SMA Solar Technology AG v Sunny Sign Company Pty Ltd

[2015] ATMO 9

TRADE MARKS ACT 1995

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

Re:Opposition by SMA Solar Technology AG to registration of trade mark application 1547867(6, 9, 19, 35, 37, 40) - SUNNY SIGNS AND DEVICE - filed in the name of Sunny Sign Company Pty Ltd.

Delegate:	Jock McDonagh
Representation:	Opponent: Fiona Brittain of Davies Collison Cave Patent and Trade Mark Attorneys Applicant: Lisa Egan and Christine Danos of K & L Gates Lawyers
Decision:	2015 ATMO 09 Section 52 opposition – Grounds pursued under sections 42(b), 44 and 60 not established – application 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 the trade mark filed by Sunny Sign Company Pty Ltd (‘the Applicant’). Relevant details of the application are set out below.

Trade mark:  
Trade mark application:      1547867
Filing Date:  14 March 2012

Specification:  Class 6: Traffic signs of metal (non-metallic, non-luminous and non-mechanical); metal brackets; portable road hazard warning cones (non-luminous, non-mechanical, of metal); directional signage of metal for roads (non-luminous, non-mechanical); free standing metal pavement signs (non-electric, non-luminous, non-mechanical); metal road signs; metal signboards (non-mechanical, non-electric, not luminous); metal signposts; non-luminous metal signs; outdoor signboards of metal (non-luminous and non-mechanical); panels of metal for use as road signs; portable signing cones (non-luminous, non-mechanical) of metal; portable signs (non-luminous, non-mechanical) of metal; road signs of metal (non-mechanical, non-luminous); safety signs of metal (non-luminous, non-mechanical); signs of metal (non-luminous and non-mechanical); traffic information panels of metal (non-mechanical signs)

Class 9: Electric, electronic, optical and signalling apparatus and instruments included in this class, including electric and electronic apparatus for use in traffic control or traffic management; traffic lights; pedestrian lights; pedestrian detectors; push button devices for actuating traffic lights to enable pedestrians to cross roads; railway signalling lights and housings for such lights; optical fibres; optical lenses; reflecting discs for prevention of traffic accidents; refractors; light regulators; traffic warning apparatus; apparatus for transmission of images; apparatus for transmitting electronic signals; apparatus for transmitting signals; blinkers (signalling lights); traffic control apparatus (lighting); traffic signal lanterns; apparatus for signalling vehicles; railroad signalling apparatus for the control of traffic on roads; road hazard warning lights; road traffic direction devices (luminous); road traffic direction devices (mechanical); road signs, luminous or mechanical; signs of metal (luminous or mechanical); signs made of plastics (luminous or mechanical); directional signage (luminous or mechanical); traffic control apparatus (luminous); traffic control apparatus (mechanical); traffic control installations (electronic); traffic control installations (lighting); traffic control installations (luminous); traffic control installations (mechanical); traffic control instruments (lighting); traffic control instruments (luminous); traffic control instruments (mechanical); traffic guidance apparatus (electronic); traffic guidance apparatus (luminous signs); traffic guidance apparatus (mechanical); traffic guidance installations (electronic); traffic guidance installations (luminous signs); traffic guidance installations (mechanical); traffic information panels (luminous signs); traffic light apparatus (signalling devices); traffic signs (luminous); traffic signs (mechanical); computer hardware for use in traffic control or traffic management or for use in traffic control systems; computer software for use in traffic control or traffic management; computer software for traffic control systems; wired and wireless communications apparatus and instruments for use in traffic control or traffic management or as part of traffic control systems; parts, fittings, components and accessories for all these goods
Class 19: Display signs of non-metallic materials (non-luminous, non-mechanical); portable signs (non-luminous, non-mechanical, non-metallic) for roads; road signs of non-metallic materials (non-mechanical, non-luminous); safety signs (non-metallic, non-luminous, non-mechanical); signalling panels, non-luminous and non-mechanical, not of metal; signs, non-luminous and non-mechanical, not of metal, for roads; signs made of plastics (non-luminous and non-mechanical); signs in this class including laminated self adhesive signs mounted on vinyl or other substrates (excluding metal)
Class 35: Wholesaling of traffic control or management apparatus, lighting apparatus, computer hardware and software; the provision of one or more of these services online, including via a global communications or telecommunications network
Class 37: Installation, configuration, maintenance, servicing and repair of traffic control and management apparatus, equipment, instruments and systems (including computer hardware and software for traffic control and management); the provision of one or more of these services online, including via a global communications or telecommunications network
Class 40: Printing and laminating

