Shane Miles v Clearview Towing Mirrors Pty Ltd
[2025] ATMO 18
•23 January 2025
TRADE MARKS ACT 1995
DECISION OF A DELEGATE OF THE REGISTRAR OF TRADE MARKS WITH REASONS
Re:Opposition by Shane Miles to registration of trade mark application number 2135020 (class 12) – POWER SLIDE – in the name of Clearview Towing Mirrors Pty Ltd
Delegate: | Jonathon Galloway |
Representation: | Opponent: Ian Tannahill of Ahearn Fox Applicant: Sam Hallahan of counsel instructed by Foundry Intellectual Property Pty Ltd |
Decision: | 2025 ATMO 18 Trade Marks Act 1995 (Cth) – opposition under s 52 – ss 41, 43 and 62(b) pressed – s 41 established – registration refused |
Background
This decision concerns an opposition under s 52 of the Trade Marks Act 1995 (Cth)[1] by Shane Miles (‘Opponent’) to registration of the following trade mark:
Trade mark number: 2135020
Trade mark: POWER SLIDE (‘Trade Mark’)
Applicant: Clearview Towing Mirrors Pty Ltd (‘Applicant’)
Filing date: 11 November 2020
[1] Unless otherwise stated, each reference to a section or regulation is a reference to the Trade Marks Act 1995 (Cth) (‘Act’) or Trade Marks Regulations 1995 (Cth) (‘Regulations’) respectively.
Specification:
Class 12: Storage systems for motor vehicles for storing refrigerators (‘Claimed Goods’)
The Trade Mark was examined as required by s 33 and advertised as accepted for possible registration on 14 September 2022.
On 31 October 2022, the Opponent filed a Notice of Intention to Oppose registration of the Trade Mark. On 29 November 2022, the Opponent filed his Statement of Grounds and Particulars (‘SGP’).
The Opponent filed the following Evidence in Support (‘EIS’) on 22 May 2023:
- Declaration by Ian Robert Tannahill, registered patent and trade mark attorney at Ahearn Fox, dated 22 May 2023 with exhibits IRT-1 to IRT-37 (‘Tannahill 1’).
The Applicant filed the following Evidence in Answer (‘EIA’) on 25 August 2023:
- Declaration by Andrew Richard Jones, Principal of Foundry Intellectual Property Pty Ltd, dated 25 August 2023 with exhibits AJ-1 to AJ-24 (‘Jones’).
- Exhibit AJ-16 contains a declaration by Michael Cowan, CEO and co-founder of the Applicant, dated 24 April 2023 with exhibits MC-1 to MC-9 (‘Cowan’).
The Opponent filed the following Evidence in Reply (‘EIR’) on 27 October 2023:
- Declaration by Ian Robert Tannahill dated 27 October 2023, with exhibits IRT-38 to IRT-47 (‘Tannahill 2’).
Once the period for filing evidence had ended, both parties requested an oral hearing.
As a delegate of the Registrar of Trade Marks, I heard the matter on 24 October 2024. The Opponent filed written submissions and was represented by Ian Tannahill of Ahearn Fox. The Applicant filed written submissions and was represented by Sam Hallahan of counsel, instructed by Andrew Jones of Foundry Intellectual Property Pty Ltd.
The following constitutes my decision on this matter as required by s 55 based on the evidence set out above, the SGP and the parties’ submissions.
Grounds and Onus
The SGP nominates grounds of opposition under ss 41, 43 and 62(b).
The Opponent carries the burden of establishing one or more grounds of opposition.[2] The standard of proof is on the balance of probabilities.[3]
[2] Food Channel Network Pty Ltd v Television Food Network GP [2010] FCAFC 58, [32] (Keane CJ, Stone and Jagot JJ).
[3] Telstra Corporation Limited v Phone Directories Company Pty Ltd [2015] FCAFC 156, [133] (Besanko, Jagot and Edelman JJ).
EIS
Tannahill 1 is directed towards establishing the Opponent’s assertion that consumers would understand the Trade Mark as a reference to a fridge slide that can function by electronic means. Tannahill 1 asserts that ‘fridge slide’ is a well known term used to describe a slide assembly that is secured to a vehicle. The slide assembly ‘may be used to slide a refrigerator from a stored position within the vehicle to a second access position’.[4]
[4] Tannahill 1 [21].
