Sola Tube Australia Pty Ltd v Gabriel Andrews - [2014] ATMO 103

TRADE MARKS ACT 1995

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

Re:Opposition by Sola Tube Australia Pty Limited to registration of trade mark application 1430638 (6,19,37) - HEAVENLY - filed in the name of Gabriel Andrews.

Delegate:	Nicole Worth
Representation:	Opponent: Written submissions prepared by Spruson & Ferguson Patent & Trade Mark Attorneys Applicant: None
Decision:	2014 ATMO 103 Section 52 opposition – sections 60, 58 and 42(b) pursued – section 58 ground established – application refused.

Background

This is an opposition brought by Sola Tube Australia Pty Ltd (‘the Opponent’) pursuant to section 52 of the Trade Marks Act 1995 (‘the Act’). The Opponent opposes registration of the trade mark the subject of application number 1430638, being the word HEAVENLY (‘the Trade Mark’). The application was filed in the name of Gabriel Andrews (‘the Applicant’) on 15 June 2011 (‘the priority date’).
The application was examined and after amendment to the specification of goods and services, the trade mark was accepted for possible registration in respect of the following goods and services:
Class 6: Metallic building materials, being metal skylights for buildings; skylights of metal (windows), building materials in this class being windows, skylights and parts and fittings therefore, window assemblies and units, roof mounted window assemblies and units, skylights, skylights incorporating ventilation, vents, air vents, and roof vents; metallic skylights incorporating light carrying systems and light refracting devices; light tubes and light grids in this class; metallic parts and fittings therefor; none of the aforesaid being solar or electric heating or lighting apparatus
Class 19: Non-metallic building materials, being non-metal skylights for buildings; skylights of non-metal (windows), building materials in this class being windows, skylights and parts and fittings therefore, window assemblies and units, roof mounted window assemblies and units, non-metallic skylights, skylights incorporating ventilation, vents, air vents, and roof vents; non-metallic skylights incorporating light carrying systems and light refracting devices, light tubes, light grids, vents, diffusers for skylights (translucent building panels); non-metallic frames for skylights; non-metallic skylights for buildings; plastic skylights (windows) of non-metallic materials for use in buildings; skylights made from plastic materials for use in buildings; skylights not of metal (windows); translucent building materials for skylights and including non-metallic parts and fittings therefore; none of the aforesaid being solar or electric heating and or lighting apparatus
Class 37: Building construction, repair, and installation services relating to skylights, windows, and roof vents, excluding housekeeping services and cleaning services and none of the aforesaid services being for solar or electric heating or lighting apparatus.
Acceptance of the application was advertised in the Australian Official Journal of Trade Marks on 13 December 2012. The Opponent filed a Notice of Opposition (‘the Notice’) on 13 March 2013, nominating most of the grounds available under the Act to oppose registration.
Following the service of evidence, described in more detail below, the Opponent requested that the matter be heard by way of written submissions. The matter was delegated to me, as a delegate of the Registrar of Trade Marks, to decide on the basis of the evidence and submissions provided. Khajaque Kortian and Catherine Sedgley, of Spruson and Ferguson Patent and Trade Mark Attorneys, prepared written submissions on behalf of the Opponent. The Applicant did not file any evidence or submissions. He did write an email to IP Australia expressing a number of concerns about the trade mark protection system in Australia, however as the Opponent has neither seen nor had the opportunity to address it and because an officer of IP Australia responded at the time, I will not specifically address his email but note that the issues discussed in this decision are a further answer to his concerns.