1. The application was examined in compliance with section 31 of the Act and was advertised as accepted for possible registration in the Australian Official Journal of Trade Marks on 22 March 2013. SMA Solar Technology AG (‘the Opponent’) filed a Notice of Intention to Oppose the registration of the application on 9 September 2013. Thereafter the Opponent and Applicant filed, respectively, a Statement of Grounds and Particulars (‘the Statement’) and a Notice of Intention to Defend and filed evidence as provided by the Trade Mark Regulations 1995 (‘the Regulations’).

2. I heard the matter in Melbourne on 11 November 2014 as a delegate of the Registrar of Trade Marks. Fiona Brittain of Davies Collison Cave Patent and Trade Mark Attorneys represented the Opponent. The Applicant was represented by Lisa Egan and Christine Danos of K & L Gates Lawyers.

   Grounds of Opposition

   4. The Opponent nominated grounds of opposition under sections 42, 44 and 60 of the Act. The onus is upon the Opponent to establish one or more of its grounds of opposition on the ‘balance of probabilities’.[1]

   [1] See Pfizer Products Inc v Karam [2006] FCA 1663; (2006) 70 IPR 599 and Chocolaterie Guylian NV v Registrar of Trade Marks [2009] FCA 891, (2009) 82 IPR 13 at [22] – [27]. See also Sports Warehouse Inc v Fry Consulting [2010] FCA 664; (2010) 87 IPR 300 at [36] to [39]; NV Sumatra Tobacco Trading Company v British American Tobacco Services Limited [2011] FCA 1051 (9 September 2011) at [16] to [32]

3. The time at which the grounds of opposition must be established is the date of filing of the application for registration[2].

   [2] See Southern Cross Refrigerating v Toowoomba Foundry Pty Ltd (1953) 91 CLR 592 at 595

   Evidence

   6.     The evidence consists of the following declarations:

Declarant	Position	Date Made	Annexures
Evidence in Support
Roland Grebe (“Grebe 1”)	Chief Technical Officer of Opponent	28.01.14	1 to 11
Evidence in Answer
Paul Davies (“Davies”)	General Manager of Applicant	2.05.14	PD-1 to PD-14
Evidence in Reply
Roland Grebe (“Grebe 2”)	Chief Technical Officer of Opponent	3.07.14	12

1. Grebe 1 declares that the Opponent was founded in 1981 and is the global leader in the development, production and sale of photovoltaic inverters and related devices and services. It sells its products in 21 countries (including Australia since 1999), has more than 5,000 employees worldwide and in 2012 had substantial worldwide sales figures.

2. Grebe 1 annexes the following in support of the opposition:

   ·     Extracts from the Opponent’s company reports from 2004 to 2012;

   ·     German survey reports regarding awareness and secondary meaning of the term ‘sunny’ dated March 2011;

   ·     A list of a family of SUNNY marks in Australia used since 1999;

   ·     A schedule of the Opponent’s Australian trade mark applications and registrations containing the element ‘SUNNY’;

   ·     A schedule of unit sales and wholesale revenue provided by the Opponent’s controlling entity in Germany (in Euros) sold under the family of SUNNY marks from 1999 to 2010 in Australia, Europe and worldwide;

   ·     A selection of examples of delivery notes for goods sold by reference to the family of SUNNY marks;

   ·     Examples of print advertising and promotional articles for goods sold by reference to the family of SUNNY marks in international trade journals from 2007;

   ·     A selection of brochures from about 2005 to 2012;

   ·     A photovoltaic marketing presentation;

   ·     A copy of SMA Solar Technology AG v Beyond Building Systems Pty Ltd (No 5) [2012] FCA 1483.