Tannahill 1 exhibits numerous patent applications, trade mark examination reports and various vehicle owner/operator manuals which show use of ‘power slide’ on vehicle parts and accessories. In addition, Tannahill 1 refers to various Wikipedia entries for terms incorporating ‘power’ which are intended to support the Opponent’s assertion that consumers would interpret the Trade Mark as indicating a function or aspect of the Claimed Goods, based on the common understanding of terms such as ‘power side-view mirror’ and ‘power drill’. Tannahill 1 also provides screenshots of retail websites which show offerings for devices referred to as fridge slides.
EIA
The EIA indicates that the Claimed Goods relate to apparatus known as a ‘fridge slide’, which is a system for storing and accessing refrigerators for use on vehicles. Cowan provides that the Applicant launched its ‘POWER SLIDE’ portable refrigerator slide at the National 4x4 Outdoors show in Brisbane (‘Show’) between 18 March 2022 and 20 March 2022.[5] Although the official launch occurred at the Show, the EIA states that the first sale of a ‘POWER SLIDE’ branded product occurred in early July 2022. Jones includes screenshots of the Opponent’s social media accounts, information relating to the Claimed Goods available from the Opponent’s website, email enquiries from prospective customers and financial records including invoices and pre-order forms.
[5] Cowan [10].
EIR
Tannahill 2 asserts that a third party is using POWER SLIDE to describe a type of fridge slide. Tannahill 2 is of limited relevance in the current matter and, primarily asserts that, it is common for persons to seek to register a trade mark that comprises two words, being a distinctive word followed by a word that is descriptive of the goods and/or services applied for.
The Law
Section 41 relevantly provides:
Trade mark not distinguishing applicant’s goods or services
(1) An application for the registration of a trade mark must be rejected if the trade mark is not capable of distinguishing the applicant’s goods or services in respect of which the trade mark is sought to be registered (the designated goods or services) from the goods or services of other persons.
Note: For goods of a person and services of a person see section 6.
(2) A trade mark is taken not to be capable of distinguishing the designated goods or services from the goods or services of other persons only if either subsection (3) or (4) applies to the trade mark.
(3) This subsection applies to a trade mark if:
(a) the trade mark is not to any extent inherently adapted to distinguish the designated goods or services from the goods or services of other persons; and
(b) the applicant has not used the trade mark before the filing date in respect of the application to such an extent that the trade mark does in fact distinguish the designated goods or services as being those of the applicant.
(4) This subsection applies to a trade mark if:
(a) the trade mark is, to some extent, but not sufficiently, inherently adapted to distinguish the designated goods or services from the goods or services of other persons; and
(b) the trade mark does not and will not distinguish the designated goods or services as being those of the applicant having regard to the combined effect of the following:
(i) the extent to which the trade mark is inherently adapted to distinguish the goods or services from the goods or services of other persons;
(ii) the use, or intended use, of the trade mark by the applicant;
(iii) any other circumstances.
Note 1: Trade marks that are not inherently adapted to distinguish goods or services are mostly trade marks that consist wholly of a sign that is ordinarily used to indicate:
(a) the kind, quality, quantity, intended purpose, value, geographical origin, or some other characteristic, of goods or services; or
(b) the time of production of goods or of the rendering of services.
The first step in terms of ss 41(3) and 41(4) is to consider the extent, if any, to which the Trade Mark is inherently adapted to distinguish the goods of the Applicant from the goods or services of other persons.