Evidence

The only evidence filed in these proceedings is a declaration made by Mark Peall, General Manager of the Opponent, dated 11 September 2013 with Exhibits MP-1 to MP-8 and Confidential Exhibits MP-3 and MP-6. The facts described in the declaration are summarised as follows.
Heavenly Products International Pty Ltd (‘Heavenly Products’) was an entity that first sold skylights under the trade mark HEAVENLY SKYLIGHTS in July 1998. It also sold “tubular skylights” and “roof windows” under the trade marks HEAVENLY TUBULAR SKYLIGHTS, HEAVENLY INTELLIGENT TUBULAR SKYLIGHTS and HEAVENLY ROOF WINDOWS, although dates of when it did so are not given. In 2001 Heavenly Products ceased operations and the Opponent took over the manufacturing and distribution of goods sold under the previously mentioned trade marks, on-selling them to the general public through its “Premier Dealer Network” in Australia, New Zealand, South Africa and Japan. Documents in the evidence that display the word HEAVENLY include:
- Certification of compliance testing for a “Heavenly Square Vented Skylight”, declared to be issued 27 September 2002 (different pages of the test certificate display different dates in 2002 – one of the pages is stamped with the date 27 September 2002);
- A range of printed literature distributed by the Opponent, only one of which is dated. It is a Product Catalogue for ranges of skylights advertised under the Trade Mark, dated 1 July 2001;
- Print outs of web pages from the websites of “Premier Dealers”, including Skylights Plus (dated after the priority date), Skyvision Skylights (undated but with a copyright notice of 2011), Skylight World (undated), Yellow Pages Online referencing the Trade Mark in an advertisement for Skylight World (undated but with a copyright notice of 2012), The Skylight Shop (which contains the notice “Page last updated March 25, 2011”) and Skylights From The Woolmen (undated but with a copyright notice of 2012).
The Opponent also provides estimated sales figures for goods sold under the Trade Mark and total annual advertising expenditure for all of its brands, both of which are significant.

Grounds and Onus

The Opponent’s written submissions advised that it relied primarily upon the grounds of opposition under sections 60, 58 and 42(b) of the Act. Although it expressly stated that it did not abandon any of the other grounds, I do not consider that the evidence supports them and so for completeness I find that none of the other grounds are established.
I proceed on the basis that the Opponent bears the onus of establishing at least one of the grounds on the ordinary civil standard of the balance of probabilities,[1] and that the date at which the rights of the parties are to be determined is the date the application was filed[2] (which here coincides with the priority date, 15 June 2011).
[1] Pfizer Products Inc v Karam [2006] FCA 1663; 70 IPR 599 per Gyles J at [6] to [26].
[2] Southern Cross Refrigerating v Toowoomba Foundry Pty Ltd (1953) 91 CLR 592 at 595.
I consider that section 58 is the most relevant ground and so I begin with that discussion.

