. I do note, however, that those grounds of opposition (and any others allowable under the Act) will be available to the Opponent should this decision be appealed to a prescribed court.

4. At the time the notice of opposition was filed, section 55 of the Act relevantly provided:

55 Decision

(1)Unless the proceedings are discontinued or dismissed, the Registrar must, at the end, decide:

(a)to refuse to register the trade mark; or

(b)to register the trade mark (with or without conditions or limitations) in respect of the goods and/or services then specified in the application;

having regard to the extent (if any) to which any ground on which the application was opposed has been established.

Note:For limitations see section 6.

1. The Opponent has established a ground of opposition under the Act, The Applicant is unsuccessful and I refuse to register the Trade Mark no. 1438235.

Costs

1. As is ordinarily the case in opposition proceedings before the Registrar, costs should follow the event. I therefore award costs against the Applicant as per the Official Scale contained in Schedule 8 of the Trade Marks Regulations 1995.

Heath Wilson

Hearings Officer

Trade Marks Hearings & Oppositions

29 May 2014