The test for inherent adaptation to distinguish is set out in Clark Equipment Co v Registrar of Trade Marks where Kitto J said:
That ultimate question must not be misunderstood. It is not whether the mark will be adapted to distinguish the registered owner’s goods if it be registered and other persons consequently find themselves precluded from using it. The question is whether the mark, considered quite apart from the effects of registration, is such that by its use the applicant is likely to attain his object of thereby distinguishing his goods from the goods of others. In Registrar of Trade Marks v. W. & G. Du Cros Ltd. (1913) AC 624, at pp 634, 635 Lord Parker of Waddington, having remarked upon the difficulty of finding the right criterion by which to determine whether a proposed mark is or is not “adapted to distinguish” the applicant’s goods, defined the crucial question practically as I have stated it, and added two sentences which have often been quoted but to which it is well to return for an understanding of the problem in a case such as the present. His Lordship said: “The applicant’s chance of success in this respect (i.e. in distinguishing his goods by means of the mark, apart from the effects of registration) must, I think, largely depend upon whether other traders are likely, in the ordinary course of their businesses and without any improper motive, to desire to use the same mark, or some mark nearly resembling it, upon or in connexion with their own goods. It is apparent from the history of trade marks in this country that both the Legislature and the Courts have always shown a natural disinclination to allow any person to obtain by registration under the Trade Marks Acts a monopoly in what others may legitimately desire to use.” The interests of strangers and of the public are thus bound up with the whole question, as Hamilton L.J. pointed out in the case of R.J. Lea, Ltd. (1913) 1 Ch 446, at p 463; (1913) 30 RPC 216, at p 227; but to say this is not to treat the question as depending upon some vague notion of public policy: it is to insist that the question whether a mark is adapted to distinguish be tested by reference to the likelihood that other persons, trading in goods of the relevant kind and being actuated only by proper motives – in the exercise, that is to say, of the common right of the public to make honest use of words forming part of the common heritage, for the sake of the signification which they ordinarily possess – will think of the word and want to use it in connexion with similar goods in any manner which would infringe a registered trade mark granted in respect of it.[6]
[6] [1964] HCA 55, [5].
Inherent adaptability to distinguish relates to whether the trade mark is one which ‘other traders are likely, in the ordinary course of their businesses and without any improper motive, to desire to use upon or in connexion with their goods’.[7]
[7] F H Faulding & Co Ltd v Imperial Chemical Industries of Australia and New Zealand Ltd [1965] HCA 72, [6] (Kitto J).
The test for distinctiveness is a two-step process. The first step being to determine the ordinary signification of the sign comprising a trade mark, in Australia, to persons who will purchase, consume, or trade in the goods. Then, having determined the answer to that question, the second step is to consider the likelihood of the sign being needed by other traders for the purposes of that ordinary signification.[8]
[8] Cantarella Bros Pty Ltd v Modena Trading Pty Ltd [2014] HCA 48 (French CJ, Hayne, Crennan, Kiefel and Gageler JJ).
Discussion
The Macquarie Dictionary provides the following definitions:
Power: operated using a power source and mechanism, in addition to the usual manual labour, the source being electricity, compressed air, internal combustion engines or the like: power tool; power saw; power drill.[9]
Slide: that which slides, as part of a machine.[10]
[9] Macquarie Dictionary (online at 14 January 2025) ‘power’ (def 27).
[10] Macquarie Dictionary (online at 14 January 2025) ‘slide’ (def 16).
The Trade Mark must be assessed as a whole. To dissect the individual elements of the Trade Mark in order to establish its ordinary signification would not be a correct application of the test under s 41.[11] However, it is necessary to consider the meaning of the elements which comprise the Trade Mark in order to determine whether, as a whole, it has an ordinary signification.[12]
[11] Diamond T Motor Car Co’s Application (1921) 38 RPC 373, 380-381 (Lawrence J).
[12] Grayson’s International Pty Ltd v Top Intellectual Property Pty Ltd [2023] ATMO 113, [29] (Hearing Officer Worth).
The Opponent’s case in support of the s 41 ground of opposition is based on the meaning of each word appearing in the Trade Mark. The Opponent suggests that the word ‘power’ is commonly used to describe articles that are electrically and/or hydraulically driven. In support of this, the Opponent provides general examples of this such as ‘power tools’ as well as examples relating to motor vehicles such as ‘power windows’, ‘power side-view mirror’ and ‘power boot’. The Opponent contends that each of these terms are understood by consumers as denoting a vehicle part that is electronically controlled. The Opponent also submits that the word ‘slide’ is commonly used to describe a sliding mechanism used to move an item, such as a fridge, from a stored position within a vehicle to an accessible position.