Section 58

Section 58 of the Act provides:
The registration of a trade mark may be opposed on the ground that the applicant is not the owner of the trade mark.
In order to succeed under this ground of opposition, the Opponent must establish that:
·    The respective trade marks of the Applicant and Opponent are either identical or substantially identical;[3]
·    The respective good or services of both parties are the ‘same kind of thing’;[4] and
·    The Opponent has the earlier claim to ownership based on use prior to both the application to register and any actual use of the trade mark by the Applicant.[5]
[3] Carnival Cruise Lines Inc. v Sitmar Cruises Ltd (1994) ALR 495
[4] Re Hicks’ Trade Mark (1897) 3 ALR 75
[5] Settef SpA v Riv-Oland Marble Co (Vic) Pty LTd (1987) 10 IPR 402
I am satisfied that the parties’ trade marks are substantially identical. In use the Opponent uses a range of trade marks which comprise or contain HEAVENLY, not all of which I consider are relevant to this ground of opposition. Nonetheless, the product catalogue dated 1 July 2001 and titled “HEAVENLY SKYLIGHTS & VENTILATION: A Little Bit of heaven in your home” displays ranges of skylights under the headings “HEAVENLY KIT REVIEW – 300 Series” or “HEAVENLY KIT REVIEW – 400 Series”. Each picture of a skylight is accompanied by the word HEAVENLY and a serial number, such as HEAVENLY H300S4 or HEAVENLY H400S6. The serial numbers appear to relate to the series to which the skylight belongs (“300 series” or “400 series”) and the length of the light shaft it incorporates (400mm, 600mm and so on). I do not consider that here the serial numbers have a significant impact upon the identity of the word HEAVENLY as a trade mark. In the context of the various uses of HEAVENLY in the catalogue, I consider it most likely that HEAVENLY is viewed as the badge of origin of the goods and the serial numbers merely identify the precise configuration of the HEAVENLY branded product.
The “same kind of thing” in respect of the goods or services of the parties does not equate to goods or services which may be “of the same description” (the latter being a term of art for goods or services which are not the same but which consumers are likely to believe come from the same source). It is a narrower test that applies in the context of a claim to ownership[6]. In respect of goods it has been said to be confined to goods that are essentially the same, though they may differ in size, shape or name,[7] or goods which may act as substitutes for one another.[8] In respect of the claimed goods I consider that this is the case. The Opponent trades in skylights comprised of unspecified materials, the Applicant claims both metallic and non-metallic skylights. The basic functionality of skylights does not appear to vary greatly according to the materials from which they are comprised, nor does their substitutability. Accordingly I consider that the Opponent’s and Applicant’s skylights are the same kind of thing.[9]
[6] Colorado Group Limited v Strandbags Group Pty Ltd (‘Colorado’) [2007] FCAFC 184; (2007) 74 IPR 246; Krone AG v Brook (t/as Cannon Watch Co) (1996) 34 IPR 340.
[7] Colorado, supra, at [14].
[8] Canon Kabushiki Kaisha v Robert James Brook trading as the Cannon Watch Co [1996] FCA 756.
[9] I refer here also to Jackson & Co v Napper (1886) 35 Ch D 162 at 178, wherein axes and hatchets were considered the same kind of thing, cited in Colorado, supra.
I note also that the Applicant claims windows and window assemblies, vents, light tubes and light grids. Windows and window assemblies may well be roof-mounted (and indeed this is reflected in the specification of goods) such that they are essentially skylights, and light tubes are incorporated into skylights. Skylights in the form of roof mounted ‘openable’ windows are vents, alternatively some skylights are capped by clear acrylic or plastic venting heads which allow light to pass through. Light grids appear to be a form of skylight, particularly those spanning large areas. As such I am satisfied that all of the Applicant’s goods are of the same kind as the Opponent’s goods.
In respect of the Applicant’s services, I am not aware of any court authorities which discuss whether services may be “the same kind of thing” as goods, although the Registrar has at times considered the question. For example in The Hoyts Corporation Pty Ltd v Hoyt Food Manufacturing Pty Ltd[10] the delegate considered the service of providing refreshments for immediate consumption (such as hot tea and coffee) not to be the same kind of thing as those goods in packaged, dry form to be later prepared for drinking. In James Arthur Daemar v Howe Laboraties, Inc[11] the delegate considered that the “treatment of common metals and their alloys, motors and engines” was not the same kind of thing as a conditioning additive for motor oil on the basis that the additive achieved only a temporary change in engine performance, not a transformation of the type contemplated by class 40.[12]
[10] [2003] ATMO 61.
[11] [1996] ATMO 48.
[12] Australia adopts the Nice Classification of Goods and Services, and in the sixth edition of it (relevant at the time of the decision) the Explanatory Notes to class 40 stated that that class “includes, in particular services relating to transformation of an object or substance and any process involving a change in its essential properties” but did not include maintenance or repair services of the type contemplated by class 37.
I do not consider these cases assist me here. The first of the above examples involve goods which are everyday, supermarket items and their preparation does not require any particular expertise. The second of the examples involves services which are not necessitated by the goods, in that treatment of metals, motors and engines (in the ‘transformation’ sense contemplated by class 40) does not necessarily require a conditioning additive for motor oil.