3. The Australian trade mark registrations referred to above are as follows:

Registration No	Trade Mark	Class(es)
1092955	SUNNY BEAM	9 Optical display devices, in particular displays for inverters and photovoltaic installations
1092956	SUNNY WEBBOX	9 Apparatus for the collating and transmission of data from energy technology apparatus, including photovoltaic installations and railway engineering installations
1092963	SUNNY CENTRAL	9 Energy supplying devices and systems and energy transformers, essentially comprising transformers, inverters, battery storages and their measuring and controlling devices; computer software, namely evaluation software designed for inverter products in photovoltaic installations; devices or systems for controlling, regulating and measuring, especially for solar energy and wind-powered installations; solar energy installations, solar cells or modules, all aforementioned goods as far as included in this class
1109281	SUNNY BOY	9 Energy supplying devices, essentially comprising transformers, inverters, battery storage and measuring and controlling devices therefor; computer software, namely evaluation software designed for inverter products in photovoltaic installations; all aforementioned goods included in this class
1135361	SUNNY EXPLORER	9 Computer software for communicating with inverters, especially for inputing [sic] data into inverters and for reading out data from inverters Endorsements: Convention priority claimed: 18 January 2006, European Community, No. 4842407 in respect of COMPUTER SOFTWARE FOR COMMUNICATING WITH INVERTERS, ESPECIALLY FOR IMPUTING [sic] DATA INTO INVERTERS AND FOR READING OUT DATA FROM INVERTERS in class 9.
1262777	SUNNY TRIPOWER	9 Inverters
1267426	SUNNY BACKUP	9 Apparatus for conducting, switching, transforming, storing, regulating and/or controlling electricity; inverters
1274353	SUNNY ISLAND	9 Energy supplying devices, and -systems and energy transformers, essentially comprising transformers, inverters, battery storages and their measuring and controlling devices; computer software, namely evaluation software designed for inverter products in photovoltaic installations; devices or systems for controlling, regulating and measuring, especially for solar energy and wind-powered installations; solar energy installations, solar cells or solar modules, all aforementioned goods included in this class
1478989	SUNNY VIEW	9 Optical display devices for inverters in photovoltaic installations
1484489	SUNNY PRO CLUB	16 Paper and cardboard and goods made from these materials; printed materials, instructional manuals and teaching materials (except apparatus), including the aforementioned goods in connection with marketing services in the field of regenerative energy for supporting the trade, providing of an Internet portal as well as education, training, entertainment, sport and cultural activities 35 Marketing and advertising services; promotional services; marketing and advertising services in the field of regenerative energy for supporting the trade; information, advisory, support and consultancy services in relation to all of the aforementioned 38  Telecommunication services; communication services in this class; provision of access to the Internet via an Internet portal; providing of an Internet portal; information, advisory, support and consultancy services in relation to the aforementioned 41 Education, training, entertainment, sport and cultural activities, including in relation to services in connection with regenerative energies
1522033	SUNNY MULTIGATE	9 Apparatus and instruments for conducting, switching, transforming, accumulating, regulating and controlling electricity; apparatus and instruments for measuring and analyzing electricity; data processing equipment
1522034	SUNNY HOME MANAGER	9 Apparatus for the collating, transmission and evaluation of data from energy technology apparatus
1566498	SUNNY	9 Devices and instruments for conducting, switching, transforming, storing, regulating and controlling electricity; devices and instruments for measuring and analysing electricity; software; electric display panels; data processing apparatus 38 Providing access to an Internet platform for the monitoring of photovoltaic installations; providing access to an Internet platform for the management and the presentation of the performance data of energy management tools 42 Design and maintenance of Websites for others for the management and presentation of performance data of energy management tools

1. Davies provides details of the application made by the Applicant and a history of the Applicant, which incorporated in 2000 and operated as SUNNY SIGNS since then. The Applicant is a manufacturer of road traffic and industrial safety signs and supplier of road safety accessories.

2. Davies also provides examples of use and promotion of the trade mark in the course of trade since 2012.

3. Paragraph [21] of Davies notes that “the Applicant is in the business of road traffic and safety signs and accessories as well as printing and laminating services. The Applicant is not in the business of solar technology products and is unaware of the Opponent ever being in the business of road traffic and safety signs and accessories and accessories or printing and laminating services.”

4. Grebe 2 annexes a selection of website printouts relating to solar powered road traffic and safety signs used in Australia and elsewhere. None of the printouts appear to relate to the Opponent’s goods and services. Some of the printouts are from a company that is featured in products and services directory at annex PD-8 to Davies.

5. In its written submissions the Opponent defines the Opponent's registrations listed at [9] above as 'family of SUNNY marks' but I shall refer to them as the SUNNY marks and refer to the Applicant's trade mark as 'SUNNY SIGNS'.

6. I note that the Applicant has sought to rely on a letter from the Opponent during a course of negotiation (Davies, annexure PD-5), which suggests that the Opponent’s trade marks could co-exist with the Applicant’s ‘old’ trade mark for the same goods.