The Opponent’s evidence contains examples of ‘power’ being used in conjunction with other terms to denote an item which is operated by a power source.[13] Further, the evidence of the Opponent shows that, in relation to vehicles, it is common to use ‘power’ to describe a part or accessory that is electronically actuated and that ‘power slide’ is in use to describe other vehicle components, the operation of which involves a sliding motion occurring by electronic means. In exhibit IRT-32, ‘power slide and lift control’ is used in a review of a 2006 BMW X3 to describe an aspect of that vehicle’s glass moonroof. Exhibit IRT-33 shows ‘power slide’ used in relation to the list of optional extras available on a 2018 Nissan Titan, specifically ‘Power Slide Rear Window with Defrost’. Exhibit IRT-34 shows use of ‘power slide’ in relation to the vehicle specifications of a Lexus LX 570 S, specifically ‘Power-slide 2nd Row Seats’. These exhibits demonstrate a likelihood of other traders desiring to make use of the term ‘power slide’ on vehicle accessories to denote an electronic function, as opposed to manual operation, in relation to apparatus that moves in a sliding motion.
[13] Tannahill 1 Exhibits IRT-20; IRT-21.
I consider that the Trade Mark, as a whole, in relation to the Claimed Goods, is likely to be seen as an indication of how the goods function. That is the Claimed Goods provide a means of storing and accessing vehicle refrigerators in a sliding motion which occurs by electronic actuation.
In my view, the ordinary signification of POWER SLIDE is a reference to the electronically controlled sliding function that provides access to vehicle refrigerators. Further, I consider it likely that other traders would desire to use the Trade Mark, or something nearly resembling it, to describe their goods which are similar to the Claimed Goods. This is due to a combination of factors discussed above, namely, the dictionary definitions of the words which comprise the Trade Mark, the general tendency of traders to use ‘power’ to denote an electronic enhancement to a product and the fact that ‘power slide’ is used on a number of vehicle accessories to indicate an electronic sliding function or aspect. Other traders would naturally desire to make honest use of the combination of words comprising the Trade Mark to describe their goods which possess the same function. That is, traders would have a legitimate desire to emphasise the electronic advantage of their fridge actuation units, by using ‘power slide’ or something that nearly resembles it.
While I consider that the ordinary signification of the Trade Mark is something that other traders would desire to use in connection to similar goods, I note that the Trade Mark is not merely laudatory, nor is it comprised of words which are the only or natural words which would be chosen to indicate this particular aspect of the goods.[14] I am satisfied the Trade Mark is to some extent, but not sufficiently, inherently adapted to distinguish the Claimed Goods.
[14] Austereo Pty Ltd v DMG Radio (Australia) Pty Ltd [2004] FCA 968, [38] (Finn J).
In view of this, I must now consider the matters set out in s 41(4)(b), namely the combined effect of the extent of the inherent adaptation to distinguish, the use or intended use of the Trade Mark and any other circumstances.
Evidence of Use
Set out below are three examples of how the Applicant promotes the Claimed Goods. The Applicant’s evidence of use generally shows the incorporation of a stylised lightning bolt (‘Composite Mark’) or as part of a trade mark which, in addition to a stylised lightning bolt, includes the words ‘CLEAR VIEW POWER SLIDE’ (‘Clear View Mark’). Examples of the Composite Mark and the Clear View Mark can be seen at [30] and [32] of this decision.
Exhibits AJ-6 and AJ-7, set out below, show how the Trade Mark is applied to the Claimed Goods and promoted on the Applicant’s social media pages:
Exhibit AJ-21 is a printout of the Applicant’s website as of 27 June 2022 which shows a dedicated page for the ‘Clearview Power Slide’. This printout refers to the Claimed Goods as the ‘Clearview Power Slide’. Where the printout depicts the Claimed Goods it shows use of the Composite Mark.
Exhibit AJ-8 is a photograph of the Claimed Goods that was on display at the Show:
For the purposes of assessing whether the Trade Mark will distinguish the Claimed Goods, evidence of use will typically need to show the Trade Mark as applied for. Under s 7 use of the Trade Mark will include use with additions or alterations that do not substantially affect its identity. In E. & J. Gallo Winery v Lion Nathan Australia Pty Limited[15] the High Court considered that use of the word BAREFOOT with a barefoot device was use of the word with an addition that did not substantially affect its identity because the device was an illustration of that word. In the current matter, the stylised lightning bolt is centrally located between ‘POWER’ and ‘SLIDE’ and it is not readily characterised as an illustration of that term. In my view, use of the Composite Mark will not necessarily be considered use of the Trade Mark with additions or alterations that do not substantially affect its identity. However, as will become apparent, nothing turns on this issue. In relation to the Clear View Mark, I consider that the use of ‘CLEAR VIEW’, being a term which plainly is not descriptive of the Claimed Goods, is an addition that substantially affects the identity of the Trade Mark.[16] Therefore, I do not consider use of the Clear View Mark to be evidence of use of the Trade Mark.