Here, the question is whether the claim to ownership of the Trade Mark in respect of skylights and associated goods might extend to building construction, repair and installation services relating to those goods. I am inclined to believe that it does. Building construction services relating to skylights, windows and roof vents is likely to entail the construction of those goods with varying degrees of size and complexity, ranging from skylights, windows and roof vents for use in residential homes to skylights, windows and roof vents that may span office foyers or hotel entrances. A manufacturer of such goods would reasonably be expected to have the expertise to provide those services, and use of the Trade Mark in respect of the goods would, I consider, entitle the manufacturer to ownership in respect of the services of constructing them.
Similarly, repair and installation services in relation to skylights, windows and roof vents go hand in hand with the provision of said goods. Skylights, windows and roof vents are relatively specialized goods which are commonly installed by professionals because, for example, installation requires cutting into the roof and ceiling of a building and sufficiently sealing the edges. For the same reasons, such goods are typically repaired by professionals. I consider it reasonable to expect that the manufacturer of such relatively specialized goods also provides the services to install and repair them, and that the use of the Trade Mark on the former entitles the user to ownership of the Trade Mark in respect of the latter.
The Applicant has not filed any evidence of use and so I take its claim to ownership of the Trade Mark to be the prima facie claim that arises by virtue of the filing of the application. An opponent may successfully oppose such an application if it can show that, prior to the filing date of the application, it was the person entitled to exclusive use of the trade mark under common law:
Ownership of a trade mark can arise in two ways. If a person is the author of the mark and the mark has never been used, that person can apply for registration with the intention of using the mark. Alternatively, a person will be the owner of a mark if at the time of application for registration that person is entitled to the exclusive use of that mark under common law.
Therefore, in considering whether a person is the owner of the mark for the purposes of s 27 of the Act and registration of the mark, the inquiry must be whether that person is the owner of the mark at common law. The owner of a mark at common law is the first person who uses the mark.[13]
[13] Shahin Enterprises Pty Ltd v Exxonmobil Oil Corporation [2005] FCA 1278 at [63].
Although the Opponent’s evidence is relatively scant, it does contain the previously referred to product catalogue which is dated well before the priority date of 15 June 2011. The remaining evidence is problematic because it is either undated, dated after the priority date, or its date is ambiguous (I refer here to the web pages that are dated only by copyright notices).[14]
[14] I note that one of the web pages contains the notice “Page last updated March 25, 2011” which would be sufficient for the purpose of establishing priority. However the trade mark used upon that page is HEAVENLY INTELLIGENT, and I consider there is a question over that trade mark’s substantial identity with HEAVENLY. In any event, I have not found it necessary to determine the question because other evidence establishes the Opponent’s prior use.
Minimal use has been found to be sufficient to establish a claim to ownership.[15] The Opponent does not establish the declared date of first use of the Trade Mark in 1998 by the predecessor, Heavenly Products. It does however provide the product catalogue which is dated 1 July 2001, declared to have been distributed to the “Premier Dealer Network”. It, in combination with the remaining evidence showing various uses of HEAVENLY, satisfies me that the Opponent is the first user of the Trade Mark and the Applicant is therefore not entitled to ownership of it. As observed by Emmett J in Mediaquest Communications LLC v Registrar of Trade Marks[16]:
…the scheme of the Act is not proprietorship by registration but registration of proprietorship.
[15] For example Thunderbird Products Corporation v Thunderbird Marine Products Pty Ltd [1974] HCA 51, wherein a single sale was sufficient to establish ownership, or Buying Systems (Aust) Pty Ltd v Studio Srl [1995] FCA 1063 and Sizzler Restaurants International v Sabra International Pty Ltd (1990) 20 IPR 331, wherein no sales had taken place but certain preparatory steps for use of the relevant trade marks were found sufficient to establish ownership.
[16] [2012] FCA 768 at [56].
Accordingly, I am satisfied that the ground of opposition under section 58 has been established. Given that the Opponent has established a ground of opposition, it is unnecessary for me to address the remaining grounds although they (and any other ground) remain open to the Opponent in the event of an appeal.

Decision and costs

Section 55 of the Act provides:
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.
The Opponent has established a ground of opposition under the Act. I therefore refuse to register trade mark application 1430638.
Costs generally follow the event, and given there is no apparent reason to depart from this principle I award costs against the Applicant.

Nicole Worth
Hearing Officer
Trade Marks Hearings
20 October 2014