7. Ms Brittain submitted that the letter is not relevant to these proceedings as it was, according to instructions from the Opponent, sent for ‘tactical reasons’ in relation to a different trade mark application.

8. In my opinion, the letter was similar to a ‘without prejudice’ letter in the course of negotiations in respect of another trade mark application. While I do not consider that a ‘without prejudice’ privilege attaches to the letter in these proceedings, I also do not consider that it amounts to an admission that the use of  the trade mark subject to these proceedings would not create confusion or deception in the relevant marketplace.

   Discussion

   Section 44

   18. The Applicant has not pleaded prior or concurrent use of its application, nor has it provided evidence of such use. Accordingly, 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).

   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)     Subject to subsections (3) and (4), an application for the registration of a trade mark (applicant's trade mark) in respect of services (applicant's services) 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 services or closely related goods; or

   (ii)       a trade mark whose registration in respect of similar services or closely related goods 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 services is not earlier than the priority date for the registration of the other trade mark in respect of the similar services or closely related goods.

   Note 1: For deceptively similar see section 10.

   Note 2:    For similar services see subsection 14(2).

9. The priority dates of the Opponent’s registrations are earlier than that of the SUNNY SIGNS.  Accordingly, it remains for me to decide whether the Applicant’s goods and services are similar to those of the Opponent’s registrations or closely related to the services and goods in respect of which the Opponent’s trade mark is registered and whether the trade marks of the parties are either substantially identical or deceptively similar.

10. In Registrar of Trade Marks v Woolworths [1999] FCA 1020; (1999) 93 FCR 365; (1999) 45 IPR 411; [1999] AIPC 91-499 (‘Woolworths’) French J said at [39]:

    The logic of subs 44(2) suggests that the determination whether goods are closely related to the services in question is logically antecedent to the determination whether the trade mark in respect of the services is deceptively similar to that in respect of the goods. Wilcox J at first instance in this case saw the questions as "conceptually distinct" but accepted that one could not be addressed in isolation from the second:

    "The closer the relationship between the services and particular goods, the more likely any similarity in marks will prove deceptive."

11. The assessment of the likelihood of deception or confusion is informed by the factors referred to in Woolworths by French J who said at [50]:

    (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."

1. The principle at item (v), above, and the words of Mason J in the Berlei Hestia Industries Ltd case in particular, apply with equal facility to both the Applicant’s and the Opponent’s goods.

2. Thus, in considering these initial questions of the similarity of the goods and services of the parties, I am to consider the specifications of goods or services of the parties at their widest.  Such considerations are not to be fanciful or extreme but are to apply normally and fairly to all of Applicant’s services or Opponent’s goods and services and (with one exception which does not apply here)[3] I am to disregard any knowledge of the goods or services on which the trade marks under consideration are in fact used.

   [3] That exception is if the trade mark relied upon by the Opponent is ‘notorious’ C A Henschke & Co v Rosemount Estates Pty Ltd [2000] FCA 1539; [2000] AIPC 91-640; [2001] ATPR 41-793; (2000) 52 IPR 42 [52]

3. Accordingly, it is clear that the Class 9 goods of the Applicant’s application (‘Electric, electronic, optical and signalling apparatus and instruments included in this class’) are similar to those cited by the Opponent. However, there is no such similarity with respect to any of the other Classes of goods and services in the application for SUNNY SIGNS.

4. The Opponent did not argue that its SUNNY marks were substantially identical to SUNNY SIGNS, and the hearing proceeded on the basis that the issue was that of deceptive similarity. I find that SUNNY SIGNS is not substantially identical to any of the SUNNY marks.

5. 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.

6. The test to determine whether trade marks are ‘deceptively similar’ is set out in Shell Company (Aust) Limited v Esso Standard Oil (Aust) Limited (1961) 109 CLR 407 at 415:

   The marks are not now to be looked at side by side [as for substantial identity]. The issue is not abstract similarity, but deceptive similarity … the comparison … 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 impression that such persons would get from the defendant’s [trade mark]

7. The Court added at 416, that:

   [The] deceptiveness that is contemplated must result from similarity; but the likelihood of deception must be judged not by the degree of similarity alone, but by the effect of that similarity in all the circumstances.’ In addition, the test is not one of mere possibility of confusion but of a real tangible danger that a number of persons will be caused to wonder whether the products come from the same source.