[15] [2010] HCA 15, [69] (French CJ, Gummow, Crennan and Bell JJ).
[16] Bendigo and Adelaide Bank Limited v Community First Credit Union Limited [2021] FCAFC 31, [155] (Middleton, Burley and Thawley JJ).
The Applicant’s evidence, evidencing sales of goods branded with the Trade Mark is not sufficient to establish that it is capable of distinguishing the Claimed Goods. Exhibit AJ-20 is a bill of lading for the first bulk shipping of the Applicant’s fridge slides which lists ‘Clearview Accessories’ as the consignee. A review of the bill of lading shows the Trade Mark appearing in the particulars, as ‘Power slide, ES100-Cage, Silica gel, Tie Down Strap’. This is not a clear use of the Trade Mark as a trade mark rather than as a description of the contents of the shipment. Exhibit AJ-22 is a tax invoice dated 7 July 2022 for the first sale of the Applicant’s ‘POWER SLIDE’ fridge slides. The words ‘Power Slide – Extra Large’ appear in the item description of the invoice. Putting to one side whether this constitutes use of the Trade Mark as a trade mark, a single invoice some two years after the filing date of the Trade Mark, is not sufficient to demonstrate that it does or will distinguish the Claimed Goods. Exhibit AJ-23 is a copy of the pre-order form made available to consumers during the Show. The form is branded with the Clear View Mark which, for the reasons detailed above, does not constitute use of the Trade Mark. I note the form fails to show use of the Trade Mark and instead contains the text ‘P.S XXL’ underneath the heading ‘Description’. Therefore, very little evidence has been provided which shows use of the Trade Mark in relation to the Claimed Goods.
The Applicant asserts that consumers began to refer to the Claimed Goods as ‘Power Slide’, when making enquiries to the Applicant. Exhibit AJ-24 contains 15 email enquiries from consumers to the Applicant between May 2022 and March 2023. While the email enquiries show customers enquiring about the availability of the Claimed Goods and referring to the goods as ‘power slide’, the small number of enquiries fails to provide a sound basis to infer that consumers generally will see the Trade Mark as a badge of origin.
In addition, the evidence of sales disclosed is expressed as an approximate figure, and it is only for the 2022/23 financial year.[17] The exact number of units sold by the Applicant has not been provided and there is no evidence related to marketing expenditure, future sales forecasts or expansion plans. Overall, even if I were to accept that use of the Composite Mark and Clear View Mark constituted use of the Trade Mark, the sparsity of evidence filed is not sufficient to satisfy me that consumers will view the Trade Mark as a badge of origin rather than an indication of how the Claimed Goods function.
[17] Jones [29].
When I weigh the submissions and evidence filed together with the extent that the Trade Mark is inherently adapted to distinguish the combined effect is not sufficient to satisfy me that the Trade Mark does or will distinguish the Claimed Goods.
Accordingly, I find that the Opponent has established a ground of opposition under s 41(4).
Decision
Section 55 relevantly provides:
(1) Unless subsection (3) applies to the proceedings, 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.
As the Opponent has established a ground of opposition under s 41, I refuse to register trade mark number 2135020. As one of the grounds of opposition has been established in respect of all the Claimed Goods, consideration of the remaining grounds is not necessary. If the Registrar is served with a notice of appeal, I direct that the disposition of the application should be in accordance with the Court’s order or direction.
Costs
I see no reason to depart from the general rule that costs follow the event. As the Opponent has succeeded in establishing a ground of opposition, I award costs against the Applicant under s 221 in line with the amounts in Schedule 8 of the Regulations.
Jonathon Galloway
Hearing Officer
Oppositions and Hearings
Trade Marks and Designs
23 January 2025
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