8. The decisive question is whether the use of SUNNY SIGNS for the goods in Class 9 given the prior registrations for the SUNNY marks in Class 9 would result in a tangible danger of confusion or deception. I do not consider it would. In coming to this decision it is important that trade marks are considered in their entirety – ‘it is the whole mark as used which is the subject of the comparison with the registered mark.’[4]

   [4] Anheuser-Busch Inc v Budejovicky Budvar (2002) 56 IPR 182, 218 (Allsop J).

9. Upon consideration of the trade marks it is clear to me that the dominant feature of SUNNY SIGNS is the device element, rather than the word SUNNY that is common to both SUNNY SIGNS and the SUNNY marks.

10. The Applicant’s goods and services relate to the road traffic signage industry, while the Opponent is in the business of photovoltaic technology products, related to the converting of solar energy to electricity. These are quite different markets, and both involve expensive products. The purchase of either party’s goods would be a highly considered decision, which would involve a reasonable level of care when selecting and completing the purchase.

11. I am not satisfied that there is likely to be deception or confusion when all surrounding circumstances have been taken into consideration. This ground of opposition has not bee established.

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

12. Section 60 of the Act provides:

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.

Note:For priority date see section 12.

1. It is not necessary to show under section 60 that the respective trade marks are deceptively similar although such a finding can be relevant in determining the likelihood of deception or confusion.

2. Reputation is to be assessed according to the test set out in McCormick & Company Inc v McCormick (2000) 51 IPR 102 by Kenny J at [81] – [82]:

   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”.

   Does the evidence establish that in Australia before 9 March 1992 the McCormick & Co marks were recognised by the public generally and, because of that, the use by Mary McCormick of her marks would be likely to cause the public confusion, as for example, by the public’s mistakenly attributing a business connection between the two or attributing her product to the company?

3. Further, at [86], Kenny J said:

   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.

4. The Opponent submitted that due to the extensive use of the SUNNY marks as a family of trade marks, each containing the word SUNNY, consumers would mistakenly believe that SUNNY SIGNS would be part of that family, citing McDonalds Corp v Bellamy[5].

   [5] (2004) 62 IPR 133, particularly at 139

5. The Opponent’s evidence establishes that the Opponent has a strong reputation in the solar technology industry in Australia and the rest of the world in the SUNNY marks before the priority date. This reputation is primarily established by its extensive promotional activities within the solar technology industry in Australia and worldwide.

6. While much of the Opponent’s evidence is directed to worldwide sales and marketing, and often extrapolates the Australian data, I do accept a significant reputation in the Australian solar technology industry.

7. However, I do not consider that the use of the SUNNY SIGNS trade mark would be likely to deceive or cause confusion. Both parties are in highly specialized industries, involving expensive goods and services obtained by particular customers. The relevant consumer will be discerning and knowledgeable of the relevant goods and services, and is not likely to be an ‘impulse buyer’. Such consumers would note the great differences between the Applicant’s SUNNY SIGNS device and the Opponent’s SUNNY trade marks. None of the SUNNY marks involve the use of a device.

8. The specialist nature of both parties’ goods and services is such as to make it unlikely that consumers would make any association between the applicant’s goods and the opponent. This ground of opposition has not been established.

   Subparagraph 42(b)

   42. Subparagraph 42(b) of the Act provides:

   42Trade mark scandalous or its use contrary to law

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

   (a)…

   (b)its use would be contrary to law.

9. The Opponent relies on section 18 of the Australian Consumer Law 2010 (‘the ACL’), and the common law tort of passing off.

10. However, in the circumstances of this matter, if 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 [1982] HCA 44; (1982) 42 A.L.R. 1, Gibbs C.J. said (at page 6):

    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.”

    In the same case Mason J. said (at page 15):

    “. . . 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.”

11. The opposition under subparagraph 42(b) is not established.

    Decision

    46. Section 55(1) of the Act relevantly provides that, 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.

12. The opposition has not been to any extent established.

13. 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 decided or discontinued and that the disposition of the Application should be in accordance with the Court’s order or direction.

    Costs

    49.     The Applicant, having been successful in these proceedings, is entitled to its costs which I order against the Opponent accordance with Schedule 8 of the Trade Mark Regulations 1995.

    Jock McDonagh
    Hearings Officer
    Trade Marks Hearings
    2 February 2015